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Generic Top Level Domain Name (gTLD) Decisions |
Global Informational Licensing
Corporation v. Bankers Online
Claim Number: FA0405000267427
PARTIES
Complainant
is Global Informational Licensing
Corporation (“Complainant”), represented by Mark Lerner, of Satterlee Stephens Burke & Burke LLP, 230 Park Avenue, New York, NY
10169. Respondent is Bankers Online (“Respondent”), 2541
Flint Ridge Road, Edmond, OK 73003.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <americanbankeronline.com>,
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 30, 2004; the Forum received
a hard copy of the
Complaint on May 3, 2004.
On
May 3, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the
domain name <americanbankeronline.com>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc.
registration agreement and has thereby
agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution
Policy (the “Policy”).
On
May 10, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 1,
2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail,
post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts,
and to postmaster@americanbankeronline.com by e-mail.
A
timely Response was received and determined to be complete on June 1, 2004.
On June 4, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Houston Putnam
Lowry, Chartered Arbitrator, as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
· Complainant is the
owner of the mark AMERICAN BANKER (Serial No. 76/570767) in connection with a
financial newspaper. Through its
predecessor in interest and licensee, it has used the mark in commerce in the
United States since at least as early as
1835.
· Complainant has used
the mark AMERICAN BANKER ONLINE in connection with an online publication and
services since 1996.
· Respondent’s domain
name "americanbankeronline.com" (the "Domain") is merely
Complainant’s trademark for its
online services, or the mark for its print
publication with the addition of the generic term "online."
· Respondent is using
the Domain for a site that mirrors and/or redirects visitors to its
bankersonline.com site. The Respondent
is a competing publisher of newsletters on the banking industry. Its website is
directed to bankers – the precise target
audience for Complainant's
publications and website.
· Respondent has refused to transfer the
Domain despite the lack of any rights to the AMERICAN BANKER or AMERICAN BANKER
ONLINE marks. Despite Complainant’s
longstanding use of the AMERICAN BANKER marks in the United States in
connection with print and electronic publications
on banking and Complainant’s
efforts to resolve this matter amicably, Respondent has refused to transfer the
Domain. The panel should therefore not
permit the Respondent to continue its bad faith use of the Domain.
[a.] The Domain Name and
Trademark are Confusingly Similar
The Complainant, Global
Informational Licensing Corporation (hereinafter “GILC” or “Complainant”),
through its exclusive licensee
Thomson Media ("Thomson") and its
predecessor in interest began using its AMERICAN BANKER mark in 1835. For over 169 years, Complainant, through its
predecessor and licensee Thomson has provided vital information to banking and
financial
services professionals under the AMERICAN BANKER mark. Since the date of first use, Complainant has
extensively and continuously advertised and used its AMERICAN BANKER mark in
connection
with a print publication in the field of banking. A United States federal registration for
AMERICAN BANKER issued on January 15, 1963.
An application for AMERICAN BANKER filed on January 20, 2004 was
assigned serial number 76/570767. Since
1996, Complainant has provided information online at its AMERICAN BANKER ONLINE
website.
AMERICAN BANKER, which
is published every business day, provides readers with up-to-date news and
professional analysis of the top
developments and trends in the banking
field. The publication provides
breaking news and features on regulations, compliance, executives, mortgages
and other banking products.
American Banker's
journalism is widely recognized for its high quality. The publication is written and edited by a staff of more than 70
reporters and editors, located in six cities.
Since 1980, American Banker has received more than 20 editorial prizes,
including the Loeb Award for Distinguished Business &
Financial Journalism;
the Polk Award; the American Society of Business Press Editors' National
Journalism Award; the PRSA Award for
Excellence in Technology Journalism; and
The Jesse H. Neal Award for Best News Coverage in 2000.
The AMERICAN BANKER mark is regularly advertised in national
media outlets, including U.S. Banker, Bank Technology News, The Credit
Union
Journal, The Bond Buyer, Independent Banker, among others.
In 2002, AMERICAN BANKER
had over 12,900 subscribers and more than 3.23 million issues were distributed.
