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Mercantile Bankshares Corporation v. David Hunt [2005] GENDND 41 (24 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mercantile Bankshares Corporation v. David Hunt

Case No. D2004-0897

1. The Parties

The Complainant is Mercantile Bankshares Corporation of Baltimore, Maryland, United States of America, represented by Venable, LLP of Washington, D.C., United States of America.

The Respondent is David Hunt of New York, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mercsecurities.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2004. On October 29, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On October 29, 2004, Go Daddy Software 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 contact. The Center verified that the 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 November 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2004. No Response was filed with the Center. Accordingly, the Center notified the Respondent’s default on December 9, 2004.

The Center appointed Bruce E. O’Connor as the sole panelist in this matter on December 17, 2004. 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 December 27, 2004, the Panel issued Procedural Order No. (1), requesting Complainant to submit evidence directed to specifically-enumerated items in the Request, and affording Respondent a time to submit evidence in rebuttal to Complainant’s submissions. Complainant filed its supplemental evidence on January 13, 2005; Respondent did not file any evidence in rebuttal.

4. Factual Background

Complainant is the owner of the trademark MERCANTILE & Design, protected by United States Trademark Registration No. 2,866,156, registered on July 27, 2004, and being effective as of its filing date on February 11, 2003. The registration protects, inter alia, investment fund transaction services, mutual fund brokerage services, wealth management services, and investment management services.

Complainant is also owner of the trademark mercantile, protected by Maryland State Registration No. 2003-0031, registered February 13, 2003. The registration as submitted by Complainant does not specify any services, but only the methods by which the services are advertised and promoted (e.g., advertising, brochures, etc.).

Respondent is the registrant of the domain name in dispute, <mercsecurities.com>, registered on July 7, 2004.

5. Parties’ Contentions

A. Complainant

1. The Domain Name Is Identical or Confusingly Similar to a Trademark or Service Mark in Which the Complainant Has Rights.

In addition to Complainant’s United States and state trademark registrations, Complainant asserts that it has common law rights in the service marks MERCANTILE, MERCANTILE SECURITIES, MERCANTILE INVESTMENT SERVICES, MERCANTILE-SAFE DEPOSIT & TRUST, and MERCANTILE BANK & TRUST. Complainant contends that its rights in its MERCANTILE marks are expansive and predate Respondent’s registration of the domain name in dispute.

Complainant contends that it is the largest bank holding company in the mid-Atlantic region of the United States, and that it has provided financial services under its famous name MERCANTILE since the 1860’s. According to Complainant, these services include a full range of financial and investment services, including investment advice, portfolio management, and securities.

Complainant alleges that it has a subsidiary, Mercantile Securities, Inc., which provides financial services under the name Mercantile Securities. Complainant asserts that it licensed its name to a subsidiary of BISYS Group, to assist Complainant in providing investment services to Complainant’s customers, and that the name of this subsidiary is Mercantile Investment Services. Complainant states that the offices of BISYS and Mercantile Investment Services are located in Boston, Massachusetts, United States of America.

Complainant notes that the domain name in dispute is a combination of the words “merc” and “securities.” Complainant asserts that the first word “merc” is an abbreviation of Complainant’s mark MERCANTILE SECURITIES. Complainant asserts that it also uses the abbreviation ‘MERC’ to refer to some of its financial services, and gives an example of use of MERCACCESS as a service provided to customers of Mercantile Bank & Trust, Complainant’s largest banking affiliate.

Complainant points out that confusion is enhanced because Respondent is deliberately providing Complainant’s address as its own address on Respondent’s Web site. In this regard, Complainant points to a Web site operated by Respondent using the domain name in dispute, on which site appears the Boston address, which the Complainant notes is the same address that the Complainant has provided for offices of BISYS and Mercantile Investment Services. Complainant further points out that the Web site operated by Respondent is for a company called Mercantile International Securities, and that Complainant is advised by BISYS that there is no such entity located at the address listed on that Web site.

Complainant also asserts that United States government agencies have received complaints about the services offered by Mercantile International Securities, leading Complainant to conclude that the services offered by Respondent at its Web site may not be of the quality traditionally offered by Complainant and may even be in violation of applicable laws or regulations. Complainant urges that the affiliation suggested by the use of the domain name in dispute thus causes additional damage to the name and goodwill of Complainant.

Finally, Complainant asserts that there have been instances of actual confusion, in that Mercantile Investment Services has been contacted by government agencies in connection with the complaints made to the government agencies as described by Complainant.

