WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
United States Trust Company of New York v. Matthew Duggan
Case No. D2000-1646
1. The Parties
The Complainant is United States Trust Company of New York, a New York corporation with a principal place of business at 114 West 47th Street, New York, New York 10036, USA.
The Respondent is Matthew Duggan, with an address at 53 Warren, Woburn, Massachusetts 01801, USA.
2. The Domain Name and Registrar
The dispute concerns the domain name: <ustrust.net>, hereinafter the Disputed Domain Name. The Registrar with which this Domain Name is registered is Network Solutions, Inc. with a business address in Herndon, Virginia, U.S.A.
3. Procedural History
On November 28, 2000, and December 1, 2000, respectively, the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) received a Complaint electronically and November 30, 2000 by hard copy for a decision in accordance with 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).
On November 30, 2000, the WIPO Center acknowledged receipt of the said Complaint.
On December 1, 2000, the WIPO Center sent a Request for Registrar Verification to the Registrar. On December 6, 2000, the Registrar confirmed to the WIPO Center that it was the Registrar of the said Domain Names and also that the current registrant of the said Domain Names was the Respondent.
On December 8, 2000, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier, and e-mail to the Respondent and transmitted electronically copies of said documents to the Complainant, ICANN, and the Registrar. The said Notification particularized the formal date of the commencement of this administrative proceeding as December 8, 2000, and required the Respondent to submit a Response to the Complaint within 20 calendar days from the date of receipt of the Notification, failing which the Respondent would be considered to be in default.
The Respondent failed to file the Response with the WIPO Center by the last date, i.e. December 28, 2000. On January 12, 2001, the WIPO Center sent the Notification of Respondent Default to the Respondent by e-mail and copied the Complainant via e-mail. The Complainant elected to have the dispute decided by a single-member panel (the Panel). On January 24, 2001, the WIPO Center appointed Mr. Terrell C. Birch to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the WIPO Center sent a Transmission of Case File to the Panel.
The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules, without the benefit of any Response from the Respondent.
4. Factual Background
U.S. Trust is the immediate corporate successor to an identically named entity that was chartered in 1853 under the laws of the State of New York and has, through its corporate predecessor and itself, continuously existed and engaged in investment management, fiduciary and banking services since then.
U.S. Trust has used continuously, since at least as early as 1853, and is currently using in the United States commerce the UNITED STATES TRUST COMPANY trademark for banking, fiduciary and investment management services.
U.S. Trust is the owner of, inter alia, the following valid, subsisting and existing federal trademark registrations with the United States Patent and Trademark Office: Fed. Reg. Nos. 1,104,469 (for UNITED STATES TRUST COMPANY), 835,658 (for UNITED STATES TRUST) and 832,693 (for (U.S. TRUST) all for banking, fiduciary and investment management services (hereinafter the "U.S. TRUST Marks"). Copies of said certificates of registration were attached to the hardcopy of the Complaint and incorporated therein by reference. U.S. Trustís registration certificates are prima facie evidence of the validity of the U.S. TRUST Marks and its exclusive rights to use these trademarks and service marks in commerce.
Over the past hundred years, U.S. Trust has spent millions of dollars advertising and promoting its services under the U.S. TRUST Marks, which has resulted in the creation of a great deal of good will and popularity for the marks.
Over the years, U.S. Trust has also sought to vigorously protect its trademark rights in the U.S. TRUST Marks, and has pursued numerous claims and causes of action against unauthorized uses of the U.S. TRUST Marks.
As a result of U.S. Trustís long use of the U.S. TRUST Marks, its advertising and promotional efforts and expenditures in connection with the trademarks, and the wide recognition achieved for the trademarks, the public has come to associate the U.S. TRUST Marks with the services originating with, emanating from, sponsored by or otherwise associated with or approved by U.S. Trust. In addition, the U.S. TRUST Marks have also become an extremely valuable symbol of U.S. Trust with substantial commercial magnetism.
Complainant has also registered the <ustrust.com> domain name.