Through AMERICAN BANKER
ONLINE, Complainant offers content beyond the core proprietary news and
analysis in the AMERICAN BANKER newspaper.
In addition to early access to daily AMERICAN BANKER content, users can
access extensive regulatory and compliance information, a
searchable archive of
statistical data on banks and financial services companies, a searchable
archive of news from AMERICAN BANKER,
up-to-date loan and deposit rates, a
searchable catalogue of white papers and research reports from vendors and
consultants, filtered
access to Federal Register filings, pending-activity
calendars, calls for comment, agency announcements, headlines from A.S. Pratt,
Sheshunoff's Merger Watch and other information. In addition, users can send a
letter to the editor or browse past letters and commentaries
online and sign up
for e-mail updates, which provide Daily Briefings and Daily Regulatory Update
as well as weekly updates in Technology,
Community Banking, Investment
Products, Insurance Products, Cards, and Mortgages. American Banker online
receives over 30,000 unique
visitors and more than 750,000 page impressions on
its web site each month. The American
Banker Online site receives over 30,000 unique visitors and more than 750,000
page impressions on its web site each month.
As a result of the
Complainant’s use of the mark in connection both print and online publications,
consumers recognize AMERICAN BANKER
and AMERICAN BANKER ONLINE as designations
of Complainant as the source of print and electronic publications on the
banking industry. Based on the
foregoing, Complainant has rights in the AMERICAN BANKER and AMERICAN BANKER
ONLINE marks.
A side-by-side
comparison of the Complainant’s AMERICAN BANKER ONLINE mark and the domain name
“americanbankeronline.com” readily
demonstrates they are identical. The Domain merely eliminates the space
between the words in Complainant’s marks due to the technical limitations that
prohibit use
of a space in a domain. To
the mark AMERICAN BANKER, Registrant's domain merely adds the generic term "online."
The addition to Complainant’s mark
of a generic term, “online,” for a website
does not create a distinctive mark that is capable of overcoming a claim of
confusing
similarity.
The Domain is thus
identical or confusingly similar to a mark in which the Complainant has rights.
[b.] Respondent Has
No Legitimate Rights In the Domain Name
As indicated by the
registration information from the Go Daddy Software, Inc. database, the
registered owner of the “americanbankeronline.com”
domain name is Bankers
Online. Bankers Online registered the
domain name on May 16, 2002.
Respondent should be
considered as having no legitimate rights in the domain name
“americanbankeronline.com,” as it is not the trade
name or company name of the
Respondent. Respondent has no common
law rights in the AMERICAN BANKER or AMERICAN BANKER ONLINE marks, nor a
pending application or existing
registration for the mark. Respondent has not operated business under
the name American Banker, nor has it been commonly known in the trade or
community at large
by the name American Banker. Nor has it made any use of the AMERICAN BANKER or AMERICAN BANKER
ONLINE names beyond the registration of the disputed Domain.
Respondent has
established a website at americanbankeronline.com that is titled
"BankersOnline.com." The
site, in addition to stories on compliance, lending, operations, security,
marketing and technology, includes advertisements for
vendors. The site appears to be geared, in large
part, to enabling users to shop for products and services offered by Respondent
and its partners. For example, the site
notes: "BOL Vendor Connect makes it easy for you to plug in to the best
products and services available
for the financial services industry." Indeed, it is clear that the site is nothing
more than an effort to redirect customers for Complainant's information
services to Respondent’s
competing services and to profit from the initial
interest confusion created by its use of Complainant's well known AMERICAN
BANKER
mark.
When a customer clicks
on the “contact us” link on the home page of americanbankeronline.com its
browser is redirected to bankersonline.com/aboutus.html. The home page of americanbankeronline.com is
identical to the bankersonline.com homepage.
Indeed, with the exception of buttons at the top of the page, all the
hyperlinks to content or related pages redirect a user to the
bankersonline.com
site. Even as to the buttons for
"compliance" "lending" and "operations" which do
link to another page within
the americanbankeronline.com domain, the resulting
page is clearly identified as BankersOnline.com. The page for lending is the same page that is reached, with the
root domain bankersonline.com when a user clicks the “lending” link
that
appears at the bankersonline.com home page.
