WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor
Case No. D2001-1367
1. The Parties
Complainant is Banconsumer Service, Inc. ("Complainant" or "Banconsumer"), a corporation organized and existing under the laws of New York, United States, located and doing business at 1275 Fillmore Avenue, Tonawanda, New York 14150, USA.
Respondent is Mary Langthorne, Financial Advisor ("Respondent" or "Langthorne"), located at 48-7 Revere Street, Canton, Massachusetts, 02021, USA.
2. The Domain Name and Registrar
The domain name at issue is <banco.com> (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia, 20170 USA.
3. Procedural History
On November 16, 2001, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint via email. On November 20, 2001, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On November 22, 2001, the Center received hardcopies of the Complaint. The Complainant paid the required fee.
On November 21, 2001, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.
The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On November 23, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On December 14, 2001, the Center advised Respondent that it was in default for failing to file its Response.
On December 14, 2001, the Respondent filed her Response in electronic form. On December 18, 2001, the Center received hardcopies of the Response.
On December 28, 2001, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.
4. Factual Background
Banconsumer Service, Inc. was established in 1940 in New York, and has been producing its services and products for sale since 1940 throughout the world. Its goods and services can be obtained via the internet.
Banconsumer has used the BANCO trademark worldwide in association with its products since 1943 and owns U.S. Trademark Registration No. 2,231,622 for the mark BANCO in block letters. Said registration was issued March 16, 1999, based upon Banconsumer's use of the mark in commerce since 1993 on computer programs to assist in making consumer and commercial business loan forms, in International Class 9.
Banconsumer also owns U.S. Trademark Registration No. 2,268,199 for the mark BANCO in block letters. Said registration was issued August 10, 1999, based upon Banconsumer's use of the mark in commerce since 1943 on printed and partially printed forms, in International Class 16.
Banconsumer also owns U.S. Trademark Registration No. 2,389,575 for the mark BANCO in block letters. Said registration was issued September 26, 2000, based upon Banconsumer's use of the mark in commerce since 1946 for services in reviewing standards and practices of financial institutions to assure compliance with consumer lending laws and regulations and providing consulting to such institutions regarding the same, in International Class 35. The various registrations of the BANCO trademark shall hereinafter be referred to as the "Trademark."
Banconsumer also owns two U.S. registrations for its logo in two styles as used in connection with its goods and services. Both of these registrations contain the words BANCO BANCONSUMER SERVICE, INC. These registrations are no. 2,472,829, dated July 31, 2001, and no. 2,501,310, dated October 30, 2001.
Complainantís trademark registrations shall be collectively referred to as the "Trademarks."
On or about July 12, 1995, the Respondent registered the Domain Name <banco.com> through the Registrar.
Complainant's attorney attempted to contact Respondent first in January 1998, noting ownership of the BANCO trademark and inquiring as to whether the Respondent would sell the name. At that time, Greg Karas of Respondent's administrative provider, Roger Falcione a/k/a Tech2000, set a price of $20,000 for the Domain Name and Complainant counter-offered $2,000 which was refused by Mr. Karas due to "costs already incurred on the project."
5. Partiesí Contentions
A. Complainantís contentions
i. Complainant contends that it has registrations of the trademark BANCO, which are valid and subsisting.
Complainant further contends that for over 58 years, the Complainant's services and products have borne variations of the Trademarks and that the Trademarks have become highly distinctive and strong marks due to widespread advertising and use. Complainant has created a public acceptance and recognition of its marks on its services and goods. Complainant's Trademarks have therefore become its most important and valuable corporate asset in that they are the primary symbol of the goodwill that the purchasing public bears toward the Complainant and its goods and have also come to function as the primary source indicator of Complainant's goods and services.
ii. Complainant argues that the Domain Name is identical with and confusingly similar to the Trademarks, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the mark BANCO with the addition of the necessary and generic term ".com".
Complainant argues that when determining if a domain name and a registered trademark are confusingly similar, Panels have looked at a side-by-side comparison of a respondent's domain name and the complainant's trademark without any contextual setting. See Gateway, Inc. v. Pixelera.com, Inc. WIPO Case No. D2000-0109. Here, a comparison of the Respondent's Domain Name, <banco.com>, and the Complainant's Trademarks for BANCO reveals that there is no difference between the Domain Name and the BANCO Trademark, other than the ".com", which is ignored for these purposes.