On April 3, 1999, Respondent registered the domain name <ustrust.net> with Network Solutions, Inc.
The ustrust.net domain name of Respondent complained of herein is identical to the U.S. TRUST trademark in which U.S. Trust has rights. The addition of the generic top-level domain (gTLD) name ".net" is without legal significance. See, e.g., Sportyís Farm v. Sportsmanís Market, 202 F.3d 489, 498 (2d Cir. 2000,) (citing Brookfield Comm. Inc. v. West Coast Entertainment Group, 174 F.3d 1036 (9th Cir. 1999)).
Respondent has no rights or legitimate interests to the domain name that is the subject of the Complaint. Respondent owns no trademark registration for U.S. TRUST. U.S. Trust has neither agreed nor consented to Respondentís use or registration of a domain name comprising the unique, well-known and federally registered U.S. TRUST trademark.
The domain name <ustrust.net> does not resolve to any web site or online presence.
Since Respondent registered the domain name, Respondent has made no legitimate or commercial use of the name.
Complainant has written Respondent twice, demanding that Respondent cease and desist from using the ustrust.net domain name and immediately assign the name to Complainant.
Respondent called counsel for U.S. Trust in mid-October and indicated he was willing to sell the ustrust.net domain name to U.S. Trust. Although Respondent never mentioned price, Respondent indicated that he would hire counsel who would contact counsel for U.S. Trust by October 22, 2000, regarding price. No such contact was made.
Respondent has no intellectual property rights in U.S. TRUST.
Respondentís top-level domain name is identical to Complainantís well-known trademark.
Respondent has never used the domain name in connection with the bona fide offering of any goods or services.
Respondent has not made and is making no bona fide noncommercial or fair use of the U.S. TRUST trademark or any web site associated with the <ustrust.net> domain name.
5. Partiesí Contentions
Essentially, the contentions of the Complainant are as follows:
1) U.S. Trust has valid, subsisting, and incontestable rights in its registered U.S. TRUST trademark.
2) Respondent has no rights or legitimate interests to the <ustrust.net> domain name.
3) The Disputed Domain Name was registered and is being used in bad faith.
In view of the fact that the Respondent has not filed a Response, the Panel is in no position to make out its contentions.
6. Discussion and Findings
6.1 Effect of Respondentís Default
By paragraph 5(b)(i) of the Rules, it is expected of the Respondent to:
"[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain nameÖ"
In the event of a default, under paragraph (14)(b) of the Rules:
"Öthe Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddyís Antiques D2000-0004 (WIPO):
"Respondentís failure to present any such evidence or to deny complainantís allegations allows an inference that the evidence would not have been favorable to respondent."
In the instant administrative proceeding, the Respondentís default entitles the Panel to conclude that the Respondent has no evidence to rebut the assertions of the Complainant.
6.2 Elements to be proven
However, paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:
i) the Respondentís Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
iii) the Respondentís Domain Name has been registered and is being used in bad faith.
The panel in Cortefiel, S.A. v. Miguel Garcia Quintas D2000-0140 (WIPO) notes that under the Policy, even if the respondent is in default,
"Öthe complainant must prove that each of these three elements are present."
6.3 Identical or Confusingly Similar
The Complainant claims and has established first use and ownership of the U.S. TRUST marks. It has also shown substantial use. Ownership of these marks is clearly proved by the Complainant. Under the Policy, all that is required of the Complainant is to establish its rights in the marks, and the extent of the geographical area in which the rights accrue does not matter. The Panel has compared the Disputed Domain Name with the Complainantís U.S. TRUST marks and finds that the second level domains thereof are substantially identical to the Complainantís marks. The Panel finds that there is such similarity in sound, appearance, and connotation between the U.S. TRUST marks and the Disputed Domain Name as to render said Disputed Domain Name confusingly similar to Complainantís U.S. TRUST marks.
