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First Franklin Financial Corporation and National City Corporation v. The Franklin Savings and Loan Company [2005] GENDND 1597 (27 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

First Franklin Financial Corporation and National City Corporation v. The Franklin Savings and Loan Company

Case No. D2005-0762

1. The Parties

The Complainants are First Franklin Financial Corporation, San Jose, California, United States of America, and National City Corporation, Cleveland, Ohio, United States of America, jointly represented by McNichols Randick O’Dea & Tooliatos LLP, United States of America.

The Respondent is The Franklin Savings and Loan Company, Cincinnati, Ohio, United States of America, represented by Wood, Herron & Evans, LLP, United States of America.

2. The Domain Name and Registrar

The disputed domain name <firstfranklin.com> (“the Domain Name”) is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2005. On July 19, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On July 19, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 25, 2005. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2005. The Response was filed with the Center on August 17, 2005.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 25, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On August 30, 2005, the Complainants submitted a Supplemental Brief in reply to the Respondent’s defense of laches. The Respondent replied with a Supplemental Filing on September 2, 2005.

4. Factual Background

The following factual summary is based on the uncontested declarations, certificates, copies of official records, and other supporting documents submitted by the parties.

Complainant First Franklin Financial Corporation (“FFFC”) is a mortgage lender incorporated in the State of Delaware and headquartered in San Jose, California. FFFC offers mortgage loan services throughout the United States, with 2,000 employees, 36 regional offices (including one in Cleveland, Ohio), and a sales network that includes 27,000 independent mortgage brokers. FFFC is a leading originator of non-prime residential mortgage loans, funding over $29 billion in mortgage loans in 2004 and ranking among the top ten “subprime originators” of residential mortgages in the United States, by volume, according to industry publications.

FFFC has been based in the State of California since it was established in 1981, where it was first incorporated under California law. In 1994, the company was reorganized as a Delaware corporation and pursued nationwide expansion. This included registering in the State of Ohio, in February and July 1994, to do business as a foreign corporation.

FFFC is a wholly owned subsidiary of National City Bank of Indiana, which in turn is a wholly owned subsidiary of Complainant National City Corporation.

Complainant National City Corporation (“NCC”) is a financial holding company incorporated in Delaware and headquartered in Cleveland, Ohio. Its stock is traded on the New York Stock Exchange. NCC controls banks in Ohio and six other states and offers a range of financial services, including mortgage financing and servicing, in other selected markets in the United States.

It is uncontested that Complainant FFFC has used FIRST FRANKLIN as a trade name and common law service mark since January 22, 1981, although the Complainants have not furnished specific evidence as to when the mark was first used in Ohio. FFFC applied to the United States Patent and Trademark Office (USPTO) in November 1994, to register the FIRST FRANKLIN mark in connection with mortgage banking and mortgage brokering. The USPTO registered the mark on October 24, 1995. On September 26, 1996, the USPTO recorded the transfer by assignment of the mark from the California to the Delaware corporation, both named First Franklin Financial Corporation. On January 6, 2005, the USPTO recorded the assignment of the mark to FFFC’s ultimate parent corporation, Complainant NCC. The mark was renewed for ten years on March 9, 2005. NCC has granted a license to FFFC giving it the exclusive right to use the FIRST FRANKLIN mark in the United States.

FFFC maintains websites addressed by several domain names incorporating the FIRST FRANKLIN mark, including <firstfranklin.net> and <first-franklin.com>.

The Respondent, The Franklin Savings and Loan Company, is a savings and loan company incorporated in the State of Ohio. It operates several branch offices in the Cincinnati, Ohio metropolitan area, collecting deposits and offering residential real estate loans and mortgage services in and around Cincinnati.

The Respondent was originally chartered in Ohio under a different name in 1883. The name was changed to The Franklin Savings and Loan Company in 1946, and the company has done business continuously under that name since then. In 1987, the Respondent was converted from a mutual savings and loan association to a capital stock company. A holding company was created, First Franklin Corporation (“FFCO”), which holds all the stock of the Respondent. FFCO is incorporated in the State of Delaware and is a publicly traded company that has been listed on the NASDAQ stock exchange since 1987. The Respondent continues to do business in southwestern Ohio and adjacent parts of Kentucky and Indiana as a wholly owned operating subsidiary of FFCO. The Respondent’s business accounts for nearly all of FFCO’s assets and revenues.

