WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

SOUTHBank v. Media Street

Case No. D2001-0294

 

1. The Parties

The Complainant is SOUTHBank, a Federal Savings Bank, organized and existing under and by virtue of the laws of the United States of America (USA), having its principal place of business in Huntsville, Alabama, USA.

The Respondent is Media Street, an organisation which records its contact details as PO Box 11285, Nairobi, Kenya and its administrative contact, technical contact and billing contact as Barney Lodge.

 

2. The Domain Names and Registrar

The domain name, which is the subject of this complaint, is "southbank.com".

The registrar of this domain name is Network Solutions, Inc ("NSI") of Herndon, Virginia, U.S.A.

 

3. Procedural History

Issuance of Complaint

3.1 On 28 February 2001, the complaint was submitted by e-mail to the World Intellectual Property Organisation Arbitration and Mediation Center ("WIPO Center") pursuant to the Uniform Policy for Domain Name Dispute Resolution ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, ("the Rulesí), both adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 and pursuant to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

3.2 On March 2, 2001 the complaint was received by the WIPO Center in hardcopy.

3.3 An Acknowledgement of Receipt of Complaint was sent to the Complainant on March 2, 2001.

3.4 On March 5, 2001 NSI confirmed that it had received a copy of the complaint and that it is the registrar of "southbank.com", currently listed in its database as registered to the Respondent.

Notification of Complaint and Commencement of Proceeding

3.5 On 8 March 2001 a Notification of Complaint and Commencement of Administrative Proceeding was issued.

Filing of Response

3.6 A Response was filed by the Respondent, and was received by the WIPO Center by email on March 17, 2001 and by hardcopy on March 20, 2001.

Appointment of Administrative Panel

3.7 On March 30, 2001, the WIPO Center received the Statement of Acceptance and Declaration of Impartiality and Independence of David A.R. Williams Q.C. and on April 2, 2001, a Notification of Appointment of Administrative Panel was issued, formally appointing David A.R. Williams Q.C. as Sole Panelist.

 

4. Factual Background

Complainantís Activities and Trademarks

4.1 In its Complaint, the Complainant asserted the following in relation to its activities and trademarks. The Complainant is a federal savings bank formed in 1990. The Complainantís headquarters are in Corinth, Mississippi with operations throughout several southern states of the United States including Alabama, Arkansas, North Carolina, Mississippi and Tennessee. The Complainantís banking services include commercial, consumer, traditional and mortgage banking.

4.2 The Complainant has total assets of $450 million and is a member of the Federal Home Loan Bank, with its deposits insured by the Federal Deposit Insurance Corporation. The Complainant and its subsidiary, Corinthian Mortgage Corporation produce approximately $1 billion in single-family residential mortgage loans annually, and are capable of servicing $3 billion in mortgage loans. The Complainant has engaged in an extensive television, cable and print advertising and marketing campaigns and has further advertised at local high schools and colleges and in local, regional and trade newspapers.

4.3 The Complainant owns four state registered trademarks in the trade name and service mark "SOUTHBank" in the following areas:

(i) Tennessee (registered on March 4, 1991 and March 4, 2001);

(ii) Mississippi (registered on November 5, 1990 and renewed January 8, 2001);

(iii) Alabama (registered February 19, 1991);

(iv) Arkansas (registered May 30, 1991).

4.4 The Complainant states it was the first bank to use the trade name and service mark "SOUTHBank" in the abovementioned four states and is therefore the senior user of the SOUTHBank mark under United States federal trademark law.

4.5 The Complainant asserts it has wide recognition of the SOUTHBank mark in the SOUTHBank trade area which leads to long established secondary meaning under federal trademark law. The Complainant has extensively promoted, marketed and advertised its banking products and services continuously under its SOUTHBank Mark. The SOUTHBank mark has become widely known and the Complainant has become identified in the public eye as the bank which is known under its SOUTHBank mark. The purchasing public in the SOUTHBank trade area has come to recognise the SOUTHBank mark to designate the Complainant as the source of any banking products or services provided in the SOUTHBank trade area.

4.6 Five years of continuous and exclusive use gives rise to a presumption of secondary meaning entitling the service mark to protection under United States federal trademark laws. It is undisputed that the Complainant has had continuous and exclusive use of the SOUTHBank mark in its trade area well in excess of this period.

4.7 Through the services performed by SOUTHBank under the SOUTHBank mark, the Complainant asserts it has become widely known and has acquired a reputation for excellence, top quality service and trustworthiness. The Complainant states it commands an extensive market in the SOUTHBank trade area.