Thus, Respondent is clearly using the americanbankeronline.com domain
only as a means of directing users to its BankersOnline website.
[c.] The Respondent
Acted in Bad Faith
The Respondent should be
considered as having registered the domain name “americanbankeronline.com” in
bad faith, based on the following:
Respondent’s use of the
americanbankeronline.com domain as outlined above is an intentional attempt to
attract, for commercial gain,
Internet users to its website by creating a
likelihood of confusion with the Complainant’s mark as to the source,
sponsorship, affiliation,
or endorsement of its website. Accordingly,
Respondent’s use of the mark is in bad faith per Paragraph 4(b)(iv) of the ICANN
Domain Name Dispute Resolution Policy.
Respondent was clearly
aware of the Complainant’s marks when it registered the Domain. A former
employee of Thomson was instrumental
in creating Respondent’s website. Moreover, Respondent has failed to transfer
the domain. Although the Respondent
replied by telephone to a letter dated September 17, 2002, it indicated that it
would not relinquish the domain
because it believed its use of the mark was a
fair use and merely descriptive. The
Respondent however, failed to give specific examples of any use that would support
this position. Although Complainant's
counsel sent a further letter on January 15, 2004 explaining why Respondent's
use was not a fair use and was
not permitted under the UDRP, Respondent replied
again by phone, but did not agree to transfer the domain name. A final demand sent February 2, 2004
received no response. Thus, in addition
to hosting a site that appears only to be a front for its own goods and
services, Respondent has failed to offer
any evidence to support its claimed
basis for using Complainant’s mark.
In summary, Complainant
has trademark rights in the marks AMERICAN BANKER and AMERICAN BANKER
ONLINE. Respondent registered the
identical “americanbankeronline.com” domain name and has posted a site that
purports to provide information
on the banking industry – the same information
that Complainant provides through its print and online publications under the
mark
AMERICAN BANKER and AMERICAN BANKER ONLINE. However, Respondent makes no legitimate business use of the marks
at its site which appears constructed to compete with Complainant
and redirect
users to bankersonline.com for Respondent's commercial benefit. Complainant asks that bad faith use of the
domain registration be found, and that the domain name
“americanbankeronline.com” be transferred
to the Complainant to remedy the harm
resulting from Respondent’s bad faith use of the domain name.
B.
Respondent
To keep our
response both clear and concise, we have included the text of their complaint
integrated along with our response. Our responses will appear in this font. (Arial,
Bold)
Their
complaint began with this text:
(1) the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
We make the same claim.
(2) the
Respondent has no rights or legitimate interests in respect of the domain name;
and
We do. The plan is to move to a more international version of our
flagship site, BankersOnline.com. We purchased AmericanBankersOnline.com
and
AmericanBankerOnline.com on the same day. The purchase of
AmericanBankerOnline.com simply followed the common practice of reserving
names
that were very similar to the desired domain.
(3) the domain
name has been registered and is being used in bad faith. Complainant will
establish herein, that:
·
Complainant
is the owner of the mark AMERICAN BANKER (Serial No. 76/570767) in connection
with a financial newspaper. Through its
predecessor in interest and licensee,
it has used the mark in commerce in the United States since at least as early
as 1835.
We have been using the domain name BankersOnline.com in a
live site since October, 2000 and the domain name was owned for several
years
prior to that date. We purchased AmericanBankersOnline.com and
AmericanBankerOnline.com on May 16, 2002 to protect those domains
for use in
future expansion of the site.
Despite
Complainant’s longstanding use of the AMERICAN BANKER marks in the United
States in connection with print and electronic publications
on banking and
Complainant’s efforts to resolve this matter amicably, Respondent has refused
to transfer the Domain. The panel should
therefore not permit the Respondent to
continue its bad faith use of the Domain.
[a.] The Domain
Name and Trademark are Confusingly Similar
Agreed.