Complainant further argues that the overall impression left by the <banco.com> Domain Name is that an ordinary consumer would believe that the Respondent is related to or sponsored by Complainant or otherwise affiliated with Complainant. EAuto, LLC v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises., Inc. WIPO Case No. D2000-0047. The Respondent's Domain Name is in its entirety the Complainant's BANCO mark. The Domain Name is identical with or confusingly similar with Complainant's BANCO mark.
iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Complainant further contends that Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services.
Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because it is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the Trademarks in a domain name or in any other manner.
Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.
Respondent cannot claim any shield under paragraph 4(c)(i) because the Domain Name has never been put into use at any time other than as an "Bajo Contrucion" [sic] site to thwart a dispute before Network Solutions during 1999. This "use" provided the Respondent with a flimsy defense against the former Network Solutions Domain Name Dispute Policy but it is no defense in the instant proceeding. See, Wal-Mart Stores, Inc. v. Walmarket Canada WIPO Case No. D2000-0150.
Respondent has never been known by the name "Banco." She identifies herself a financial advisor, so she cannot shield herself under subparagraph 4(c)(ii).
Finally Complainant asserts that Respondent's possession and purported intentions to use <banco.com> are not legitimate noncommmercial or nonprofit uses but subterfuge. Any legitimate owner of a domain name, who was not seeking compensation by a trademark owner, would be eager to get its website up and running for either personal satisfaction or financial gain and would therefore make the site more than a passive instrument. Cf. Unibanco-Unãio de Bancos Brasileiros S.A. v. Vendo Domain Sale WIPO Case No. D2000-0671, where the domain name in question served "only as a terminating address for a place marker website." Respondent's previous "under construction" website, existing site jumping to a site offering the Domain Name, and offers for sale show no legitimate right or interest, or attempt to develop such a right or interest, but simply a holding out of the Domain Name for money.
iv. Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii).
Upon learning of Respondentís registration of the Trademark, Complainant filed a dispute under Network Solutions Dispute Procedure (the "Dispute Procedure") then in effect, which allowed holders of domain names to escape transfer to trademark owners by showing bogus uses of the names. At that time, use for purposes of the Dispute Procedure was sometimes held to include putting up an "under construction home page".
The Complainant continues to allege that as a direct result of the lodging of the dispute with Network Solutions, Respondent put up "bajo contrucion" [sic] home pages in 1999 to establish use of the Domain Name. Thereupon, an attorney for Roger Falcione threatened legal action against Complainant and, even more curiously, ethical action against Complainant's attorney for contacting Respondent according to the requirements of the Dispute Procedure she had agreed to comply with. With knowledge that a new procedure for disputing domain names was underway which would recognize the rights of trademark owners and apply trademark law principles to domain name disputes, and knowing furthermore that Network Solutions was dropping and delaying actions so as not to decide them, Complainant withdrew that dispute. "[T]he Panel notes that at that time, trademark law involving domain names was unsettled and undeveloped." The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World WIPO Case No. D2000-0474.
Complainant states that after monitoring the "bajo contrucion" [sic] website, on or about April 2001, Complainant discovered that <banco.com> was then being offered for sale by <work4you.com>. The domain name <work4you.com> is registered to Workplace Design, located at 67 E. Nighthawk Way, Phoenix, Arizona 85048 USA. Roger Falcione a/k/a Tech2000, Respondent's Technical, Administrative and Billing Contact, has the address of 67 E. Nighthawk Way, Phoenix, Arizona 85048 USA. Complainant contends that Respondent's Administrative, Technical and Billing contact, Roger Falcione a/k/a Tech2000 is the proprietor of <work4you.com>, where he offers to sell the Domain Name, among many others. The <banco.com> website currently refers to <work4you.com> which offers the Domain Name and others for sale.
Complainant further states that on or about October 26, 2001, William Symmes, a friend of Complainant's President, contacted <work4you.com>. Mr. Falcione responded to Mr. Symmes by offering to sell the Domain Name for $100,000.00.
Complainant asserts that Respondent's offering the Domain Name for sale at <work4you.com> is adequate evidence that the registration of the Domain Name was in bad faith, especially when it is considered that no use whatsoever has been made of the name in five and one-half years. The Panel in Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003 found that passive holding of a domain name can be evidence, in certain circumstances, that a domain name was registered and is being used in bad faith. "[T]aking into account all of the above, Complainant further asserts that it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law" and as such a finding of bad faith is warranted.