The Respondent registered the Domain Name in May 1996. At the same time, it registered the domain name <franklinsavings.com>. The Domain Name currently resolves to a page describing the Respondent’s parent corporation, FFCO. This page includes links to information on FFCO’s stock on the NASDAQ website and to FFCO’s annual report and other United States Securities and Exchange Commission (SEC) filings on the SEC website. In addition, a site visitor can download PDF files of FFCO’s 2004 Annual Report and latest corporate proxy statement.

The Respondent’s other website, at the address <franklinsavings.com>, has many informational and interactive pages concerning the Respondent’s banking and lending business in the Cincinnati, Ohio area. The page headed “Company Profile” explains that the Respondent is a wholly owned subsidiary of FFCO.

The Respondent’s Vice President Daniel Voelpel alleges in his Declaration (paragraph 2(q)) that at an unspecified time Complainant FFCO contacted the Respondent and offered to purchase the Domain Name. Mr. Voelpel alleges that he replied that the Respondent was not interested in selling the Domain Name. The Complainants do not contest this allegation.

It is also uncontested that the Complainants notified the Respondent by a letter dated March 23, 2005, of their objections to the Respondent’s registration and use of the Domain Name. The letter cited the Complainant’s registered trademark and asserted that “FFFC has owned exclusive rights to and used the FIRST FRANKLIN® service mark and trade name for over 24 years nationwide in connection with mortgage loans.” The Respondent did not reply to this letter.

5. Parties’ Contentions

A. Complainants

Both Complainants assert an interest in protecting the FIRST FRANKLIN mark. Complainant NCC currently holds the trademark registration, and Complainant FFFC has an exclusive license to use the mark in the United States. The Complainants point out that the Domain Name is identical to the FIRST FRANKLIN mark. The Complainants also note that FFFC filed a Declaration of Incontestability with the USPTO in 2001, after five years of continuous and unchallenged use of the mark, as acknowledged by the USPTO.

The Complainants contend that the Respondent has no rights or legitimate interests in the Domain Name. They assert, without contradiction, that they have not licensed the Respondent to use the FIRST FRANKLIN mark in the Domain Name or otherwise. Since the mark is registered (and now incontestable) in the United States in association with mortgage services, and the Respondent offers mortgage services that compete with FFFC’s business, the Complainants conclude that the Respondent’s registration and use of a Domain Name incorporating the mark is in violation of US trademark law and therefore cannot represent a bona fide offering of goods and services within the terms of the Policy. Similarly, the Complainants assert that the website to which the Domain Name resolves “has no legitimate commercial purpose,” since it provides only minimal information about FFCO, the Respondent’s parent corporation. The Complainants observe that additional FFCO corporate documents were added to the website associated with the Domain Name website the day after the Respondent received notice of this proceeding. Otherwise, the website points interested persons to relevant pages on the SEC and NASDAQ websites and to the Respondent’s own much more robust website at <franklinsavings.com>. The Complainants cite the Respondent’s website and online corporate information services in concluding that the Respondent is commonly known in business by its own name, Franklin Savings, and not by the name First Franklin.

The Complainants infer from the fame of their mark, and the fact that they compete with the Respondent for mortgage business, that the Respondent must have registered and used the Domain Name in bad faith, attempting to confuse Internet users seeking the larger and more famous company’s website and then divert their business to the Respondent. The Complainants cite the Respondent’s failure to respond to an infringement notice and its hasty posting of additional corporate documents on the FFCO website (a belated attempt to “legitimize” the Domain Name) as additional indications of bad faith. The Complainants argue that the Respondent’s experienced president “surely” would have heard of FFFC, which was a high-volume mortgage lender and had recently registered to do business in Ohio at the time the Respondent obtained the Domain Name. Finally, the Complainants cite the principle of “constructive notice,” arguing that under United States trademark law it must be found that the Respondent knew or should have known of the registered trademark at the time the Respondent obtained the Domain Name.

In response to the Respondent’s asserted defense of laches, described below, the Complainants argue that this is not an acceptable defense in a proceeding under the Policy, and that in any event this equitable doctrine in United States law applies to complaints for monetary damages and not injunctive remedies. Thus, laches is not generally available as a defense in trademark actions seeking an injunction to prevent trademark infringement, and several panels have rejected the application of the equitable doctrine of laches to proceedings under the Policy.