The Complainant,
Global Informational Licensing Corporation (hereinafter “GILC” or
“Complainant”), through its exclusive licensee
Thomson Media
("Thomson") and its predecessor in interest began using its AMERICAN
BANKER mark in 1835. For over 169
years, Complainant, through its predecessor and licensee Thomson has provided
vital information to banking and financial
services professionals under the
AMERICAN BANKER mark. Since the date of
first use, Complainant has extensively and continuously advertised and used its
AMERICAN BANKER mark in connection
a print publication in the field of
banking. A United States federal
registration for AMERICAN BANKER issued on January 15, 1963. An application for AMERICAN BANKER filed on
January 20, 2004 was assigned serial number 76/570767. Since 1996, Complainant has provided
information online at its AMERICAN BANKER ONLINE website.
We agree that the American Banker is one of the most highly respected banking
publications. However, it is a stretch to think that,
owning
AmericanBanker.com, they chose to expand and extend the size of the domain name
to AmericanBankerOnline.com without knowing
that they would be confusing their
domain name with ours.
AMERICAN BANKER,
which is published every business day, provides readers with up-to-date news
and professional analysis of the top
developments and trends in the banking
field. The publication provides breaking news and features on regulations,
compliance, executives,
mortgages and other banking products.
BankersOnline.com
also publishes content every business day, providing readers with up-to-date
news and professional analysis of the
top developments and trends in the
banking field. In this area, we do not differ. Except that our online audience
is much larger.
American
Banker's journalism is widely recognized for its high quality. The publication
is written and edited by a staff of more than
70 reporters and editors, located
in six cities. Since 1980, American Banker has received more than 20 editorial
prizes, including
the Loeb Award for Distinguished Business & Financial
Journalism; the Polk Award; the American Society of Business Press Editors'
National Journalism Award; the PRSA Award for Excellence in Technology
Journalism; and The Jesse H. Neal Award for Best News Coverage
in 2000.
Again,
we agree that the American Banker is a competent, quality, and highly-respected
publication and web site. However, if the suggestion
here is to try and
contrast this experience against our site, BankersOnline.com, then we would
point out that our executive editor
is one of the most respected writers,
speakers, and innovators in the industry. And, in addition to exceptional
journalists, the
content contributors to BankersOnline include many of the
industry’s leading experts (including not only one, but two of those designated
Compliance Professional of the Year by the American Bankers Association).
The AMERICAN
BANKER mark is regularly advertised in national media outlets, including U.S.
Banker, Bank Technology News, The Credit
Union Journal, The Bond Buyer,
Independent Banker, among others.
The
BankersOnline.com mark is seen in many publications, conferences, products, and
services as well.
In 2002,
AMERICAN BANKER had over 12,900 subscribers and more than 3.23 million issues
were distributed.
Through AMERICAN
BANKER ONLINE, Complainant offers content beyond the core proprietary news and
analysis in the AMERICAN BANKER newspaper.
In addition to early access to daily
AMERICAN BANKER content, users can access extensive regulatory and compliance
information, a
searchable archive of statistical data on banks and financial
services companies, a searchable archive of news from AMERICAN BANKER,
up-to-date loan and deposit rates, a searchable catalogue of white papers and
research reports from vendors and consultants, filtered
access to Federal
Register filings, pending-activity calendars, calls for comment, agency
announcements, headlines from A.S. Pratt,
Sheshunoff's Merger Watch and other
information. In addition, users can send a letter to the editor or browse past
letters and commentaries
online and sign up for e- mail updates, which provide
Daily Briefings and Daily Regulatory Update as well as weekly updates in
Technology,
Community Banking, Investment Products, Insurance Products, Cards,
and Mortgages. American Banker online receives over 30,000 unique
visitors and
more than 750,000 page impressions on its web site each month.
While
these numbers are very impressive for the American Banker, in the most recent
month (April, 2004), BankersOnline.com had 342,597
unique visitors (with
more than 85% repeat visitors) and served more than 3.2 million pages to fellow
bankers (just under 30 million hits).
While the quality of the American Banker is without question, any
confusion in our names would certainly seem to benefit them. To
us at
BankersOnline.com, although we are not pursuing a counter complaint at this
time, there is definitely similarity between BankersOnline.com
and
AmericanBanker.Online – especially since they seem to be ‘enlarging and
extending’ their name to be similar to ours.
