WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fleetboston Financial Corporation v. JFK Holdings, Inc.

Case No. D2000-1352

 

1. The Parties

Complainant is Fleetboston Financial Corporation, a corporation organized under the laws of the State of Rhode Island, U.S.A. ("Complainant"). Respondent is JFK Holdings, Inc., an entity with an address at 54 C Westervelt Ave., Tenafly, New Jersey 07670, U.S.A. Complainant is represented by Hinckley, Allen & Snyder LLP.

 

2. The Domain Name and Registrar

The domain name which is the subject of this proceeding is "fleetbank.com" owned by JFK Holdings, Inc. The domain name is registered with Network Solutions, Inc., Herndon, Virginia, USA.

 

3. Procedural History

Electronic copy of Complaint was submitted on October 7, 2000.

Receipt of Complaint was acknowledged on September 14, 2000.

Request for Registrar (NSI) Verification was submitted on October 16, 2000.

Registrar Verification was received on November 13, 2000.

Notification of Complaint Deficiency was submitted on November 13, 2000.

Reply to Complaint Deficiency Notification was submitted on November 15, 2000.

Formal Compliance Review Checklist was submitted on November 16, 2000.

Notification of Complaint and Commencement of Administrative Proceeding was submitted on November 16, 2000.

Notification of Respondent Default was submitted on December 8, 2000.

Notification of Appointment of Administrative Panel was submitted on December 27, 2000.

 

4. Factual Background

Complainant FleetBoston Financial Corporation ("FleetBoston" or "Complainant") is the eighth largest financial holding company in the United States, with over $181 billion in assets.

Based in Boston, Massachusetts, FleetBoston is a global financial company with more than 20 million customers in more than 20 countries and territories around the world.

With more than 4,700 retail outlets and over six million customers, FleetBoston has the largest retail banking franchise in the Northeastern United States.

Since 1982, FleetBoston and its predecessors in interest, have substantially, continuously and exclusively used, in connection with its business, the mark FLEET alone and as a component of composite marks incorporating the word "Fleet," including the mark FLEET BANK.

By virtue of the merger of Fleet Financial Corporation and BankBoston Corporation, Complainant FleetBoston is the owner of the following registered United States service marks:

 

Mark

Reg./

App. No.

Reg./

Filing Date

Goods/Services

         

1.

FLEET

1,258,836

11/22/83

Banking Services

2.

FLEET BANK

2,332,096

3/21/00

Banking; investment brokerage and management; and insurance administration in the fields of life, health, property and casualty

3.

FLEET & Design

2,206,517

12/1/98

Financial services, namely banking and investment services

4.

FLEET 1ST

2,274,946

8/31/99

Banking and financial services

5.

FLEET BUSINESS CREDIT EXPRESS

2,257,905

6/29/99

Banking and financial services

6.

FLEET BUSINESS CREDIT PLUS

2,259,929

7/6/99

Banking and financial services

7.

FLEET CREDIT LINE

1,253,183

10/4/83

Banking services

 

8.

FLEET EASY INVESTMENT OPTION

2,271,042

8/17/99

Banking, savings and investment services

 

9.

FLEET ONE

1,454,621

8/25/87

Banking services

10.

FLEET ONE CLASSIC

2,273,793

8/31/99

Banking services

 

11.

FLEET ONE GOLD

2,271,745

8/24/99

Banking services

12.

FLEET PC BANKING

2,202,612

2,161,795

11/10/98

6/2/98

Financial services

Computer software

13.

FLEET PC BANKING AND DESIGN

2,165,715

2,199,515

6/16/98

10/27/98

Computer software

Financial services

14.

FLEET PC BANKING FOR BUSINESS

2,259,837

2,211,776

7/6/99

12/15/98

Financial services

Computer software

15.

FLEET PC BANKING FOR BUSINESS & DESIGN

2,209,741

2,251,821

12/8/98

6/8/99

Computer software

Financial services

16.

FLEET PLUS

2,089,340

8/19/97

Banking services

17.

FLEET PORTFOLIO IRA

2,156,601

5/12/98

Financial investment services

 

18.

FLEET READY WHEN YOU ARE & DESIGN

2,172,871

7/14/98

Financial services

 

19.

FLEET SECURITIES AND DESIGN

2,105,041

10/14/97

Investment banking and brokerage services

20.

FLEET SELECT

2,089,395

8/19/97

Financial services

21.

FLEET CENTER

2,137,669

2/17/98

Arranging and conducting sporting events, etc.

22.

FLEET CENTER AND DESIGN

2,204,178

11/17/98

Entertainment services

 

23.

FLEETíS ON-TIME REWARD

2,128,898

1/13/98

Loan services

24.

FLEETWORKS

2,140,281

3/3/98

Document data transfer services

25.

