WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Chase Manhattan Corporation et al. v. John Whitely

Case No. D2000-0346

 

1. The Parties

Complainant is:

The Chase Manhattan Corporation
270 Park Avenue
New York, New York 10017
Chase Merchant Ventures, Inc.
100 Duffy Avenue
Hicksville, New York 11801

and

Chase Merchant Services, LLC
265 Broad Hollow Road
Melville, New York 11747

Represented by:

Chase Manhattan Legal Department
One Chase Manhattan Plaza
26th Floor
New York, New York 10081

Respondent is:

John Whitely
2676-K Bayshore Blvd.
Dunedin, Florida 34698

 

2. The Domain Name and Registrar

The disputed domain name is: <chasemerchantservices.com>. The registrar for this domain name is Network Solutions Incorporated (NSI) of Herndon, Virginia, USA.

 

3. Procedural History

This dispute is to be decided in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).

The Complaint was filed on April 27, 2000. On May 3, the Center requested that NSI check and report back on the registrant for the domain name <chasemerchantservices.com>. On May 9, 2000, NSI reported to the Center that the registrant was the Respondent:

John Whitely

2676-K Bayshore Blvd.

Dunedin, Fl 34698

U.S.A.

On May 10, 2000, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. Respondentís final response was received by the Center on May 23, 2000.

According to a letter from Complainant to the Center, Respondent had not forwarded a copy of his response to Complainant as of May 25, 2000. However, the Center furnished a copy of Respondentís response to Complainant by fax on May 22, 2000. Complainant sent a rejoinder to Respondentís response that was received by the Center on May 26, 2000. In accordance with the discretion provided by the Rules (nos. 10 and 12), this Panel chooses not to consider Complainantís rejoinder dated May 25, 2000. Even though Complainant did not receive a copy of the response from Respondent as required by the Rules, Complainant did receive a copy of Respondentís submission from the Center. The fact that Complainant received the response from the Center rather than from Respondent, in the Panelís view, does not justify allowing Complainant to file a further submission.

The Administrative Panel submitted a Declaration of Impartiality and Independence on May 29, 2000, and the Center proceeded to appoint the Panel on May 29, 2000.

This Panel finds the Center has adhered to the Policy and the Rules in administering this Case.

This Decision is due by June 12, 2000.

 

4. Factual Background

Complainant Chase Manhattan Corporation et al. constitute a large financial institution well-known throughout the United States and the world. One of Complainantís financial services is to act as a clearing bank for merchants holding credits from credit card transactions. Respondent is also in this business. During 1998, Respondent registered the domain name <chasemerchantservices.com> in order to continue pursuing this same line of business. Complainant disputes Respondentís right to pursue his business using this domain name.

 

5. Partiesí Contentions

Complainantís Contentions:

a. Complainant owns a trademark "Chase" which was registered on the Principal Register (no. 1,521,765) in the United States on January 24, 1989 for providing financial services. However, Complainantís use of "Chase", "Chase Manhattan" etc. goes back to the late 1800ís in the United States of America, and Complainant owns numerous other trademarks registered in the United States of America and abroad using "Chase" and "Chase Manhattan".

b. The Chase Manhattan Bank and its affiliated institutions are well-known throughout the world.

c. Respondentís registration of the domain name <chasemerchantservices.com > infringes Complainantís long-established and subsisting trademark.

d. Respondent has used its infringing domain name to offer services in competition with the Chase Manhattan Bank et al. for the financial gain of Respondent.

e. Complainant contends the disputed domain <chasemerchantservices.com> should be turned over to Complainant.

Respondentís Contentions:

a. Respondent has a license from Pinellas County, Florida to use the business name "Chase Merchant Services".

b. Respondent began using the name "Chase Merchant Services" to conduct its business of clearing merchant credit card receivables in 1994, before Complainant began its own business in this field in 1997.

c. Respondent began using the name "Chase" in the sense of chasing business.

 

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain name <chasemerchantservices.com> transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):

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

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

iii. the domain name was registered and is being used in bad faith.

Identical or Confusingly Similar

Complainant has produced records showing myriad registrations, in the United States and all over the world, of names related to Chase Manhattan Bank (Complaint Exhibits F and G). Moreover, this Panel takes note of the fact that the name "Chase Manhattan" and its variations are widely known in the United States and the world.

Respondent registered the domain name <chasemerchantservices.com> during 1998. This panel finds this domain name is identical to the Complainantís company name "Chase Merchant Services" which began doing business in 1997.

Legitimate Rights or Interests

Respondent is not a licensee of Complainant and makes no pretense at all to be using the "Chase " name with the consent of Complainant. Respondent has produced a copy of a document which Respondent claims is a business license allowing him to use the name "Chase Merchant Services", but which looks to this Panel to be a tax receipt issued by Pinellas County, Florida. Respondent contends this allows him to register the domain name <chasemerchantservices.com> and to use the name to carry on a clearing business for merchant credit card receivables.

This Panel finds Respondent has no legitimate right or interest in the domain name <chasemerchantservices.com>. This is because Respondentís use of the name "Chase" is an infringing use of Complainantís trademark. An infringing use of Complainantís trademark can not give rise to a legitimate right or interest on the part of Respondent (the Policy 4(a)). Even assuming the Pinellas County Florida document is what Respondent claims it to be (which this Panel disbelieves), it does not matter that Respondent has received a business license from Pinellas County, Florida ostensibly granting him the right to use the name "Chase Merchant Services". Such a license confers no trademark rights vis-ŗ-vis Complainantís famous and subsisting trademark dating back to the 1800ís. Respondent could only defeat Complainantís trademark rights by showing prior registration and/or use or a license or Complainantís acquiescence in Respondentís trademark use or similar. None of this is apparent.

Therefore, the Panel finds Respondent has no legitimate rights or interests in the trademark.

Registered and Used in Bad Faith

Complainant has shown its many "Chase" and "Chase Manhattan" etc. trademarks were registered over the years (Complaint, Exhibits F and G). Thus, Respondent had constructive notice of Complainantís trademarks before registering the domain name <chasemerchantservices.com> during 1998. And, as this Panel noted earlier in this Decision, the "Chase" family of trademarks for financial services are famous in the United States and much of the rest of the world. Given that Respondent operates in the field of credit card services, it is inconceivable to this Panel that Respondent did not have in mind Complainantís famous, long-established and subsisting trademarks when Respondent registered the disputed domain name. This is strong evidence of bad faith.

Complainant has shown that Respondent is using the domain name <chasemerchantservices.com> to lead its website visitors to a bank service identical to one of Complainantís, viz., the clearing of merchantsí credit card receivables. It thus is clear to this panel that Respondentís infringing use of Complainantís trademark is aimed at parasitizing the goodwill of Complainantís trademark to attract customers to Respondentís competing service. This is compelling evidence of bad faith in the registration and use of the disputed domain name. (see also the WIPO Center Decisions 2000-0014 and 2000-0015).

 

7. Decision

This decision is based on the foregoing findings that Respondentís domain name <chasemerchantservices.com> is identical to Complainantís service mark "Chase Merchant Services", that Respondent has no legitimate right or interest in this service mark, and that Respondent registered and is using this domain name in bad faith.

In consequence, based on ICANN Policy para 4(i) and Rule 15, this Panel orders that the disputed domain name <chasemerchantservices.com> be turned over to Complainant, the Chase Manhattan Corporation, Chase Merchant Ventures, Inc. and Chase Merchant Services, LLC.

 


 

Dennis A. Foster
Sole Panelist

Dated: June 12, 2000