Complainant insists that if the Sole Panelist takes Respondent's registration of the Domain Name at face value, she clearly has no legitimate use for the name and her offer of it for sale at its simple home page is clear evidence of her bad faith. However, if the Sole Panelist wishes to "dig further" into the matter, he will find that the circumstances around the registration of the domain name suggest even more elements of bad faith. The fact that <banco.com> jumps to <work4you.com> shows that the Domain Name is being used to market the other domain names for sale at <work4you.com>.
Complainant alleges that Respondent's Technical Contact for the past five and one-half years has owned hundreds domain names through his own name and other names. Other Panels have held that such warehousing of domain names suggests that it is unlikely that the holder will make legitimate use of any of them. Nabisco Brands Company v. The Patron Group, Inc. WIPO Case No. D2000-0032. A pattern of buying and selling domain names suggests bad faith. J.P. Morgan v. Resource Marketing WIPO Case No. D2000-0035. Like the Respondent in Unibanco-Unãio de Bancos Brasileiros S.A. v. Vendo Domain Sale WIPO Case No. D2000-0671, Respondent's Administrative, Billing and Technical Contact's control of a website which sells domain names (including the one at issue) "provides some indication as to the respondent's state of mind at the time of [domain name] registration." In the Unibanco case, Complainant notes, the Respondent had registered at least 25 domain names and its warehousing of this amount of names was also considered a factor in bad faith. Complainant concludes that Respondent's associate's activities herein make Respondent's associate a "piker".
Complainant further alleges that Respondent has not posted any content or otherwise attempted to commercialize the website. Mr. Falcione has utilized the address of the Respondent to register other domain names and to create confusion as to actual ownership of such domain names, which assists him in avoiding the consequences of the Domain Dispute policy. For example, the domain name <energyexperts.com> is registered to Energycourt.com Domain Administrator at Respondent's address. But the listing contains Mr. Falcione's Arizona telephone number (480-283-8379) as the contact telephone. Mr. Falcione applied in his own name for a U.S. trademark registration for ENERGY EXPERTS in July 2000 and operates a company called Energysource, Inc. in Arizona.
Complainantís position is that it has U.S. trademark Registrations for BANCO and has long used that trademark. The mark has acquired strong distinctiveness for Complainant. Any use by Respondent would infringe those trademark registrations, which include providing services which can be offered over the internet. Neither Respondent nor anyone else can utilize the term "banco" alone as a trademark in connection with an offering of financial services, as such use would create a likelihood of confusion with Complainant's mark in the same field. Any use by Respondent would in addition be an adoption of the mark in bad faith, as she is obviously aware of Complainant's trademarks.
Complainant is, of course, aware that "banco" means bank in some languages. However, no bank identifies itself solely as "Bank," for the obvious reason that the term alone would not distinguish it from other banks. And bank-related domain name disputes have recognized both that fact and the fact that the trademarks of banks are often descriptive with acquired distinctiveness over time. See, e.g., Banco General S.A. v. Webmaster Ams/Uk Billing (Domain for Sale), FA0006000094993 (NAF July 20, 2000) where the domain name <bancogeneral.com> was transferred to Banco General of Panama, the owner of a Panamanian trademark registration for its mark. See also, Banco Espanol de Credito, S.A. v. Miguel Duarte Perry Vidal Taveira WIPO Case No. D2000-0018 (<banesto.org> and <banesto.net> versus registration of BANESTO)); Banco Río de la Plata, S.A. v. Alejandro Razzotti WIPO Case No. D2001-0173 (<bancorio.com>, <bancorio.org>, <bancorio.net> versus registration of BANCO RIO). Banconsumer is the only user of BANCO alone as an identifying mark and has trademark registrations attesting to the distinctiveness of the mark.
B. Respondentís contentions
i. Respondent does not dispute that the Complainant has registrations for the BANCO Trademarks.
ii. Respondent disputes Complainantís assertion that the Domain Name is identical with or confusingly similar to the Trademarks.
Respondent denies that there is a likelihood of confusion between the Domain Name and the Trademarks. There are a number of domain names containing the word "banco", which peacefully co-exist with Complainantís domain name <banconsumer.com>, just as there are trademarks and service marks which contain the word "banco" (including some which are simply the word "banco" alone) which co-exist with Complainantís use of the BANCO mark.