As a result of
the Complainant’s use of the mark in connection both print and online
publications, consumers recognize AMERICAN BANKER
and AMERICAN BANKER ONLINE as
designations of Complainant as the source of print and electronic publications
on the banking industry. Based on the
foregoing, Complainant has rights in the AMERICAN BANKER and AMERICAN BANKER
ONLINE marks.
Clearly,
the addition of ‘online’ to the official name, and the desire to extend the
length of the URL to be typed by users is an
attempt to confuse with our mark.
Surely, they will not be giving up the domain name AmericanBanker.com as the
primary address for
their site, encouraging users to type in
AmericanBankerOnline.com. And, they made the change to their site shortly after
we registered
AmericanBankersOnline.com (and protected that name by also
registering the disputed AmericanBankerOnline.com).
A side-by-side
comparison of the Complainant’s AMERICAN BANKER ONLINE mark and the domain name
“americanbankeronline.com” readily
demonstrates they are identical. The Domain
merely eliminates the space between the words in Complainant’s marks due to the
technical
limitations that prohibit use of a space in a domain. To the mark
AMERICAN BANKER, Registrant's domain merely adds the generic term
"online." The addition to Complainant’s mark of a generic term,
“online,” for a website does not create a distinctive mark
that is capable of
overcoming a claim of confusing similarity. See Space Imaging LLC v. Brownwell,
AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where the
Respondent’s domain name combines the Complainant’s mark with a generic term
that has
an obvious relationship to the Complainant’s business). See also
Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly
similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a
generic word describing the type of business in which Complainant is engaged,
does
not take the disputed domain name out of the realm of confusing
similarity); Foot Locker Retail, Inc. v. Promo.Net Communications,
Inc., Case
No. 118312 (Nat. Arb. Forum October 18, 2002) ("A domain name does not
become distinct from another’s trademark simply
by adding a common generic
term"); Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a generic
word or term).
All
three words in use are generic. “American”, “Banker(s)”, and “Online”.
AmericanBanker and BankersOnline. We would make exactly
the same arguments with
respect to the word “online”, which had been missing from their web site for
years.
In
addition, the examples cited above are not created with ‘generic’ words. Of
course Hoyle and Guinness can claim ‘uniqueness’ –
unlike the words American,
Banker(s), and Online.
And the confusion is noted about the similarity in the names. However,
AmericanBanker.com altered the official graphic designating
the web site after
we registered the name. And they made no comment for five months after they
made this change. They’ve altered their name to be confusingly
similar to our
much larger presence on the Internet.
The Domain is
thus identical or confusingly similar to a mark in which the Complainant has
rights.
[b.] Respondent
Has No Legitimate Rights In the Domain Name
As indicated by
the registration information from the Go Daddy Software, Inc. database, the
registered owner of the “americanbankeronline.com”
domain name is Bankers
Online. Bankers Online registered the
domain name on May 16, 2002.
Respondent
should be considered as having no legitimate rights in the domain name
“americanbankeronline.com,” as it is not the trade
name or company name of the
Respondent. Respondent has no common law rights in the AMERICAN BANKER or
AMERICAN BANKER ONLINE marks,
nor a pending application or existing
registration for the mark. Respondent
has not operated business under the name American Banker, nor has it been
commonly known in the trade or community at large
by the name American
Banker. Nor has it made any use of the
AMERICAN BANKER or AMERICAN BANKER ONLINE names beyond the registration of the
disputed Domain.
As
noted earlier, AmericanBankerOnline.com is owned merely to protect the desired
domain, AmericanBankersOnline.com (spelling variation).
We do not claim to be
the American Banker. In fact, as of this date, we have not announced our plans
for the use of AmericanBankersOnline.com.
Respondent has
established a website at americanbankeronline.com that is titled
"BankersOnline.com" The site,
in addition to stories on compliance, lending, operations, security, marketing
and technology, includes advertisements for
vendors. The site appears to be
geared, in large part, to enabling users to shop for products and services
offered by Respondent
and its partners.
