WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fleetboston Financial Corporation v. Juan Miguel/Lost In Space, SA

Case No. D2002-0558

 

1. The Parties

The Complainant in this administrative proceeding is FleetBoston Financial Corporation ("Fleet"), a Rhode Island corporation having its principal place of business at 100 Federal Street, Boston, MA, 02110, United States of America, ("USA"). Amy B. Spagnole of Hinckley, Allen & Snyder LLP, Boston, represents the Complainant in this proceeding.

According to a Whois database search which the Complainant conducted on June 6, 2002, for the domain names at issue, the Respondent in this administrative proceeding is Lost In Space SA, 3510 South Ramblas Blvd., 6th Floor, Palma Majorca, SA 1234, 2222, Spain and Juan Miguel of the same address is administrative, technical and billing contacts. According to the Request for Registrar Verification referred to in section three below, the "full contact details" are "First Name: Juan; Last Name: Miguel; Organization: Lost in Space SA", of the same address but with a "Zip/Postal Code: 07505". In the remainder of this decision, Lost in Space SA and Juan Miguel are jointly referred to as "the Respondent".

 

2. The Domain Names and Registrar

The domain names at issue are <fleetbanking.com> and <fleetbankboston.com> (the "Domain Names"). The Registrar is Intercosmos Media Group, Inc., 650 Poydras Street, Suite 2311, New Orleans, Louisiana 70130, USA.

 

3. Procedural History

The Complainant filed a Complaint by e-mail with the WIPO Arbitration and Mediation Center (the "Center") on June 18, 2002. On June 20, 2002, the Center received a hard copy of the Complaint, with supporting evidence.

On June 19, 2002, a Request for Registrar Verification was transmitted to the Registrar, which confirmed, on the same day, that it had received a copy of the Complaint, that the Domain Names were registered with it, and that Juan Miguel was the current registrant of the Domain Names. The Registrar transmitted to the Center the full Whois details related to the Domain Name [1] and confirmed that the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the Domain Names.

On June 20, 2002, the Center informed the Complainant of the information it had received from the Registrar as to the identity of the current registrant and asked that the Complaint be amended so as to reflect that information. The Complainant did so on June 26, 2002.

On June 27, 2002, the Center determined that the Complaint satisfied the formal requirements of 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 the same day, the Center notified the Respondent of the commencement of this proceeding and set July 17, 2002, as the date for submitting a Response.

The Center did not receive a Response. On July 19, 2002, it sent to the Parties, by email, a Notification of Respondent Default.

The Complainant elected to have the Complaint resolved by a sole Panelist. On July 24, 2002, the Center appointed Mr. Barry Freedman, notified the Parties by email of this appointment and set August 9, 2002, as the Projected Decision Date.

While the Complainantís contention that the Respondent had no rights or legitimate interests in the Domain Names was based on "information and belief", the Complaint provided no details in this regard. On July 29, 2002, Mr. Freedman ordered that the Complainant provide, no later than August 6, 2002, information, submissions and evidence on which this information and belief was based. The Respondent was allowed until August 13, 2002, to reply to this additional material. The order postponed the Projected Decision Date to August 20, 2002. The Complainant filed a supplementary record on August 7, 2002. The Respondent did not file a reply.

On August 16, 2002, Mr. Freedman withdrew from this matter after discovering circumstances of which he was not aware at the time of his appointment that could give rise to doubt as to his impartiality or independence.

On September 2, 2002, the Center invited the undersigned to act as Sole Panelist. On September 3, 2002, the undersigned provided a Statement of Acceptance and Declaration of Impartiality and Independence. On September 4, 2002, the Center appointed the undersigned, notified the Parties by email of this appointment and set September 18, 2002, as the new Projected Decision Date.

The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. It has also independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Policy, the Rules and the Supplemental Rules.

The language of this administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant is the seventh largest financial holding company in the United States, with more than 20 million customers in more than 20 countries and territories. Its banking operations comprise more than 4,700 retail outlets and over six million customers. By virtue of the merger of Fleet Financial Group, Inc. and BankBoston Corporation, the Complainant owns numerous registered United States service marks that use the terms FLEET, BANKBOSTON, BANK OF BOSTON or BANCBOSTON: the Complainantís ownership of some forty or so such registered service marks, most of them in the areas of banking and financial services, is documented as part of the record of this proceeding.

Since 1982, the Complainant and its predecessors in interest have used the mark FLEET alone and as a component of composite marks incorporating the word "Fleet". The Complainant has spent substantial amounts in advertising and promoting its banking products and services offered under the FLEET mark and associated marks (including some common law marks). The Complainant has built up substantial value and goodwill in these marks throughout the United States and abroad.

Since 1996, the Complainant and its predecessors in interest have used the marks BANKBOSTON, BANK OF BOSTON and BANCBOSTON alone and as the dominant element of composite marks incorporating these terms. BANKBOSTON is registered in over twenty countries throughout the world. The Complainant has widely used BANKBOSTON and BANCBOSTON for many years. It continues to do so in connection with its specialized commercial finance products and services in the United States and in certain markets abroad. In the United States these products and services include equity and mezzanine financing services and venture capital services. In Latin America, they include retail and corporate banking and financial services. The Complainantís presence is especially significant in Brazil, Argentina, Chile and Venezuela.

