WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

FleetBoston Financial Corporation v. Medfield Builders

Case No. D2000-1585

 

1. The Parties

Complainant in this matter is FleetBoston Financial Corporation, located at 100 Federal Street, Boston, Massachusetts, USA. Complainant is represented by counsel, William R. Grimm, Esq. of the firm Hinckley, Allen & Snyder of Boston, Massachusetts, USA.

Respondent is Medfield Builders, located at 201 Maple Street, Needham, Massachusetts, USA. Respondent is represented by counsel Jonathan S. Helman, Esq. of the firm Helman & Neustadt of Wellesley, Massachusetts, USA.

2. The Domain Names and Registrar

The domain names at issue in this proceeding are:

<bankboston-pavilion.com>

<thebankbostonpavilion.com>

<fleetboston-pavilion.com>

<fleetbostonpavilion.com>

All of the domain names are registered with Network Solutions Inc. (NSI) located at 505 Huntmar Drive, Herndon, Virginia, USA.

 

3. Procedural History

Complainant submitted its complaint in this matter to WIPO on November 17, 2000 by e-mail. The complaint was filed in accordance with all requirements of the rules governing Uniform Domain Name Dispute Resolution Procedures, as well as WIPOís Supplemental Rules. Following the required verification by NSI as the Registrar of the domain names in question, the Center notified the Respondent of the filing of the complaint on December 1, 2000 and officially commenced the action on that date. The Center required that the Respondent submit its response by December 20, 2000. Subsequently, upon request by Respondent, the deadline for responding to the complaint was extended until December 30, 1999. A timely response was submitted on behalf of the Respondent.

Proceedings were suspended in this case based on a request by the Complainant. The case was re-instituted as of February 19, 2001.

On February 23, 2001, the Center invited the below-named panelist to serve in connection with the above-reference administrative proceeding. On February 28, 2001 the panelist submitted a Declaration of Impartiality and Independence and subsequently, on March 8, 2001 the Center notified the parties that an administrative panel had been appointed and transmitted the case file to the administrative panel. The Center requested that the panel issue its decision no later than March 21, 2001.

On March 12, 2001, an interim order was issued to both parties asking that each provide additional evidentiary materials to support various claims and allegations made in their respective pleadings. The interim order required that the documentation be submitted no later than March 23, 2001. Complainant timely provided the requested information. Respondent did not provide its supplemental materials until March 27, 2001. However, the panel admits the additional evidentiary materials from both parties into the evidence. As a result of the issuance of the interim order, WIPO extended the date for decision until April 1, 2001.

 

4. Factual Background

This case arises out of Respondentís registration of the domain names <bankboston-pavilion.com>, <thebankbostonpavilion.com>, <fleetboston-pavilion.com> and <fleetbostonpavilion.com>, all of which were registered with NSI during the period from February 28, 1999 through March 15, 1999. The domain names when used point to websites for the Cigar Club, which states that it is a website "designed for the casual smoker to the aficionado." See Complaint Exh. G. Otherwise the domain names point to pages stating that the website is under construction together with a disclaimer of non-affiliation with the Complainant, see Complaint Exh. H, or lead to a parking page provided by the Registrar.

Complainant Fleet Boston Financial Corporation is a financial holding company based in Boston that has retail outlets and customers throughout the United States as well as in countries throughout the world. Complainant Fleet Boston Financial Corporation is the result of a merger, announced March 14, 1999, between Fleet Financial Group Inc. and BankBoston N.A. The merged company uses the marks BANKBOSTON, BANCBOSTON and FLEETBOSTON.

 

5. Partiesí Contentions

In reviewing the complaint and the response, it appears that other than agreeing that this matter is properly before the Panel and that it is within the jurisdiction of the UDRP, the parties agree to little else.

A. Complainant

Complainant bases its complaint upon the rights that its predecessor-in-interest, Fleet Financial Group, acquired in the mark FLEET used alone or in connection with other words in the area of banking and financial services. Complainant also bases its claim on the rights that its predecessor-in-interest BankBoston had in the marks BANKBOSTON and similar terms used in connection with banking and financial services. These rights predate the creation of the disputed domain names. In addition, Complainant bases its complaint on its pending applications to register the mark FLEETBOSTON, which applications were filed with the United States Patent and Trademark Office after the disputed domain names were registered.