We
have our established web site at BankersOnline.com. As noted above, we redirect
this new domain name to our primary site.
For example, the site notes: "BOL Vendor Connect makes it easy for you to
plug in to the best products and services available
for the financial services
industry." Indeed, it is clear
that the site is nothing more than an effort to redirect customers for
Complainant's information services to Respondent’s
competing services and to
profit from the initial interest confusion created by its use of Complainant's
well known AMERICAN BANKER
mark.
BOLVendorConnect.com
is a separate, and related, web site to BankersOnline.com. It consists of an
online directory of providers of
banking-related products and services. There
is most definitely cross-linking between these two related websites
(BankersOnline.com
and BOLVendorConnect.com). In fact, TFP (Thomson Financial
Publishing, owner of American Banker) maintains an enhanced listing in
this
directory. And they also list and sell some of their products in the Banker
Store on BankersOnline.com.
When a customer
clicks on the “contact us” link on the home page of americanbankeronline.com
its browser is redirected to bankersonline.com/aboutus.html.
The home page of
americanbankeronline.com is identical to the bankersonline.com homepage.
Indeed, with the exception of buttons at
the top of the page, all the
hyperlinks to content or related pages redirect a user to the bankersonline.com
site. Even as to the buttons for
"compliance" "lending" and "operations" which do
link to another page within
the americanbankeronline.com domain, the resulting
page is clearly identified as BankersOnline.com. The page for lending is the same page that is reached, with the
root domain bankersonline.com when a user clicks the “lending” link
that
appears at the bankersonline.com home page.
Thus, Respondent is clearly using the americanbankeronline.com domain
only as a means of directing users to its BankersOnline website.
The browser is redirected to BankersOnline.com. The ‘Contact Us’ link is
on BankersOnline.com and nowhere is there any attempt to
trade off the American
Banker name. The Exhibits that they provided do not reflect what actually
happens. When a user types ‘www.americanbankeronline.com’
in the address bar of
their browser, they are redirected to www.bankersonline.com
and the address bar reflects that.
Since
we have not advertised AmericanBankersOnline at this point, it is highly
unlikely that a) anyone comes to us in this manner
or b) that anyone would try
to go the AmericanBanker.com site by typing the additional word “online”.
[c.] The
Respondent Acted in Bad Faith
The Respondent
should be considered as having registered the domain name
“americanbankeronline.com” in bad faith, based on the following:
Respondent’s use
of the americanbankeronline.com domain as outlined above is an intentional
attempted to attract, for commercial gain,
Internet users to its website by
creating a likelihood of confusion with the Complainant’s mark as to the
source, sponsorship, affiliation,
or endorsement of its website. Accordingly,
Respondent’s use of the mark is in bad faith per Paragraph 4(b)(iv) of the ICANN
Domain Name Dispute Resolution Policy.
Respondent was
clearly aware of the Complainant’s marks when it registered the Domain. A
former employee of Thomson was instrumental
in creating Respondent’s website.
Moreover, Respondent has failed to transfer the domain. Although the Respondent
replied by telephone
to a letter dated September 17, 2002, it indicated that it
would not relinquish the domain because it believed its use of the mark
was a
fair use and merely descriptive. The
Respondent however, failed to give specific examples of any use that would
support this position. Although Complainant's counsel
sent a further letter on
January 15, 2004 explaining why Respondent's use was not a fair use and was not
permitted under the UDRP,
Respondent replied again by phone, but did not agree
to transfer the domain name. A final demand sent February 2, 2004 received no
response. Thus, in addition to hosting
a site that appears only to be a front for its own goods and services,
Respondent has failed to offer
any evidence to support its claimed basis for
using Complainant’s mark.
In summary,
Complainant has trademark rights in the marks AMERICAN BANKER and AMERICAN
BANKER ONLINE. Respondent registered the identical
“americanbankeronline.com”
domain name and has posted a site that purports to provide information on the
banking industry – the same
information that Complainant provides through its
print and online publications under the mark AMERICAN BANKER and AMERICAN
BANKER
ONLINE. However, Respondent makes no legitimate business use of the
marks at its site which appears constructed to compete with Complainant
and
redirect users to bankersonline.com for Respondent's commercial benefit.