Respondentís use of the Domain Name <banco.com> is not likely to cause confusion in the marketplace, and is not a false and misleading designation of the origin of such services within the meaning of Section 43(a) of the Lanham Act, 15 U.S.C. ' 1117(a). Such use does not constitute a false designation of origin under the Lanham Act, unfair competition, and common law trademark infringement. Respondentís use of the domain name does not match Complainantís use. In fact, their markets are much different. According to the Trademark registration, the business of Complainant is for printed and partially printed forms, for computer programs to assist in making consumer and commercial business loan forms; for providing financial consultation to lending institutions in the field of consumer lending, and for reviewing standards and practices of financial lending institutions. Thus, Complainantís business is directed towards financial institutions. Respondentís business is directed towards a limited class of individual consumers, namely, Spanish-speaking consumers of financial consultant services.
Respondent continues that the use of <banco.com> is not likely to generate confusion. The goods and services are not similar; the channels of trade are not equivalent; the websites are not similar; and the classes of prospective purchasers are not similar.
Respondent further asserts its placement of an "under construction" notice on its website in no way created a likelihood of confusion with Complainantís products or services. Complainantís web page has been <banconsumer.com>, which is also a portion of its business name "Banconsumer Service, Inc." Complainantís customers would be able to distinguish Respondentís under construction notice (which translates to "The Future of Commerce on the Internet"), just as they are able to distinguish between the numerous other sites containing the word "banco" which are on the Internet. This is especially true since Banconsumerís clients, "financial institutions," are sophisticated customers, and would not be the individual consumers who would be drawn to the <banco.com> site.
iii. Respondent asserts that she has rights to or legitimate interests in the Domain Names because she is conducting legitimate efforts to establish a business for the provision of financial consulting services to Spanish-speaking people, a distinct enterprise unrelated to the goods and services offered by the Complainant. Respondent registered <banco.com> before notice of this dispute, and before Complainant obtained Trademark registration for the BANCO trademark, and without knowledge of Complainant or Complainantís use of the term. Respondent has not engaged in domain name "poaching." The word "banco" is Spanish for "bank." Respondent has intended to operate a banking and Internet commerce portal where such services could be offered for Spanish-speaking people, as had been evidenced by the "under construction" posting on the <banco.com> site in Spanish. (The posting now reads "something new coming soon.").
Respondent claims that a search of the Patent and Trademark Office records showed 112 results, with several applications or registrations unrelated to banking. Complainantís use of the BANCO mark is therefore by no means exclusive. By way of example, a search of "banco" on Lycos produced over a million results, mostly banks and some Internet service providers.
Respondent asserts that she proposed to use the Domain Name <banco.com> in connection with financial consulting services for the Spanish-speaking market. Thus, Respondent did not contact Complainant to sell the Domain Name; in fact, it was the Complainant, through counsel, who first contacted Respondent about the possibility of selling the <banco.com> Domain Name. Complainantís communication was an unsolicited call. At no time has Respondent or any of her representatives ever demanded any monies from Complainant; they have merely engaged in negotiations initiated by the Complainant.
Respondent declares that she has an intention to commercialize the <banco.com> website, which she has a lawful right to do, so long as her use of the site is not confusingly similar to Complainantís business of providing forms and software to financial institutions.
iv. Respondent denies that it registered or used the Domain Name in bad faith. Paragraph 4(b).
Regarding its Technical Contact, Respondent alleges that Roger Falcione can in no way be described or characterized as a "cybersquatter." He has an established track record, with other co-venturers, of developing businesses with the commercial use of domain names. For example, Mr. Falcione developed and maintained a business using the domain name <goracing.com> in the car racing and model car market, a business, which later merged with Action Performance, Inc. of Phoenix, Arizona. He is actively developing two new properties, using <motorweb.com> and <dragracing.com>, for the sale of auto parts and auto information to the performance parts market. He has also developed and maintained <energysource.com>, which provided a marketing platform for energy suppliers. Other energy-related domain names were used in the operation of this business.
Respondent further alleges that Mr. Falcione and his co-venturers have not developed every domain name which he has had a role in registering, but the intended commercial use of <banco.com> is legitimate and in good faith. Mary Langthorne, who is the Respondent in this case, has registered only one domain name, <banco.com>. She also cannot be characterized as a "cybersquatter," or someone who has registered a domain name in bad faith. This is particularly true where the registration occurred before Complainant applied for trademark registration and where the intended markets for the businesses of Complainant and Respondent are markedly different. This is manifestly not a situation where a domain name has been registered for <cocacola.com>, or the like, to procure financial gain from the registration.