Complainantís predecessor BankBoston N.A. had entered into a sponsorship agreement with SFX Entertainment pursuant to which BankBoston paid for the right to have a concert venue renamed and promoted as the BankBoston Pavilion. Subsequent to the merger of BankBoston and Fleet Financial Group Inc., Complainant authorized SFX to rename and operate the BankBoston Pavilion as the "FleetBoston Pavilion." See Complaint ∂∂ 18, 20. It is significant to note that in its response, Respondent does not deny these allegations but merely states that they are irrelevant to the action. See Respondentís Response.

Complainant contends that Respondent, with knowledge of Complainantís FLEET and BANKBOSTON marks, as well as with knowledge of the merger of Fleet Financial Group and BankBoston, registered the domain names; that the domain names are confusingly similar to Complainantís marks; that Respondent has no rights or legitimate interests in the names; and that the domain names were registered and are being used in bad faith. Evidence of bad faith includes the fact that the Respondent has registered other domain names containing famous or well-known trademarks of third parties, that Respondent registered certain of the domain names immediately after the merger of Fleet and BankBoston was announced to the public, and that other domain names registered by the Respondent, notably bankbost-pavilion.com and thebankbostonpavilion.com, have been registered but have not been used, which thereby signals bad faith.

B. Respondent

In reply to the complaint, Respondent has put in an response to the specific allegations made by the Complainant. However, Respondent has not set forth any facts or evidence to show legitimate rights or interests in any of the domain names or to defeat Complainantís showing of bad faith use and registration. Respondent does assert in its response that its registration and use of the domain names predated the Complainantís use of the domain name. See Response, Paragraph 67. In support, Respondent has provided WHOIS records showing the creation date of its domain names and also showing that its domain names were created before Complainant registered certain domain names. However, no evidentiary support has been provided to show that Respondent accrued rights in the domain names prior to Complainant establishing rights in its FLEET and BANKBOSTON marks. Respondent has produced no evidence of any trademark registrations or applications for any of the marks contained in the domain names. Further, despite being requested by the Panel to provide factual evidence to support claims that the domain names were registered before Complainant made any use of its mark, as alleged in Paragraphs 67 and 74 of the response, no such evidence was provided. Thus, Complainantís contentions are limited to its assertion that Complainant has not provided any credible evidence and that Respondent has never initiated contact with the Complainant in order to sell or lease the domain names. Respondent also relies on the fact that it has a disclaimer on one of its webpages stating that it is not affiliated with Complainant.

 

6. Discussion and Findings

In order for Complainant to prevail in this matter and to obtain the requested relief of a transfer of the disputed domain names, Complainant must prove:

- That Complainant has rights in its marks;

- That the domain names at issue are identical or confusingly similar to trademarks or service marks in which the Complainant has rights;

- That the Respondent has no rights or legitimate interests in the domain names; and

- That the domain names were registered and are being used in bad faith. See UDRP Policy, ∂ 4(a).

a. Rights in the Mark

There seems little doubt that Complainant has established ongoing rights in the mark FLEET based not only on the use made by its predecessor corporation, but also on the continued use by Complainant and Complainantís pending applications to register marks that include the term FLEET. In its response to the complaint, Respondent has essentially acknowledged Complainantís rights in the name FLEET, recognizing that it is "well-known in the field of banking and financeÖ" See Response ∂ 68.

With respect to rights in the marks BANKBOSTON and BANCBOSTON, the panelist had been concerned that as a result of the merger between BankBoston Corp. and Fleet Financial Group, use of the mark BANKBOSTON had stopped. However, Loraine Parkinson, Senior Counsel for Fleet Boston Financial Corporation, in a sworn affidavit, has provided information making it clear that the BANKBOSTON mark (as well as BANCBOSTON) continues to be used in connection with goods and services provided in the United States as well as abroad. Based on this evidence, it is evident that the Complainant has proven rights in the mark FLEET as well as in the marks BANKBOSTON and BANCBOSTON, which predate the registrations of the domain names. (Footnote 1)

b. Identical or Confusing Similarity

Turning to the next element of the Policy, the panel finds that the domain names are confusingly similar to the FLEET and BANKBOSTON marks owned and used by Complainant. Respondentís registration of domain names that incorporate these marks create sufficient similarity between the mark and the domain names to render the domain names confusingly similar notwithstanding the addition of the generic term "pavilion." Eauto, LLC v. Triple S Auto Parts et al, WIPO D2000-0047.