The Complainant has built up valuable goodwill in its FLEET and BANKBOSTON marks and the Fleet and Bank Boston families of marks.

Since March 1996, the Complainant Fleet has operated a website at the Internet address <fleet.com>. This is also where, following the merger referred to above, those who reach the Internet address <bankboston.com> are redirected. The site not only allows the Complainant to advertise its products and services; it also allows its customers to perform a number of banking inquiries and transactions online. The Complainant also owns and maintains websites located at <bancbostoncapital.com> and <bancbostonventures.com>.

The Respondent registered the Domain Names in the Fall of 2001. They currently resolve to identical, active websites containing a variety of pornographic photographs.[2] Users are invited to have an on-line discussion with and view live video images of "Serena," the woman featured in the photographs. The websites also advertise services described as a mix of traditional Secretarial & I.T temping agency with Escorts, Hosts, Translators creating our famous ĎSEXETARIES.í"

 

5. Parties' Contentions

A. Complainant

The Complainant relies on the following arguments to ask that the Domain Names be transferred to it.

The Domain Names are confusingly similar to the Complainantís marks. Registration of a domain name which incorporates a distinctive mark in its entirety creates sufficient similarity between the mark and the domain name to render it confusingly similar: Eauto, LLC v. Triple S. Auto Parts et al., WIPO Case No. D2000-0047 (March 24, 2000). The registration of a mark is prima facie evidence of the validity of such registration and creates a presumption that the mark is inherently distinctive. The domain name <fleetbanking.com> incorporates, in its entirety, the FLEET and FLEET BANK marks. The domain name <fleetbankboston.com> incorporates, in its entirety, the FLEET, FLEET BANK and BANKBOSTON marks.

The Respondent has no rights or legitimate interest with respect to the Domain Names. The Domain Names do not comprise the Respondentís name or a name that is otherwise commonly used to identify the Respondent. The Respondent has not made a bona fide non-commercial, fair use of the Domain Names. The Complainant never authorized the Respondent to use the Complainantís marks or to apply for or use any domain name comprising or incorporating these marks. Furthermore, a search of the records of the American and Spanish Trademark Offices reveals that the Respondent neither owns, nor has a pending application for, any mark incorporating the terms FLEET, FLEET BANK or BANK BOSTON. Finally, the Respondent does not use these terms on the websites to which the Domain Names resolve.

The Respondent has registered and is using the Domain Names in bad faith to intentionally attract for financial gain, Internet users to its websites by creating a likelihood of confusion with the Complainantís marks as to the source, sponsorship, affiliation, or endorsement of the Registrantís websites and/or the services offered in connection with such websites. A consumer searching for the Complainantís website may well enter the Complainantís name and additional terms describing its business into a commercial Internet browser. Due to the recent merger of Fleet Financial Group, Inc. and BankBoston Corporation, those who are looking for the Complainantís website are also likely to enter "Fleet Bank Boston." Those consumers will be directed to the Respondentís website, only to be faced with sexually explicit photographs. This may leave the impression that the Complainant endorses, sponsors, or is otherwise affiliated with the Respondentís website and the services offered on such website. See World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256 (June 7, 2000). The use of a confusingly similar domain name in connection with a sexually explicit website in itself constitutes bad faith registration and use: National Football League Properties Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a Charger Girls, WIPO Case No. D2000-0118 (April 17, 2000); Nokia Corporation v. Nokia Girls.com a/k/a IBCC, WIPO Case No. D2000-0102 (April 18, 2000); CCA Industries, Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148 (April 26, 2000); Rita Rudner v. Internetco Corp., WIPO Case No. D2000-0581 (August 3, 2000). Although a user who arrives at a pornographic site may promptly conclude that it is not what he or she is originally looking for, the registrant has already succeeded in its purpose of using the complainantís service mark to attract website traffic to its commercial website: Charger Girls, supra.

B. Respondent

The Respondent has not submitted a Response nor any other comments.

It is worth noting, however, that during this proceeding the Respondent used a feature provided by the Registrar to its customers allowing them to update their contact details online. The feature was used to change not only the address but also the name of the owner of the Domain Names. Changes of ownership in this fashion during a proceeding under the Policy are not allowed. Once informed by the Center, the Registrar changed the Whois information to what it was at the time of the beginning of this Proceeding. The Registrar also informed the Center that it was taking steps to prevent any future similar change to the information using the online update tool during a proceeding under the Policy.

 

6. Discussion and Finding

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Names, the Complainant must prove that each of the three following elements are satisfied:

1. The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1); and

2. The Respondent has no rights or legitimate interests in respect of the Domain Names (see below, section 6.2); and

3. The Domain Names have been registered and are being used in bad faith (see below, section 6.3).

Paragraph 4(a) in fine of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

6.1 Are the Domain Names Identical or Confusingly Similar to a Trademark in Which Complainant has Rights?

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) are the Domain Names identical or confusingly similar to such trademark or service mark.