4.8 The Complainant claims that as a senior user it has taken active and diligent steps to protect and enforce its SOUTHBank mark. The Complainant states that it has initiated and successfully concluded federal trademark infringement lawsuits against banks that have infringed on its SOUTHBank mark and defendants have specifically recognised and acknowledged that the Complainant owns the SOUTHBank mark under United States federal and state trademark laws. The Complainantís actual use of the SOUTHBank mark in commerce establishes federally protected trademark rights.

Respondentís Activities

4.9 The Respondentís response has been prepared by Mr Barney Lodge, who is currently registered by NSI as the administrative contact, technical contact and billing contact of the Respondent, Media Street.

4.10 Mr Lodge states that he is a British resident who was employed by Media Street, a Kenyan company until October 1 1999. Mr Lodge now describes himself as an internet consultant with clients both in Kenya and the UK. He states that as an internet consultant he develops web sites and more specifically online databases on behalf of over 30 clients.

 

5. Partiesí Contentions

Complainantís contentions

5.1 The Complainant contends that under paragraph 4 of the Policy, the domain name at issue is identical and confusingly similar to the Complainantís trademark, the Respondent has no rights or legitimate interests in the domain name and the Respondent has registered and used the domain name in bad faith.

5.2 In respect of paragraph 4a(i) of the Policy, the Complainant contends that as well as the first part of the domain name "southbank" being identical and confusingly similar to its trademark, the domain suffix ".com" is intended specifically for use by businesses and banks. The Complainant contends that the "southbank.com" domain name clearly suggests a web site that an ordinary consumer would likely believe was operated by the Complainant.

5.3 In respect of paragraph 4a(ii) of the Policy, the Complainant contends that firstly the Respondent has admitted that it is engaged in a pattern and practice of registering and warehousing internet domain names solely for the purpose of selling the domain names for profit and financial gain. Secondly the Complainant contends that the Respondent is not the owner of any registered or common law trademark containing the term "SOUTHBank" in whole or in part. The Complainant states that "southbank.com" does not consist of the Respondentís legal name and contends that the Respondent does not provide financial or banking services or conduct legitimate business of any kind in connection with the domain name. Thirdly the Complainant contends that the Respondent is not a licensee of the Complainant and is therefore not authorised to use the SOUTHBank mark.

5.4 In respect of paragraph 4a(iii) and paragraph 4b of the Policy, the Complainant contends that the Respondent has admitted that it is engaged in the business of registering and warehousing internet domain names solely to use the registrations so that it can transfer the domain names for excessive profits. The Complainant claims that in addition to "southbank.com", the Respondent and Mr Lodge have warehoused and/or auctioned for excessive profits five other specific domain names.

5.5 The Complainant contends that under paragraph 4b(i) of the Policy the Respondent has engaged in bad faith by acquiring the domain name not only for the primary, but the sole purpose of selling the domain name to the Complainant. In support of this contention the Complainant has produced in evidence an email dated December 22, 1999 from Mr Lodge of the Respondent to the Complainant, which suggests that the Complainant make an offer of between US $50,000 and US $1 million to purchase the domain name.

5.6 In addition, the Complainant contends that under paragraph 4b(ii) of the Policy, the Respondent has engaged in bad faith by registering the "southbank.com" domain name to prevent the owner of the SOUTHBank mark from reflecting the mark in a corresponding domain name and has engaged in a pattern of such conduct. In support of this contention, the Complainant refers to the fact that the Respondent registered "southbank.com" on July 22, 1996 and has never established a web site to use the domain name.

Respondentís contentions

5.7 Mr Lodge on behalf of the Respondent denies that the domain name has been registered in bad faith. He does not accept that Respondent has admitted that it is engaged in the business of registering and warehousing domains for profit. Mr Lodge states that he has only registered domains for a client or for a specific project. He contends that his sole business is website design and online database design.

5.8 Mr Lodge contends that at the time of registering "southbank.com", his UK residence was in the South Bank area of London. He states that the name was registered to represent businesses in this geographic area. Mr Lodge claims that at the time of registration he was totally unaware of the existence of the Complainant.

5.9 Mr. Lodge states that he has been in discussion with a UK publisher to launch "southbank.com" in June 2001 as a site which employs database technology, known as Formatic, to enable businesses resident in the South Bank area of London to update their own content in a search engine dedicated to the arts, theatre, restaurants and other related subjects. Mr Lodge refers to a similar project for another geographic area at www.eastafrica.com.

5.10 In reference to the five specific domain names cited by the Complainant as examples of names that have been registered, warehoused and/or auctioned for excessive profits by the Respondent, Mr. Lodge contends that with the exception of "southbank.com", all domains registered by him are active on behalf of clients. Mr Lodge denies that any of the other five specific domain names have ever been for sale for profit. He further denies having any domains for sale on any auction site. Mr Lodge contends that "southbank.com" is inactive simply because more time is required to complete the design for the London project. He denies that it is inactive to prevent the Complainant from using the domain.