Respondent points out that she did not approach Complainant to sell the Domain Name. Instead, Complainant approached Respondent to purchase the Domain Name. Complainant, through counsel, first raised that Complainant also sells products in the Spanish-speaking market under the BANCO mark only after having been informed of Respondentís intended use of the <banco.com> Domain Name.
With reference to the Complaint, ∂ 11, Respondentís counsel simply requested that communications from counsel for Banconsumer Services, Inc. be directed to counsel for Ms. Langthorne, because the Rules of Professional Conduct for attorneys, at least in Massachusetts, prohibit an attorney from communicating directly with the opposing party whom he knows is represented by counsel. Complainantís counsel knew at the time of the complained-of communication that Respondent was, in fact, represented by counsel. The request to communicate with counsel was not intended to frustrate, and did not frustrate, the Complainant in pursuing any of its legal remedies. Complainant knew whom to contact, insofar as Respondentís counsel had already communicated with Complainantís counsel. As in Audiopoint, Inc. v. eCorp a/k/a Chad Folkening WIPO Case No. D2001-0509.
Respondent asserts that there is no evidence that Respondent attempted to hide her identity, prevent service of process, or make contacting Respondent difficult or impossible. Here, Respondent provided information that appears to have been accurate with regard to the Administrative, Technical, and Billing contact for the Domain Name. Moreover, Complainant never alleged that it had difficulty contacting Respondent.
In the Complaint, ∂ 19, Complainant refers to <energyexperts.com> which it claims is owned by "energycourt.com." In fact, the domain name is owned by Energy Source, Inc., a business owned and operated by Mr. Falcione, who registered the domain name <energyexperts.com> in connection with the operation of that company. Nothing in Mr. Falcioneís operation of Energy Source, Inc. has any bearing on the Domain Name at issue in this case, other than to establish that Mr. Falcione has not engaged in "cybersquatting," but instead has participated in the businesses whose marketing strategies include a presence on the Internet. As indicated above, the energy-related domain names were used in the operation of Mr. Falcioneís business.
The evidence also does not support the argument that Respondent registered <banco.com> with the intention of transferring the Domain Name to Complainant for valuable consideration in excess of documented out-of-pocket costs. Complainant and Respondent are not competitors, and the registration of the Domain Name <banco.com> was not done to disrupt Complainantís business, the existence of which was unknown to Respondent. As in Audiopoint, supra, although Respondent did engage in negotiations over the possible sale of the Domain Name, those negotiations do not prove a bad faith registration when it is undisputed that Respondent never heard of Complainant or its mark at the time of registration. As noted above, Complainant contacted Respondent initially; Respondent did not contact Complainant.
Because Respondent had no knowledge of Complainantís existence and because the markets served by the parties markedly differ, it is apparent that <banco.com> was not registered by Respondent in an intentional attempt to attract, for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product or service on the Respondentís website or location. Again, Respondent registered <banco.com> before notice of this dispute, and before Complainant obtained registration for the BANCO mark, and without knowledge of Complainant or Complainantís use of the term.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Because both the Complainant and Respondent are domiciled in the United States and United States courts have had recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie WIPO Case No. D2000-1772, n. 3.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
Enforceable Trademark Rights
Complainant contends that it has registrations of the mark BANCO, which are valid and subsisting, which the Respondent does not deny. These registrations serve as prima facie evidence of its ownership and the validity of the BANCO mark. 15 U.S.C. ß 1115. Complainantís registrations appear incontestable and constitute conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated goods. 15 U.S.C. ßß 1065 and 1115(b).
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, LLC v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises., Inc. WIPO Case No. D2000-0047. The Respondent has not contested the registrations.
Identical or Confusingly Similar
Complainant further contends that the Domain Name is identical with and confusingly similar to the Trademark pursuant to the Policy paragraph 4(a)(i).
Respondent contests the assertions by Complaint that the Domain Name is confusingly similar to the Trademark.
As numerous courts and prior ICANN Panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainantís registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v. Dennis Hoffman WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainantís registered trademark.
Contrary to the Respondentís contention, the owner of the registered trademark does not have to show "likelihood of confusion", as that term is used in trademark infringement jurisprudence, to establish that a domain name incorporating a trademark in its entirety is identical or confusingly similar for purposes of this first factor. Under Paragraph 4(a)(i), the question of identity and confusing similarity is evaluated solely based on a comparison between the complainantís trademark and the alphanumeric string constituting the domain name at issue. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr. WIPO Case No. D2000-1525. It thus is irrelevant, for the purposes of evaluating the first factor, whether consumers would avoid confusion by reviewing the content of Respondentís website.