FLEET24 SELECT

1,627,597

12/11/90

Financial services

In addition, FleetBoston owns several other common law trademarks incorporating the term "Fleet". Complainantís registered and common law trademarks are referred to herein as the "Fleet Family of Marks."

As a result of substantial, continuous and exclusive use of the mark FLEET alone, the mark FLEET BANK, and other composite marks incorporating the word "Fleet", since at least as early as 1982, FleetBoston has built up substantial value and goodwill in the Fleet Family of Marks. Such goodwill extends throughout the United States, including New Jersey where Respondent JFK Holdings, Inc. ("JFK" or "Respondent") is located.

Since at least as early as 1982, FleetBoston has spent substantial amounts in advertising and promoting its banking products and services offered under the FLEET mark and the "Fleet Family of Marks." Complainant advertises its banking products and services and transacts business with its customers throughout the Northeastern United States through its network of branch offices and through its website located at "www.fleet.com".

FleetBoston provides quality banking products and services throughout the Northeastern United States. For example, FleetBoston offers a full line of banking products and services, including consumer and commercial banking, mortgages, consumer lending, asset-based lending, and investment management.

Through its efforts over the last 18 years, FleetBoston has established a strong customer base throughout the Northeastern United States and is known throughout its trading area as a provider of quality banking products and services. By virtue of the quality of its products and services, and as a result of its expenditure of considerable sums of money on advertising and promotional activity, FleetBoston has built up valuable good will in its FLEET, FLEET BANK and Fleet Family of Marks. The FLEET, FLEET BANK and Fleet Family of Marks have become so well known as to be considered "famous" and of substantial and immeasurable value to FleetBoston.

Since March 1996, FleetBoston has operated a web site at the address "www.fleet.com".

FleetBoston uses its website to advertise its banking products and services. FleetBostonís website also allows current and potential customers of FleetBoston to learn about its various banking products and services and to access its OfficeLink and HomeLink services which permit Complainantís customers to, among other things, pay bills, transfer funds and check account balances on the Internet.

The Internet has become an extremely important communication and marketing tool for FleetBoston.

Respondent registered the domain name at issue on December 7, 1998.

 

5. Partiesí Contentions

A. Complainant

On August 16, 2000, after learning of Respondentís registration of the "fleetbank.com" domain name, counsel for Complainant sent a cease and desist letter to Registrant notifying Registrant of its rights in the name FLEET and the Fleet Family of Marks.

On or about September 8, 2000, Respondent called Complainantís counsel and stated that Respondent would respond to Complainantís letter on or before September 13, 2000.

On September 15, 2000, Complainantís counsel sent another letter to Respondent requesting that Respondent respond to Complainantís August 16, 2000, letter by September 20, 2000.

Respondent responded to that letter via a telephone call to Complainantís counsel. During the call, Respondent agreed to transfer the domain name to Complainant and to complete and forward the documents necessary to do so.

Respondent never delivered the promised documents and has not been heard from since September 15, 2000.

Subsequent to FleetBostonís use of the FLEET, FLEET BANK and Fleet Family of Marks, subsequent to FleetBoston registration of the same, and without the consent or authorization of FleetBoston, Respondent registered the Internet domain name, "fleetbank.com" with Network Solutions, Inc. ("NSI") on December 7, 1998.

The domain name "fleetbank.com" is identical to Complainantís FLEET BANK mark and is confusingly similar to Complainantís FLEET mark and the FLEET Family of Marks.

Registration of a domain name, which incorporates, in its entirety, a distinctive mark, creates sufficient similarity between the mark and the domain name to render it confusingly similar. Eauto, LLC v. Triple S. Auto Parts et al., WIPO Case No. D2000-0047 (March 24, 2000).

The registration of Complainantís FLEET and FLEET BANK marks are prima facie evidence of the validity of such registrations and creates a presumption that the FLEET marks are inherently distinctive.

The domain name "fleetbank.com" incorporates, in its entirety, the registered trademark FLEET BANK and the registered trademark FLEET.

Based on Respondentís registration of a domain name which incorporates Complainantís famous and distinctive FLEET BANK and FLEET marks and Complainantís well known, long standing use of such marks in the area of banking products and services, Respondentís domain name "fleetbank.com" is identical to Complainantís FLEET BANK mark and is substantially similar to Complainantís FLEET trademark and the Fleet Family of Marks.

Respondent has no rights or legitimate interest with respect to the mark FLEET or the FLEET Family of Marks or the domain name "fleetbank.com".

Upon information and belief, the domain name "fleetbank.com" does not comprise the legal name of Respondent or a name that is otherwise commonly used to identify Respondent.

Respondent did not, prior to notice of this dispute, use the "fleetbank.com" domain name or a trademark corresponding to the domain name, in connection with a bona fide offering of goods or services.

Respondent has not made a bona fide non-commercial, fair use of the domain name "fleetbank.com".