Consequently, the Complainants seek to have the Domain Name transferred to Complainant FFFC.

B. Respondent

The Respondent does not contest the conclusion that the Domain Name is identical to the FIRST FRANKLIN mark.

The Respondent argues, however, that it had a right or legitimate interest in using the FIRST FRANKLIN mark in the Domain Name. “First Franklin Corporation” (FFCO) is the name of the Respondent’s parent company. The website to which the Domain Name resolves provides information about that corporation, for the benefit of investors or potential investors, as well as linking to the Respondent’s <franklinsavings.com> website for more information about the Respondent, FFCO’s principal operating company. Further, the Respondent alleges (in the Declaration of Daniel Voelpel, paragraph 2(h)) that “since at least as early as 1987, FFCO and its subsidiaries have been using the FIRST FRANKLIN common law trademark in connection with a wide variety of financial services and products, including mortgage loan products.”

The Respondent asserts that it registered and used the Domain Name in good faith. It registered domain names for both of its websites in May 1996, when commercial use of the Internet was new, with one domain incorporating the name of the holding company and the other the name of the operating company. The holding company website (to which the challenged Domain Name resolves) appropriately provides investor information about the holding company, a publicly traded company whose only business is to hold stock in operating companies. Moreover, according to the Declaration of the Respondent’s Vice President Daniel Voelpel, the officer who caused the Domain Name registration to be made in 1996, at the time of registration he “had no knowledge of First Franklin Financial Corporation located in San Jose, CA, or that the company did business under a name which included ‘First Franklin.’” The Respondent points out that Complainant FFFC, by its own account, was a company based in California and predominantly doing business there, and it was only in the mid-1990s that FFFC reorganized as part of a nationwide expansion and registered to do business in Ohio, where the Respondent’s business was concentrated.

Finally, the Respondent asserts laches, an equitable defense under American and English law that denies certain judicial remedies to claimants that have “sat on their rights” without asserting them in a timely manner, to the prejudice of the defendants. The Respondent points out that the Complainants brought this proceeding more than nine years after the Domain Name was registered. The Complainants were clearly aware of the website, the Respondent contends, because they tried at one point to purchase the Domain Name from the Respondent. Meanwhile, according to the Respondent, it has invested money in the Domain Name over the years and earned goodwill from it, so that it would suffer from transferring the Domain Name to the Complainant.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Name, the Complainants must demonstrate each of the following:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

As required by Rules paragraph 15(a), the Panel’s decision is based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that the Panel deems applicable.

The Panel accepts the parties’ supplemental filings in this proceeding for consideration, as they are focused on the defense of laches raised in the Response.

A. Identical or Confusingly Similar

The Panel finds that both Complainants have an interest in the registered FIRST FRANKLIN mark, as owner and licensee, respectively.

The Panel also finds that the Domain Name is identical to the FIRST FRANKLIN mark. The elimination of the space between the two words and the addition of the “.com” suffix are of no consequence under the Policy. See, e.g., Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499 (August 16, 2002) (“the .com suffix is merely descriptive of the registry services and is not an identifier of a source of goods or services”; “the omission of spaces is simply a function of the technical limitations of domain names, and should be disregarded when determining whether the domain name is identical or confusingly similar to a mark”).

Thus, the Complainants have satisfied the first element of their case under the Policy.

B. Rights or Legitimate Interests

The Policy’s non-exhaustive list of possible grounds for establishing rights or legitimate interests in a Domain Name includes the following (Paragraphs 4(c)(i) and (ii)):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.

For some nine years before the Complainants sent the Respondent a letter objecting to the Domain Name, the Respondent maintained the FFCO website to which the Domain Name resolves as a form of investor communications, with links to SEC filings and information about FFCO’s stock, as well as to a website with more detailed information about the activities of FFCO’s principal operating subsidiary, the Respondent. The Panel finds this use of the Domain Name to be “in connection with a bona fide offering of goods or services.” FFCO, the holding company, is in the business of raising capital and controlling the assets of its operating companies, prominently including the Respondent, and the Respondent in turn is in the business of providing financial services as a licensed financial institution. As FFCO’s principal operating subsidiary, representing nearly all of FFCO’s assets and revenues, the Respondent has a commercial interest in maintaining a website with information for investors and potential investors in FFCO, which assures capital for the Respondent’s operations and growth. Thus, Policy paragraph 4(c)(i) applies to the Respondent’s registration and use of the Domain Name.