5.11 Mr Lodge acknowledges sending the email message of 22 December1999 to the Complainant. However he contends that he was responding to a previous offer made by the Complainant of US$500 to purchase the name. He states that his reference to the Greatdomains.com website was made as an objective guide to domain values. He claims that "southbank.com" was placed on the Greatdomains.com site as a result of his dialogue with Kim Ferguson of the Complainant, to see whether he could establish a fair and objective valuation should he choose to hand the domain over to the Complainant. Mr Lodge states that "southbank.com" has since been withdrawn from the Greatdomains.com web site. He contends that the Respondent was not expecting an offer of between $50,000 and $1million, but was using that range to indicate that "southbank.com" was worth more than US$500. Mr Lodge states that having invested a great deal of time and money in developing the software behind "southbank.com", his request for a higher offer than US$500 was not unreasonable to compensate, in his contention, for the loss of a prestigious domain so perfectly suited to the London South Bank project. Mr Lodge states that the loss of "southbank.com" will cause him both serious financial hardship and loss of credibility.

 

6. Discussion and Findings

6.1 Paragraph 4a of the Policy requires that in the administrative proceeding, the Complainant must prove that each of the three elements set out at subparagraphs (i), (ii), and (iii) are present. These elements are:

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

(ii) you have no rights or legitimate interests in respect of the domain name; and

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

Identical or Confusingly Similar

6.2 The Complainant has clearly established federal and state statutory and common law trademark rights in it SOUTHBank mark as a result of its continuous and exclusive use and promotion of its banking products under the SOUTHBank mark since 1990. The Complainant produced to the satisfaction of the Panel, evidence of both registration and use of its trademark.

6.3 The question for the Panel to decide therefore is whether Southbank.com is identical or confusingly similar to the Complainantís trademark.

6.4 The first part of the domain name "southbank" is nearly, but not absolutely identical to the Complainantís mark, due to the use of capitals and lower case letters in the SOUTHBank mark.

6.5 The Panel notes that as the .com suffix can be used by banks and other businesses, the Respondentís registration of the domain name with this suffix is consistent with the Respondentís stated intended use of the domain name.

6.6 However, the Panel finds that when combined with the .com suffix, the first part of the domain name is so close to the Complainantís trademark as to be confusingly similar in terms of paragraph 4a(i) of the Policy.

Rights or Legitimate Interests

6.7 Paragraph 4(c)(i) of the Policy sets out that the following is a factor that if found by the Panel to be proved based on its evaluation of all the evidence presented demonstrates the Respondentís rights or legitimate interests to the domain name for the purposes of paragraph 4a(ii):

"before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services."

6.8 In favour of the Respondentís contention that the name is being prepared for bona fide use is the established meaning of "South Bank" to denote an area of London. The South Bank area of London has a distinct and established meaning as a particular area on the south side of the Thames, known for its cultural and entertainment amenities such as theatres, concert halls, galleries, restaurants and the like. Across the range of unique or distinctive words through to generic words, southbank is clearly at the generic end of the spectrum. The separate components, south and bank, are both common and general words, in frequent use in English in a variety of everyday contexts.

6.9 The use of "South Bank" to denote a geographic area on the southern side of a river is also in fairly wide use internationally. A general search of the word "southbank" on the internet produces references to websites in Ottawa, Melbourne and Brisbane amongst others. The use of "southbank" as the first part of a domain name is not unique. Current domain names in existence on the internet include "southbank.co.uk" which refers to a media consultancy business in London, "southbank.cc" which refers to serviced apartments in Melbourne and "southbank.org" which refers to a school in London.

6.10 As a generic name with established alternative meanings to the Complainantís use, "southbank.com" is at the opposite end of the spectrum from invented or unique words such as "telstra" in WIPO Case No D 2000-0003, Telstra Corporation Ltd v Nuclear Marshmallows. In that case the Panel found that it was not possible to conceive of a plausible circumstance in which the respondent could legitimately use the domain name telstra.org.

6.11 The Respondentís www.eastafrica.com website, which the Repondent alleges is comparable to its intended South Bank project is a current website run by the Respondentís "formatic" database tool. Similar to the Respondentís alleged plans for the "southbank.com" web site, the "eastafrica.com" website allows businesses associated with travel and tourism in East Africa to post their descriptions on the site.

6.12 However in relation to its alleged South Bank project, the Respondent has made a bare assertion that it is preparing to use "southbank.com". Paragraph 4(c)(i) of the policy requires "demonstrable preparations". Apart from its bare assertion, the Respondent has not provided any documentary or other external evidence at all which demonstrate its preparations to use "southbank.com". The Panel therefore finds that the Respondent has not demonstrated a right or legitimate interest in respect of the domain name pursuant to paragraph 4a(ii) and 4c(i) of the Policy.