On the first point, the record clearly shows that Complainant has rights in a variety of trademarks including the terms FLEET, FLEET BANK and BANKBOSTON.

On the second point a slightly different route must be followed to reach a conclusion with respect to each of the Domain Names.

Fleet and Bank are common words. Boston is the name of a town. Each taken on its would constitute a pretty weak mark, if a mark at all. But when used in association with banking activities or financial service, or combined with the word "bank" and its derivative, the word "Fleet" and Boston" acquire a very distinctive character, due in large part to the Complainantís efforts over the years to create an association between these words and its business.

<fleetbanking.com> wholly incorporates the Complainant's mark and only adds to it a generic word, that is descriptive of the Complainant's goods or services marketed in relation to the trademark. This Panelist has already ruled that such a situation is inherently confusing: ACCOR, Société Anonyme à Directoire et Conseil de Surveillance v. Tigertail Partners SEOCHO, WIPO Case No. D2002-0625 (August 29, 2002).

As to <fleetbankboston.com>, apart from the suffix ".com," this Domain Name is the combination of two of the Complainantís marks, and nothing else. Others have ruled that confusing similarity exists when a domain name wholly incorporates a complainantís mark with some other words: see, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (January 29, 2001); Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2000); Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445 (August 1, 2002). In this Panelistís view, combining one or more of the Complainantís marks and nothing else is inherently, more confusing, not less, especially in light of the above-mentioned merger of Fleet Financial Group, Inc. and BankBoston Corporation.

The Panel thus finds that the Complainant has rights in the trademarks FLEET, FLEET BANK and BANKBOSTON, and that the Domain Names are confusingly similar to such trademarks.

6.2 Does the Respondent Have Rights or Legitimate Interests in the Domain Names?

The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Names based on the Complainant's prior use of its marks and was never authorized to use those marks. The Respondent, who did not file a Response, did not dispute this contention nor provide information as to its interests to use the Domain Names.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:

"(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 trade mark 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 trade mark or service mark at issue."

The Domain Names resolve to a website selling pornography. The Respondent has not used the Domain names in connection with any other bona fide offerings of goods or services.[3] There are no elements showing that the Respondent is or was commonly known by the Domain Names. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Names. On the contrary, the web site to which the Domain Names refer offer services for commercial gain.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names.

6.3 Is There Evidence of Registration and Use of the Domain Names in Bad Faith?

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, Paragraph 4(b)(iv) provides as an instance of registration and use in bad faith circumstances in which:

"by using the domain name, you [Respondent] 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 complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

The Complainant must prove that the Domain Names were both registered and used in bad faith. In this the Complainant is successful for a number of reasons.

First, only someone who was familiar with the marks and what they stand for would have gone through the trouble of registering the Domain Names. One is the combination of two of the Complainantís marks; the other is composed of the Complainantís mark to which is added the generic term "banking," which evokes precisely the services offered by the Complainant and associated with the mark. The very action of registering the Domain Names creates a very strong presumption that the Respondent knew of the Complainantís marks and of the nature of the goods or services associated with them. The Respondent has not attempted to rebut that presumption.

Second, there is no justification in the statements and documents submitted, for the use of the Complainantís marks in the Domain Names, other than to intentionally divert Internet users, for commercial gain, to the Respondent's web site, by creating initial confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site. In fact, it is fairly difficult to conceive of any plausible actual or contemplated active use of the Domain Names by the Respondent that would not be illegitimate.

Third, try as it may, this Panel has failed to conceive of any possible legitimate association between the contents of the web site (or sites) to which the Domain Names resolve and the Complainantís marks. As a rule, when there is no evidence to show a connection--and no obvious logical connection--between a (confusingly similar) domain name and the site to which it resolves and which offers, for commercial gain, completely unrelated services [4], in the absence of evidence to the contrary a Panel is entitled to conclude that a domain name was registered and is being used "to attract, for commercial gain, Internet users ... by creating a likelihood of confusion with the complainantís mark."

In light of the above, the Panel finds that the Domain Names were registered and are being used in bad faith.

 

7. Decision

On the basis of the elements set out above, the Panel finds that:

1. The domain names <fleetbanking.com> and <fleetbankboston.com> are confusingly similar to the trademarks FLEET, FLEET BANK and BANKBOSTON, in which the Complainant has rights;

2. The Respondent does not have any rights or legitimate interests in respect of the Domain Names;

3. The Domain Names were registered and are being used in bad faith.

Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <fleetbanking.com> and <fleetbankboston.com> be transferred to the Complainant.

 


 

Daniel Gervais
Sole Panelist

Dated: September 16, 2002

 


Footnotes:

1. See, however, under section 5(B) below.

2. In fact, even though the locations indicated are identical to the Domain Names, and examination of the Page Source and Page Info data reveals that both addresses in fact resolve to a single web site, which is temptationsatwork.com.

3. As the only offering made under the domain name (i.e. using the Complainantís marks to lead unwitting surfers to a pornographic website) constitutes bad faith use, it cannot be a bona fide offering.

4. Even if, as in this case, it is not a straight redirect to a different site bearing a different name.