2. Respondent Has No Rights or Legitimate Interest in Respect of the Domain Name.

Complainant contends that, to the best of its knowledge, there is no United States entity called Mercantile Securities International. Complainant has submitted (in Annex I) the results of a search of a database of companies that have filed a registration, as required by law, with the United States Security and Exchange Commission. Complainant points out that 23 companies with the name “Mercantile” have filed with the SEC, but “Mercantile Securities International” is not on the list. Complainant contends that Respondent is using the domain name in dispute with the intent, for commercial gain, to misleadingly divert consumers or investors to its Web site and induce them to do business because of the trustworthiness consumers associate with Complainant.

3. The Domain Name Was Registered and Is Being Used in Bad Faith.

Complainant asserts, on information and belief, that Respondent registered the domain name in dispute with knowledge that Complainant had rights in and to its MERCANTILE mark. Complainant alleges that Respondent had notice of Complainant’s trademark rights by virtue of Complainant’s long use of its marks, including on the Internet at “www.mercantile.net”.

Complainant asserts that consumers will be confused, and that Complainant’s reputation will be damaged if Respondent’s services or business practices are unsatisfactory or worse. Complainant asserts that it thus will be damaged by the continued use of the domain name in dispute that resolves to a commercial site over which Complainant has no quality control.

Complainant finishes by alleging that circumstances indicate that the domain name in dispute was acquired, in bad faith, primarily for the purpose of diverting Complainant’s customers to Respondent’s site for commercial gain.

4. Procedural Order No. (1)

The Panel, acting under paragraphs 10(a) and 12 of the Rules, invited the Complainant to supplement its Complaint in the following particulars:

(1) Establishment and maintenance of any common law rights that Complainant asserts in its marks MERCANTILE, MERCANTILE SECURITIES, MERCANTILE INVESTMENT SECURITIES, MERCANTILE-SAFE DEPOSIT & TRUST, and MERCANTILE BANK & TRUST, prior to the filing of the Complaint on October 28, 2004;

(2) Complainant’s assertion that it is the largest bank holding company in the mid-Atlantic region in the United States;

(3) Complainant’s assertion that its name MERCANTILE is famous;

(4) Complainant’s provision of financial services under that name since the 1860’s;

(5) The names of subsidiaries and other affiliates of Complainant who are using a name or mark including MERCANTILE, and the type of relationship (by stock ownership, agreement, or the like) between Complainant and those organizations;

(6) Use of the name and mark MERCANTILE SECURITIES by (a) Mercantile Securities, Inc. and (b) BISYS Group;

(7) The license agreement, or other agreement, understanding or memorandum, by which Complainant licenses its name to BISYS Group;

(8) Complainant’s assertion that the offices of Mercantile Investment Services are located at the Boston address;

(9) The companies in Annex I that are owned or controlled by Complainant;

(10) (a) Complaints received by United States government agencies about the services offered by Mercantile International Securities and (b) contacts by such government agencies with Mercantile Investment Services as to confusion alleged by Complainant.

Complainant responded to each and every one of these requests.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name can be transferred when Complainant has established the following:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel must make its decision on the basis of the statements and documents submitted, under paragraph 15(a) of the Rules.

Complainant has established to the satisfaction of the Panel that it has trademark rights in a design including the word ‘mercantile,’ as set forth in Complainant’s United States Trademark Registration, and that Complainant and its subsidiaries and affiliates use that mark extensively for services in the financial area.

The Panel remains uncertain, however, as to whether Complainant has common law trademark rights in various other non-design marks, including the word mark MERCANTILE, as Complainant contends.

The evidence submitted with the Complaint and in response to Procedural Order No. (1) shows use of the alleged common law marks as trade names. Such are as such not protected by the UDRP process, see the Report of the Second WIPO Internet Domain Name Process, September 3, 2001, pages 134-144. See Baltimore Gas and Electric Company v. National Material Supply Co., LLC, WIPO Case No. D2001-0315; University of Konstanz v uni-konstanz.com, WIPO Case No. D2001-0744; Sealite Pty. Limited v. Carmanah Technologies, Inc., WIPO Case No. D2003-0277; G. Bellentani 1821 S.p.A. v. Stanley Filoramo, WIPO Case No. D2003-0783.