c. Legitimate Rights or Interests

On the question of whether or not Respondent has rights or legitimate interest in respect of the domain names, it is noted that Respondentís response to the complaint while setting forth general denials of Complainantís allegations has not shown the type of rights or legitimate interests in the domain names that are set forth in paragraph 4(c) of the Policy. Indeed, Respondent has introduced no evidence of any rights or legitimate interests. Respondent does not contend that it is authorized by Complainant to use the marks nor does Respondent contend that it is known by the domain names. In assessing whether or not Respondent has rights or legitimate interests in respect of the domain name, the panel concurs with the decision in SFX Entertainment, Inc. v. Medfield Builders, WIPO D2000-0547 in which the panel found that there was no logical connection between Respondentís cigar website and its domain names. As such, the panel decides that this element of the Policy favors Complainant.

d. Registered and Used in Bad Faith

With respect to the domain names <fleetboston-pavilion.com> and <fleetbostonpavilion.com>, the panel agrees with Complainant that Respondent registered the domain names in bad faith. Complainantís supplemental pleading makes it clear that the merger of Fleet Financial Group, Inc. and BankBoston Corp. was made public on March 14, 1999 and that the emergent company would be called Fleet Boston Corporation. There is little doubt that Respondent registered <fleetboston-pavilion.com> and <fleetbostonpavilion.com>to trade on the merger announcement. Respondentís activities in registering the domain names must be considered to be a classic example of opportunistic bad faith. Respondent clearly took these domain names not for purposes of its own business but in order to capitalize on the new name that Complainant had announced.

Although the registration of the domain names <fleetboston-pavilion.com> and <fleetbostonpavilion.com> are clearly in bad faith, the Complainant is required to show that the Respondent is using the domain names in bad faith as well. See ∂ 4 of the Policy. Complainant claims that Respondent registered the domain name for purposes of preventing the Complainant from reflecting its FLEET and FLEETBOSTON marks in a corresponding domain name. If this were the case, then Respondent likely would have tried to register <fleetboston.com>. The domain names it did choose to register do not prevent Complainant from reflecting its marks in a corresponding name. However, as noted by the panelists in the SFX case cited earlier, Respondent is seeking to obstruct Complainant from reflecting the name of a concert venue to which it has naming rights in a domain name. Complainant also produced evidence that Respondent has registered as domain names not only the name of Complainantís concert venue but also the names of other concert venues in Massachusetts. See Complaint ∂ 49. While Respondent had an opportunity to deny these allegations, instead Respondent in its response stated that they are irrelevant. However, these allegations clearly are not.

The Policy specifically notes that evidence of use in bad faith includes registration of a domain name in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name "provided that [the Respondent has] engaged in a pattern of such conduct." Policy ∂ 4(b). Here that pattern has been shown.

Turning to domain names <bankboston-pavilion.com> and <thebankbostonpavilion.com>, the panel notes that these domain names do not connect to any web pages or websites. However, bad faith use and registration can be found even without active use of a domain name. The panel notes that these domain names have been registered for more than two years. The fact that the Respondent has yet to use these domain names strongly suggests that the domain names were registered in bad faith to create confusion. Given the association between the mark BANKBOSTON and Complainant, evidence of bad faith is further shown by the fact that Respondent has essentially taken Complainantís very mark as the dominant part of its domain name and that the domain name itself is likely to mislead the public into thinking that it is somehow associated with the Complainant. Certainly, it is difficult to conceive of any legitimate use that Respondent could make of the domain name that would not infringe on Complainantís rights. Because the ultimate effect of any use of the domain name would be to cause confusion with the Complainant, the use and registration of the domain name must be considered to be in bad faith. Embratel v. McCarthy, WIPO D2000-0164.

7. Decision

Pursuant to Rule 15 of the Rules For Uniform Domain Name Dispute Resolution Policy, the panel hereby finds that the Complainant has met its burden of proving each of the elements set forth in paragraph 4(a) of the Policy in relation to the domain names that are the subject of the complaint. Accordingly, pursuant to paragraph 4(i) of the Policy, the panel orders the transfer to Complainant of the domain names <fleetboston-pavilion.com>, <fleetbostonpavilion.com>, <bankboston-pavilion.com> and <thebankbostonpavilion.com>.

 


 

Ms B A Solomon
Sole Panelist

Dated: March 29, 2001

 


 

Footnote:

1. With respect to the various registrations submitted by Complainant, these registrations are not in the name of the Complainant. As such, the registrations were not used a basis for the decision. In addition, because the intent-to-use applications relied on by Complainant were filed after the Respondent had registered the domain names, the intent-to-use applications also were not relied upon.