Complainant asks that bad faith use of the domain registration
be found, and
that the domain name “americanbankeronline.com” be transferred to the
Complainant to remedy the harm resulting from
Respondent’s bad faith use of the
domain name.
During our initial phone conversation, we offered to transfer the
AmericanBankerOnline.com domain name to them only if they would
agree never to
contest our use of AmericanBankersOnline.com. Not only was that offer refused,
it was stated that if we did such a
thing, American Banker would contend
that we had no right to use AmericanBankersOnline.com either. At what point,
then, are they able to absorb the BankersOnline.com
name as being confusingly
similar to the AmericanBankersOnline.com they seem to want?
Given that our online presence, using recent traffic numbers, is vastly larger
than theirs, this move to officially rename themselves
in an intentionally
confusing manner can only be seen as a move to benefit from the high level of
traffic we have achieved. Again,
look at their logo on their current homepage
graphic (AmericanBanker.online). Without access to this disputed domain name
for the
last two years, they have persisted in leaving the image up there in a
manner that clearly confuses their online presence with ours.
Respectfully,
they have a stronger domain name with AmericanBanker.com than they do with
AmericanBankerOnline.com. This is merely
an attempt to capitalize on our
success.
And, as a final indication about where the bad faith may lie, check out
the previous owner of the domain name MyBankersOnline.com.
Several weeks ago,
they chose not to renew that domain name (which they had owned since early
2001). Then, just after letting that
domain name go, they lodged this
complaint. Again, we are not bringing any action or grievance based on that
maneuver, but it does
show who is trying to infringe on whom.
Thank you for allowing our side of the issue to be heard.
FINDINGS
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the following
three elements to obtain an order that
a domain name should be cancelled or
transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the Respondent
has no rights or legitimate interests in respect of the domain name; and
(3)
the domain
name has been registered and is being used in bad faith.
I find each element to be satisfied in
this matter.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint
on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of
law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that
a domain name should be
cancelled or transferred:
1.
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
2.
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
3.
the domain
name has been registered and is being used in bad faith.
First of all, both parties agree <americanbankeronline.com> is confusingly similar to AMERICAN
BANKER. Both parties further agree
AMERICAN BANKER is a well known and well respected mark in banking.
Complainant has established rights in the AMERICAN
BANKER mark through registration of the mark with the United States Patent and
Trademark Office on January 15, 1963 (Reg. No. 743,818). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently
distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
The
disputed domain name is confusingly similar to Complainant’s AMERICAN BANKER
mark because the domain name fully incorporates the
mark and merely adds the
generic term “online.” Complainant
argues that the addition of the generic word “online” is insufficient to
distinguish the domain name from the Complainant’s
mark. See
Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of Complainant
combined with a generic word
or term); see also Broadcom Corp.
v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the
<broadcomonline.com> domain name is confusingly similar to Complainant’s
BROADCOM mark); see also Am. Online, Inc. v. Anytime Online Traffic Sch.,
FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain
names, which incorporated Complainant’s
entire mark and merely added the descriptive terms “traffic school,” “defensive
driving,” and “driver improvement”
did not add any distinctive features capable
of overcoming a claim of confusing similarity). Furthermore, Complainant has applied for a trademark registration
mark for AMERICAN BANKER ONLINE (although it has not been issued
yet). Complainant has been using the AMERICAN
BANKER ONLINE mark since 1996.
The
addition of the generic top-level domain name “.com” in the domain name is
irrelevant in determining whether the domain name is
confusingly similar to
Complainant’s mark. See Sony Kabushiki Kaisha v. Inja,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶4(a)(i)
is satisfied); see also Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain
(gTLD) “.com” after the name
POMELLATO is not relevant).
Respondent
lacks rights and legitimate interests in the domain name because the domain
name is confusingly similar to the mark and
is used to provide services that
are similar and compete with Complainant.