The Panel is to compare the mark and the domain name alone, independent of the use factors usually considered in a traditional infringement action. InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe's Internet Café WIPO Case No. D2000-0068. There is no dispute that Complainant has rights in the BANCO mark. Numerous Panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is identical with or confusingly similar to the mark. See, e.g., Cellular One Group v. Paul Brien WIPO Case No. D2000-0028; Gorstew Limited, Jamaica, and Unique Vacations, Inc. v. Cottrell Travel, ICANN Case No. FA94923.
The Sole Panelist notes that the entirety of the mark BANCO is included in the Domain Name with the addition of ".com". Accordingly, the Sole Panelist finds that the Domain Name is identical with or confusingly similar to the Trademark in which the Complainant has rights pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest
Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc. WIPO Case No. D2000-0270.
Respondent has no relationship with or permission from Complainant for the use of the BANCO mark and has never posted any content on her website other that an "under construction" announcement.
The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:
(i) before any notice to you [Respondent] 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant alleges that Respondent cannot claim any shield under paragraph 4(c)(i) because the Domain Name has never been put into use at any time other than as a "Bajo Contrucion" [sic] announcement. This showing is sufficient to shift the burden to Respondent.
Complainant further alleges that Respondent has never been known by the name "Banco." She identifies herself a financial advisor, so she cannot shield herself under subparagraph 4(c)(ii).
Finally Complainant asserts that Respondent's possession and purported intentions to use <banco.com> are not legitimate noncommmercial or nonprofit use but a subterfuge. Complainant contends that the site has had no content for five and one-half years and resolves to a site offering the Domain Name for sale. Complainantís position is that offers for sale show no legitimate right or interest, or attempt to develop such a right or interest, but simply a holding out of the Domain Name for money.
Respondent asserts that she has rights to or legitimate interests in the Domain Name because she is conducting a legitimate effort to establish a business for the provision of financial consulting services to Spanish-speaking people, a distinct enterprise unrelated to the goods and services offered by the Complainant. In addition, Respondent asserts that she was unaware of Complainantís Trademark when she registered the Domain Name.
The Sole Panelist finds that Respondent has not made demonstrable preparations for use of the Domain Name, is not commonly known by the Domain Name and has a primary intent to sell the Domain Name for commercial gain.
Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) 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; or
(ii) 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; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.
The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
Inaction or Lack of Use
One such factor is that Respondent has made no use of the Domain Name. Complainant alleges that Respondent has not developed any active website at <banco.com> or made any other use of the Domain Name. See Telstra Corp. v. Nuclear Marshmallows WIPO Case No. D2000-0003.
In Telstra it was established that registration together with "inaction" and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang WIPO Case No. D2000-0055; Compaq Computer Corporation v. Boris Beric WIPO Case No. D2000-0042; Sanrio Company Ltd. and Sanrio, Inc. v. Neric Lau WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc. WIPO Case No. D2000-0090; Strålfors AB v. P D S AB WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Tenenbaum Ofer WIPO Case No. D2000-0075.
To quote a prior Panel decision, "[B]ecause Respondent is contributing no value-added to the Internet -- it is merely attempting to exploit a general rule of registration -- the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it." Educational Testing Service v. TOEFL WIPO Case No. D2000-0044.
Offer to Sell to Public
Respondent has offered the Domain Name for sale to the public. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. Although Respondentís offer of the Domain Name for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy.
Complainantís allegation that Respondent offered to sell his ownership of the Domain Name was discussed above. The offering for sale of a domain name, even to a third party, supports bad faith. See Policy, Paragraph 4(b); Sportyís Farm L.L.C. v. Sportsmanís Market, Inc., 202 F.3d 489 (2d Cir. 2000); Porsche Cars North America, Inc. v. Spencer, 55 U.S.P.Q.2d 1027 (E.D. Cal. 2000); Morrison & Foerster LLP v. Wick, 94 F. Supp.2d 1125 (D. Colo. 2000).
The evidence establishes: (i) inaction by Respondent in the use the Domain Name to post any content on the Internet or for any other legitimate purpose; and (ii) an offer to sell the Domain Name to the public.
Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
The Sole Panelist concludes (a) that the Domain Name <banco.com> is identical with or confusingly similar to Complainantís registrations of the Trademark, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to Banconsumer Service, Inc.
Richard W. Page
Dated: January 20, 2002