Complainant also is not the only company having trade names that include the word ‘Mercantile.’ The evidence submitted (in Annex I) shows various companies registered with the Securities and Exchange Commission that have not been identified as being owned or controlled or licensed by Complainant: Mercantile Absolute Return Fund, LLC; Mercantile Alternative Strategies Fund LLC; Mercantile Bancorp, Inc.; Mercantile Bancorporation Inc.; Mercantile Bank Corp.; Mercantile Capital Trust I; Mercantile Credit Card Master Trust; Mercantile Dry Ice Investors LLC; Mercantile Funds Inc.; Mercantile Long Short Manager Fund LLC; Mercantile Mutual Funds Inc.; Mercantile National Bank of Indiana; Mercantile Refinance LP; and, Mercantile Trust Co. National Association. Further, most of the subsidiaries and affiliates of Complainant use names that do not include MERCANTILE, e.g., The Annapolis Banking and Trust Company.

Despite the alleged long use of the word ‘MERCANTILE’ by Complainant (not established in Complainant’s response to Procedural Order No. (1)) and the size of Complainant (established by Complainant in that response), the use by unrelated third parties leads the Panel to find that the word ‘MERCANTILE’ by itself is not distinctive in the financial services field, at least as far as solely identifying Complainant and its related companies. That word does not appear to be a famous mark as initially contended by Complainant (an assertion that Complainant declined to establish in its response to Procedural Order No. (1)).

The Panel concludes that Complainant has not established common law trademark rights in the mark MERCANTILE. ’In view of its unexamined nature, the Panel finds that Complainant’s Maryland State trademark registration does not alter this conclusion.

The situation is similar with regard to the trade name ‘Mercantile Securities.’ The evidence submitted in response to Procedural Order No. (1) suggests that a certain use of that term may have been made as a trademark, without, however, showing sufficient particulars as to geographic location and use for the Panel to make a conclusion in this area.

The Panel concludes that Complainant has not established common law trademark rights in the mark MERCANTILE SECURITIES. This conclusion also applies to the other alleged common law trademarks of Complainant, again on a failure of the evidence submitted.

The determination under Paragraph 4(a)(i) of the Policy thus must be made only with reference to the registered mark MERCANTILE & Design. It seems that Complainant argues that the entire domain name in dispute, <mercsecurities.com> is an abbreviation of the mark MERCANTILE SECURITIES (disregarding the generic top-level domain “.com”).

Since the Panel has concluded that Complainant has not established trademark rights in MERCANTILE SECURITIES, the similarity of the domain name in dispute to MERCANTILE SECURITIES is irrelevant.

When the Panel compares the domain name in dispute to the mark in which Complainant has established rights, MERCANTILE & Design, the determination as to likelihood of confusion comes down to whether the design portion of the mark can be disregarded and to whether the consumer of financial services would recognize “merc” as an abbreviation or other identifier for the word “mercantile.”

On the first point, the conventional wisdom is that words in a composite mark are generally more distinctive and dominant than design elements including logos and specific type fonts. But, the fact that others use the word “mercantile” in the financial services field makes it improper to apply conventional wisdom into this case.

On the second point, the only evidence submitted by Complainant is a use of the term “merc” in conjunction with the word” access” for the services of online account access by businesses. This single use does not in the opinion of the Panel overcome the immediate and apparent reaction of a reasonable observer, who is unlikely to associate the term “merc” with one particular word beginning with those letters (e.g., mercy, merchant, mercenary, mercury and mercantile). No evidence has been submitted as to consumer reactions that would cause the Panel to find otherwise.

The remaining contentions by Complainant, as to Respondent’s use of an address that is identical to an address used by Complainant’s licensee (established by the response to Procedural Order No. (1)) and complaints to the SEC as to services offered at a Web site using the domain name in dispute, contended to be evidence of actual confusion, have been considered. The former goes to the issue of bad faith under paragraph 4(a)(iii) of the Policy and is not germane to the issues under paragraph 4(a)(i), and the latter is suspect because the evidence submitted (in the Reply) is a hearsay declaration, without details, by an employee of Complainant.

Accordingly, the Panel finds that Complainant has not met its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Given the finding under paragraph 4(a)(i), the Panel does not find it necessary to address the proofs of the Complainant as to paragraph 4(a)(ii).

C: Registered and Used in Bad Faith

Given the finding under paragraph 4(a)(i), the Panel does not find it necessary to address the proofs of the Complainant as to paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, the Complaint is denied.

Bruce E. O’Connor
Sole Panelist

Dated: January 24, 2005