Policy paragraph 4(c)(ii) does not apply, by its terms, because it is the Respondent’s parent corporation FFCO, rather than the Respondent itself, that is commonly known as “First Franklin.” The list of rights or legitimate interests found in Policy paragraph 4(c) is non-exhaustive, however, and the Panel considers that the Respondent does in fact have a “legitimate interest” in managing a website named for its parent corporation and providing information about that corporation. A commercial corporation normally has a legitimate interest in publishing a website using all or part of its own name in the domain name, and there is no reason why it may not delegate the task of registering and maintaining that website to a wholly-owned subsidiary – one that in this case operates its principal business and benefits from its capital. And FFCO itself is certainly “commonly known” as “First Franklin”; its stock has been traded under that name on the NASDAQ exchange since 1987, and its SEC filings are published under that name.

The Respondent also asserts that FIRST FRANKLIN is a common law trademark and trade name in use since 1987, which is protected within a limited geography and class of services even against the Complainants’ later-registered (and now incontestable) FIRST FRANKLIN mark. The Respondent has not offered evidence of this, however, beyond its vice president’s unsupported allegation. The Panel notes that the name First Franklin is not followed by a TM or SM symbol on either of the Respondent’s websites, nor is that name used directly in identifying any particular products or services listed on the Respondent’s Franklin Savings website. But the failure of this claim in the Respondent’s defense is immaterial, since the Panel finds other grounds for a legitimate interest, as discussed above and also in connection with the element of bad faith.

The Complainants argue, however, that the Respondent cannot be considered to make bona fide use of the name “First Franklin” because the Respondent is in the business of offering mortgage services (among other financial services), and the Complainants have an exclusive right to use that name in connection with mortgage services in the United States, under a registered and incontestable trademark. The Respondent counters that it falls under an exclusion for prior regional use. The Panel notes that the Complainants’ argument does not squarely address the circumstance that the Respondent does not appear to be offering mortgage products under the First Franklin name but rather operates an investor relations website for its parent First Franklin Corporation, using the corporation’s own name, while advertising financial services under the Franklin Savings name.

Rather than deciding this issue in the context of the second element, however, the Panel will consider it in connection with the third element - bad faith - below. That is because bad faith is the heart of most Policy proceedings, including this one, and if the Complainant is unable to meet the burden of demonstrating bad faith in a plausibly contested Policy proceeding, complex issues of rights and exceptions under trademark law are immaterial.

C. Registered and Used in Bad Faith

The Complainants suspect that the Respondent chose the Domain Name so that it might divert consumers from the websites of the larger and more widely known Complainant FFFC. They cite Policy paragraphs 4(b)(iii) and (iv), which include the following in a non-exhaustive list of circumstances evidencing bad faith:

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

There is no direct evidence that the Respondent registered the Domain Name primarily to disrupt the Complainants’ business, nor that it used the Domain Name intentionally to create a likelihood of confusion with the Complainants’ mark. The Respondent expressly denies such intent and denies even being aware of Complainant FFFC when it registered the Domain Name. Thus, the Panel must weigh the evidence from which the Complainant infers bad faith against the plausibility of the reasons given by the Respondent for registering and using the Domain Name.

The Complainants first infer bad faith from the fact that someone typing the FIRST FRANKLIN mark plus “.com” as an address will be presented with the First Franklin Corporation website rather than Complainant FFFC’s website, which they might be seeking. This hardly proves an intent to confuse Internet users, since each company does, in fact, have “First Franklin” in its name. If there is confusion, it is because two financial services companies have long been incorporated with similar names, in different states. Unless a court rules otherwise, both are entitled to use their own legal names to identify themselves, on the Internet as in other contexts.

Similarly, the Complainants’ argument that bad faith can be inferred from the fact that the Domain Name uses the FIRST FRANKLIN mark in its entirety is inapposite. Unlike the UDRP decisions cited by the Complainants, this case involves a company already long-established under that precise name, not a registrant opportunistically obtaining domain names with which it had no previous association.

The Complainants cite UDRP decisions finding bad faith when a registrant obtained a domain name after it had “constructive notice” of the Complainants’ registered mark. This principal has been applied in a few cases where, as here, all parties were located in the United States, where a “constructive notice” doctrine has evolved in trademark law.