Respondent even employs one of Complainant’s former employees. Moreover, Respondent’s use does not
constitute a bona fide offering of goods or services pursuant to Policy
¶4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy
¶4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that
compete with Complainant’s goods does not constitute a bona fide
offering of goods and services); see also Ameritrade Holdings Corp. v.
Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that
Respondent’s use of the disputed domain name to redirect Internet users
to a
financial services website, which competed with Complainant, was not a bona
fide offering of goods or services); see also Clear Channel Communications,
Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding
that Respondent, as a competitor of Complainant, had no rights or legitimate
interests
in a domain name that utilized Complainant’s mark for its competing
website).
Respondent is not commonly known by
the <americanbankeronline.com> domain name and therefore lacks
rights and legitimate interests in the domain name pursuant to Policy
¶4(c)(ii). See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’
the disputed domain name” as one factor in determining that Policy ¶4(c)(ii)
does not apply); see also
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶4(c)(ii) "to require a showing that one has been commonly known
by
the domain name prior to registration of the domain name to prevail"); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where Respondent was not commonly known by the mark
and
never applied for a license or permission from Complainant to use the
trademarked name). In fact, the <americanbankeronline.com>
domain name forwards viewers directly to Respondent’s BankersOnline.com web
site.
Once Complainant makes a prima
facie case for this element, the burden shifts to Respondent to establish
rights or legitimate interests in the domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (holding that where Complainant has asserted that
Respondent has no rights or legitimate
interests with respect to the domain
name it is incumbent on Respondent to come forward with concrete evidence
rebutting this assertion
because this information is “uniquely within the
knowledge and control of the respondent”); see also Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant
asserts that Respondent has no rights or legitimate interests with
respect to
the domain, the burden shifts to Respondent to provide credible evidence that
substantiates its claim of rights and legitimate
interests in the domain name).
It should be noted the Panel was
very concerned Respondent registered <americanbankeronline.com> on
May 16, 2002.
Normally the Panel would suggest Complainant slumbered on its rights,
allowing Respondent to acquire rights to the domain name by
using it (see
UDRP ¶4(c)(i)). Under the facts of this
particular case, that did not happen because:
1.
Respondent actually knew about Complainant’s
mark before registering the <americanbankeronline.com> domain name.
2.
Complainant
was objecting in writing to Respondent’s domain name registration at least by
September 17, 2002. Respondent did not
erect a web site at the domain (or make other use of the domain) because the
domain was (and still is) being forwarded
to another web site.
3.
Respondent
showed no present preparations to use <americanbankeronline.com>
in the future. Without evidence of
actual preparations to use the domain name in the future (or even an
announcement of anticipated use), Respondent
does not acquire any interest in
the domain name, Hugh Jackman v. Peter Sun Claim Number: FA 248716 (Nat.
Arb. Forum May 10,2004).
Respondent
registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iii)
because Respondent is using the domain name,
which is confusingly similar to
Complainant’s mark, to compete with Complainant’s business. See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO
Feb. 5, 2001) (finding that, given the competitive relationship between
Complainant and Respondent, Respondent
likely registered the contested domain
name with the intent to disrupt Complainant's business and create user
confusion); see also EBAY, Inc. v.
MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered
and used the domain name <eebay.com> in bad faith where Respondent
has
used the domain name to promote competing auction sites).
Further,
Respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶4(b)(iv) as Respondent is using
the <americanbankeronline.com> domain name intentionally to attract, for commercial gain, Internet users
to its website by creating a likelihood of confusion with
Complainant as to the
source, sponsorship, affiliation or endorsement of its website. See G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding
that Respondent registered and used the domain name in bad faith pursuant to
Policy ¶4(b)(iv) because Respondent was using the confusingly similar domain
name to attract Internet users to its commercial website);
see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent
directed Internet users seeking Complainant’s site
to its own website for
commercial gain); see also State
Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11,
2000) (finding that Respondent registered the domain name
<statefarmnews.com> in bad faith
because Respondent intended to use
Complainant’s marks to attract the public to the web site without permission
from Complainant).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americanbankeronline.com>
domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered
Arbitrator, Panelist
Dated: June 18, 2004
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