6.4 Respondentís Rights or Legitimate Interests in the Disputed Domain Names
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the said Disputed Domain Names by showing:
i) its use of, or demonstrable preparations to use, the said Disputed Domain Names or a name corresponding to the said Disputed Domain Names in connection with a bona fide offering of goods or services before any notice to him of the dispute; or
ii) he (as an individual, business, or other organization) has been commonly known by the said Disputed Domain Names, even if he has acquired no trademark or service mark rights; or
iii) he is making a legitimate noncommercial or fair use of the said Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence presented by Respondent in demonstrating any of the foregoing factors because Respondent is in default and has failed to respond in this action. Accordingly, the evidence available contains nothing that may justify a legitimate noncommercial or fair use of the said Disputed Domain Names by Respondent. Neither is there any evidence for any of the other two foregoing requirements.
Furthermore, in the absence of any license or permission from Complainant to use its U.S. Trust name and marks or to apply for or use any domain name incorporating those marks, it is clear that no actual or contemplated bona fide or legitimate use of the contested domain names could be claimed by Respondent. Guerlain S.A. v. Peikang, D2000-0055 (WIPO).
The Disputed Domain Name does not resolve to any web site or on line presence. Accordingly, confused customers of the Complainant are likely to be frustrated in their efforts to reach the Complainantís web site. Indeed, Respondent has not undertaken a bona fide offering for sale of goods using the Disputed Domain Names before notice of the dispute, and cannot establish rights or legitimate interests in the Disputed Domain Name, thereby establishing the second element necessary for Complainant to prevail on its claim that Respondent has engaged in abusive domain name registration. The Frozfruit Company v. Maui Bound Media Group, D2000-0851 (WIPO).
6.5 Registration and Use in Bad Faith
As stated by the panel in World Wrestling Federation Entertainment, Inc. v. Michael Bosman D1999-0001 (WIPO) in order for the Complainant to succeed:
"... the name must not only be registered in bad faith, but it must also be used in bad faith."
The Complainant must prove that the Respondent registered and also used the said Disputed Domain Name in bad faith in order to establish Ďbad faithí on the part of the Respondent.
Complainant has averred and the Panel finds that the Disputed Domain Names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant, the owner of the U.S. TRUST marks for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the Disputed Domain Names.
Before any notice to the Registrant of this dispute, there has been absolutely no evidence of the Registrantís use of, or demonstrable preparations to use, the Disputed Domain Name or name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Such inaction, in view of the facts and circumstances of this case, further constitutes evidence of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows D2000-0003 (WIPO).
In paragraph 7 of the said decision, the Administrative Panel stated that the question of whether a domain name is being used in bad faith "can only be answered in terms of the particular facts of a specified case", and that "it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith". Accord Mondich v. Brown D2000-0004 (WIPO); "possible to infer from this failure of use that the domain name was registered without a bona fide intent to make good faith use". That decision should be applied here. In that case, as here, the Complainantís trademark had a strong reputation and was widely known and there was no evidence of any actual or contemplated good faith use of the domain name by the Respondent.
The purpose of registration of a domain name may be discerned from subsequent use made of it. Respondentís failure to make commercial use of the Disputed Domain Name in connection with an active web site in dispute and offer to sell the Disputed Domain Name to Complainant, coupled with Respondentís knowledge of Complainantís prior rights in the U.S. TRUST Marks, and Respondentís lack of any legitimate rights or claim of any kind in the U.S. TRUST Marks, compels the conclusion that Respondent registered and has used the Disputed Domain Name in bad faith.
Based on the alleged facts, which have not been disputed, the Panel finds that the Respondent has engaged in the practices defined in Paragraph 4(b)(i) and 4(b)(ii) of the Policy as evidencing the registration and use of the said Disputed Domain Name in bad faith.
For all the foregoing reasons and pursuant to the ICANN Rules, paragraph (15), the Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Panel requires that the said Disputed Domain Name, namely, <ustrust.net>, be transferred to the Complainant pursuant to paragraph 4(i) of the Policy.
Terrell C. Birch
Dated: February 15, 2001