In addition, the Complainants argue that the Respondent was “likely” aware of the large and growing mortgage business of Complainant FFFC and its recent registration to do business in Ohio, although the Respondent denies this and there is no evidence of Complainant FFFC opening offices in Ohio or advertising for business in Cincinnati by the time the Domain Name was registered.

But even assuming actual or constructive notice of the Complainants’ trademark registrations, the problem with the Complainants’ theory is that the Respondent gives an entirely plausible reason for registering the Domain Name that does not entail trading on the Complainants’ reputation or creating confusion with its mark. In the cases cited by the Complainants, the registrant either did not respond or merely asserted an intent to use the domain name for a purpose other than diverting business from a mark holder. The Respondent here used its parent company’s name – the same name under which its stock is publicly traded -- for an investor information website about the parent company. And the Respondent has used that website for nine years to provide basic information about the parent company, which would seem to confirm a benign intent.

The Respondent’s parent corporation, First Franklin Corporation (FFCO), was incorporated with that name in 1987. Its stock has been publicly traded in that name since 1987, many years before the Complainants’ mark was registered and before Complainant FFFC was even licensed to do business in Respondent’s State of Ohio. Thus, it is improbable that the name of the holding company was chosen to foster confusion with Complainant FFFC, or that the company’s name was used in the Domain Name simply as a dodge to create confusion among potential borrowers.

The FFCO website to which the Domain Name resolves provides a link to the Respondent’s website at <franklinsavings.com>, which does not mention the First Franklin name except, accurately, on the “Company Profile” page. A visitor to the FFCO website is not even presented with advertising for the Respondent’s mortgage or other financial services, unless she clicks on the link to the Franklin Savings website, where the Franklin Savings name (rather than “First Franklin”) is used to identify the company’s offices and services. There is no evidence that the Respondent, by the use of product names, logos, trade dress, or website styles is attempting to mimic the Complainants’ websites or otherwise engender customer confusion. The only possible complaint is one of deliberate “initial interest confusion,” but that is contradicted by the Respondent’s legitimate reasons for using FFCO’s own name for its investor information website.

The Complainants cite as further evidence of bad faith the fact that the Respondent did not reply to their March 2005 letter of objection. The Panel decisions cited in support of this inference concern registrants who failed to respond in the Policy proceeding, confirming the impression that they were avoiding a complainant’s legitimate challenge and had no legitimate basis for registering and using the domain name in question. Where a respondent comes forward with grounds for registering and using a disputed domain name, those grounds must be assessed on their own merits.

Finally, the Complainants argue that the Respondent’s posting of additional corporate materials on the FFCO website immediately following notice of this proceeding suggests that it recognized the weakness of its position and that it had not been making legitimate use of the Domain Name. But even if this action was meant to bolster the Respondent’s credibility, the description and links previously found on the website did, in fact, provide investors and potential investors with relevant information about a publicly traded company with the same name as the Domain Name.

In short, none of the Complainants’ arguments for bad faith are entirely persuasive. They have failed to adduce legal authority for the proposition that FFCO cannot lawfully use its own name for the address of its investor information website, operated by its subsidiary. Their inferences of bad-faith motivations are not more plausible than the Respondent’s avowed intentions, supported by consistent use of the Domain Name over the past nine years, to provide corporate information about its parent holding company. The Complainants may present to a court their argument that this is an infringing use of their mark, a practicable course of action where all of the parties in this case have access to the courts of the United States. But their argument does not meet the standard for establishing bad-faith registration and use of the Domain Name under a Policy designed to provide quick relief against egregious cases of cybersquatting. The Policy was not designed to deal with disputes between competing rights.

The Panel finds that the Complainants have not satisfied the third element of a Policy claim.

C. Laches

It is doubtful that the equitable defense of laches properly applies to a proceeding under the Policy, even where all of the parties are subject to an Anglo-American legal system that recognizes this defense. The remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid confusion in the future as to the source of communications, goods, or services. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (July 1, 2003) (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes); see also 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2005) §31:10, p. 31-35 and cases cited therein (in common law, the defense of laches bars the recovery of damages incurred before the filing of a lawsuit; this is not apposite to injunctive relief in a trademark action that seeks to avoid confusion among customers in the future).

The Panel does not find it necessary to rule on this defense in the present case, however, because the Complainants have not prevailed on one of the required elements of their claim, the demonstration of bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Sole Panelist

Date: September 27, 2005