Complainant never authorized, licensed or otherwise permitted Respondent or anyone else to use the FLEET mark or the Fleet Family of Marks or any confusingly similar variations thereof.

Complainant has not authorized, licensed or otherwise permitted Respondent to apply for or use any domain name comprising or incorporating Complainantís FLEET BANK or FLEET marks or the Fleet Family of Marks.

The Internet domain name "fleetbank.com" does not currently resolve to a website nor does it appear that a website at this domain address is currently under construction.

Respondentís registration of the domain name "fleetbank.com" was done in bad faith in order to prevent Complainant from reflecting its FLEET BANK mark in a corresponding domain name.

Respondentís bad faith registration of the "fleetbank.com" domain name is evidenced by Respondentís registration of several other domain names comprising or containing the famous or well-known names or trademarks of others such as: "bandi-pen.com", "bandipen.com", "royaldutchshell.com", "chasefirst.com", "firstchase.com" and "tajimahal.com". Two of these domain names contain the famous trademark of another financial institution, namely Chase Manhattan Bank. Registrantís registration of these other domain names that contain well-known or famous marks, establishes a pattern of such behavior.

Registrant has used the domain name "fleetbank.com" in bad faith even though the domain name "fleetbank.com" does not currently resolve to an active website.

Passive use of the domain name in the manner practiced by the Registrant is sufficient to form the basis for bad faith registration and use of such domain name. See Cho Yong Pil v. Kee Dooseok, WIPO Case No. D2000-0754 (August 28, 2000); August Storck KG v. Tony Mohamed, WIPO Case No. D2000-0196 (May 3, 2000); SeekAmerica Networks, Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131 (April 13, 2000); Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003 (February 18, 2000).

The passive holding of a domain name may be sufficient to constitute bad faith use, taking into consideration the overall context of the Respondentís behavior. See Telstra supra.

At lease two prior WIPO Panels found bad faith use based on the passive holding of a domain name in situations similar to the present case. First, in August Storck, the Panel held that the registrant of the domain name "werthersoriginal.com" used the domain name in bad faith where: (1) the complaintís trademark was well known and had a strong reputation; (2) there was no evidence of respondentís good faith use of the domain name; (3) the respondent registered one other domain name which was similar to the corporate name of a well-known investment company; and (4) the respondent admitted in an e-mail that he would not use the domain name to sell goods and services. Second, in Telstra, the Panel found that the registrantís passive holding of the domain name "telstra.com" constituted bad faith use where: (1) complainantís trademark had a strong reputation and was widely known; (2) respondent provided false contact information; and (3) it was not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate.

The instant case contains facts similar to those present in the August Storck and Telstra decisions:

(1) Complainant has numerous trademark registrations in the United States and abroad for its FLEET mark and the Fleet Family of Marks.

(2) Complainantís trademark is well known and has a strong reputation. Complainant is one of the largest financial holding companies in the United States, with over $181 billion in assets. Complainant has over 20 million customers in more than 20 countries and territories around the world. Complainant serves its retail banking customers on-line at its website located at the domain address "fleet.com" and through its 4,700 retail outlets throughout the Northeastern United States. Complainantís main activities are carried out under the FLEET mark and the Fleet Family of Marks.

(3) As was the case with the mark at issue in Telstra, the Complainantís numerous trademark registrations for the marks FLEET, FLEET BANK and the Fleet Family of Marks and its wide reputation in the word FLEET in relation to banking services around the world, it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name "fleetbank.com".

Based on the foregoing, Respondent has registered and used the domain name "fleetbank.com" in bad faith.

B. Respondent

Respondent is in default and has not filed a Response.

 

6. Discussion and Findings

Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.

The Panel has reviewed the evidence submitted by the Complainant concerning ownership of its trademarks and is satisfied that the Complainant has proven trademark rights in such terms. Furthermore, the Panel finds that the domain name "fleetbank.com" is confusingly similar to the trademarks in which the Complainant has rights.

The record does not show any legitimate non-commercial use or fair use by Respondent. The Panel hereby finds that Respondent has not shown any legitimate rights in the domain name.

Finally, the Panel needs to examine the issue of bad faith. The record indicates that Respondent violated Policy 4(b)(ii) since it has engaged in a pattern of conduct to prevent trademark owners from reflecting their trademarks in domain names (e.g., registration of "royaldutchshell.com" and "bandipen.com"). Accordingly, the Panel finds that Complainant has met its burden of proof as to Policy 4(a)(iii) in that the domain name was registered and is being used in bad faith.

7. Decision

The Panel decides that the domain name "fleetbank.com" is identical or confusingly similar to the trademarks of Complainant, that Respondent has no rights or legitimate interests in such domain name, and that the domain name in issue has been registered and is being used in bad faith.

The Panel hereby orders that the registration of the domain name "fleetbank.com" be transferred to Complainant.

 


 

Clark W. Lackert
Sole Panelist

Dated: January 11, 2001