Registering and Using a Domain Name in Bad Faith

6.13 The email message of 22 December 1999 which the Complainant contends is evidence of the Respondentís bad faith is reproduced in full as follows:

"Kim, Iíve done some serious surfing to try to find a solution fair to both of us. The truth is that there is a lot of excitement out there about the value of domain names at the moment..particularly those that could be of value to a wide range of businesses. The site that seems to be getting the greatest credibility on domain name valuation is www.greatdomains.com This site has had several revues in the press as the leading authority in domain name valuation, brokering and escrow services. There are many other sites, but they all tell the same story. According to their chartÖa domain such as southbank.com could have a value anywhere between US $50,000 and US$1m!!!But of course the buyer has to be found! The chart takes into account length of wordÖlegibility and potential business appeal. I have been in this business long enough to know that a valid domain name has probably greater value to a bank than many other business types, since a bank must move into online services if it is to surviveÖat least that is my opinion. So, what I am trying to say, is that I believe this domain will only appreciate in value with time, and I would be foolish to let it go at anything like your original offer, particularly as it has great potential in my area of central London. If you are able to make a substantial offer based on the type of values quoted by greatdomains, then I donít want to waste your time or mine. Please take time to think about it.

Regards, Barney Lodge."

6.14 Paragraph 4b(i) of the Policy states that evidence of bad faith includes:

"circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;"

6.15 The Panel finds that the email message of 22 December 1999 does not prove that the Respondent registered or acquired the name primarily for the purpose of selling it to the Complainant, still less for the sole purpose of doing so alleged by the Complainant. Given the separate geographic areas and different spheres of business between the Complainant and the Respondent, the panel finds that it is credible that as the Respondent alleges, it had no actual knowledge of the existence of the Complainant and the fact that it was trading under a similar name at the time it registered the domain name. As found in Gordon Sumner, p/k/a Sting v Michael Urvan, WIPO Arbitration and Mediation Center, Case No D2000-0596, paragraph 6.10, the fact that negotiations between the parties for the sale of the domain name have occurred does not necessarily prove that the original registration was made primarily for the purpose of selling to the Complainant. The Policy does not impose a blanket prohibition on selling domain names.

6.16 As set out at paragraph 6.10 of the Sting case, the issue of which party first solicited an offer for purchase of the domain name is relevant. In the present case neither party has stated which of them made the first contact with the other. It is clear from the email of 22 December 1999 that there has been previous communication between the parties, although neither party has put this previous communication into evidence. The statement "I would be foolish to let it go at anything like your original offer, particularly as it has great potential in my area of central London" is consistent with the Respondentís contention that the Complainant had previously offered to purchase the domain name for $500 but that the Respondent did not view this sum as adequate to compensate it for loss of its intended use.

6.17 Paragraph 4(b)(ii) of the Policy states that evidence of bad faith also includes a situation in which:

"you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct."

6.18 The Panel finds that the circumstances under paragraph 4b(ii) have not been proved by the Complainant. The Complainantís contention that the Respondent has admitted that it is engaged in a pattern and practice of registering and warehousing domain names solely for the purpose of selling the domain names for profit and financial gain is expressly denied by the Respondent and is entirely unsupported by the evidence. The Complainantís bare allegation that the other five specified domain names have been warehoused and auctioned for excessive profits is also expressly denied by the Respondent and is entirely unsupported by any evidence.

6.19 The fact that the Southbank.com domain name was placed on the Greatdomains.com site does not prove that the Respondent is engaged in a pattern of warehousing and sale for excessive profits. The Greatdomains.com site clearly offers sale and valuation services. The Respondentís reference to this site in the 22 December 1999 email is consistent with its claim that this was done to establish a fair market value after the Complainant made an offer that the Respondent considered was too low to compensate for loss of its intended use.

6.20 The fact that "southbank.com" was registered by the Respondent on July 22, 1996, three and a half years before the allegation of attempted sale to the Complainant supports the likelihood that the Respondent did not register the name primarily to sell to the Complainant or to prevent the Complainant from reflecting its trademark in a corresponding name. If the Respondent had registered the name specifically to target the Complainant, it is reasonable to assume that it would have contacted the Complainant much closer to the time of registration. The Panel notes that the Complainant does in fact operate its own web site using the domain "southbk.com" to reflect its trademark.

 

7. Decision

7.1 The Panel decides that the Complainant has not proven each of the three elements in paragraph 4(a) of the Policy in relation to the domain name the subject of the complaint.

7.2 Pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel denies the request that the Registrar, Network Solutions, Inc, be required to transfer to the Complainant, SOUTHBank, the domain name "southbank.com".

 


 

David Williams QC
Sole Panelist

April 11, 2001