WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fleetboston Financial Corporation Ėv- N%2fA
Case No. DBIZ2002-00157
1. The Parties
The Complainant is Fleetboston Financial Corporation, 100 Federal Street, Boston, MA 02110, United States of America.
The Respondent is , N%2fA of VIC, Australia.
2. The Domain Name and Registrar
The Domain Name is <fleet.biz>.
The Registrar is Blueberry Hill Communications, Inc. (d/b/a BlueHill.com).
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center ("the Center") by email on April 27, 2002, and in hardcopy form on April 30, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy ("the STOP"), the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("WIPO Supplemental STOP Rules") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the STOP.
On May 23, 2002, the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was June 12, 2002.
On May 29, 2002, the Response was received by the Center.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by the Center or the Panel.
4. Factual Background
The Complainant is Fleetboston Financial Corporation, a corporation organized and existing under the laws of the State of Rhode Island. The Complainant claims to be the seventh largest financial holding company in the United States with over $192 billion in assets. It claims to have more than 20 million customers in more than 20 countries and territories around the world.
It claims to have used the mark FLEET alone and as a component of composite marks incorporating the word "fleet" since 1982 and that use has been substantial, continuous and exclusive.
The Complainant is the owner of various trade mark registrations in the United States including number 1,258,836 dated November 22, 1983, for the word FLEET for banking services. The vast majority of the registrations identified in the Complaint are for financial services of one kind or another.
The Respondent (in the person of its administrative contact, Matthew Prince) has provided a description of his/its business, which is quoted in full below. In essence the Respondent is a marketing/business consultant.
On March 27, 2002, the Respondent registered the Domain Name. The Respondent claims to have applied for several thousand generic and dictionary words and targeted acronym .biz domain names in the course of the registration process. The Respondent ended up with 92 successful .biz applications of which 2 were "mistakes" and are not in use. The remaining 90 are being used save to the extent that the STOP process has impeded the Respondent from making active use of the Domain Name. The Respondent has produced a complete list of the .biz domain names, which it has registered. A representative selection includes <1234.biz>, <asians.biz>, <barbeques.biz>, <friday.biz>, <investigators.biz>, <mad.biz>, <motocross.biz>, <palestine.biz>, <tng.biz>, <profitable.biz>, <tacos.biz>, <urls.biz>, <zzz.biz>.
5. Partiesí Contentions
The Complainant contends that the Domain Name is identical to the Complainantís FLEET trade mark. This is not in dispute.
The Complainant further contends that the Respondent has no rights or legitimate interest in respect of the FLEET trade mark or the Domain Name. The Complainant does not believe that the Domain Name represents the Respondentís legal name or indeed any name by which the Respondent is commonly known. The Respondent has not used the Domain Name or any trade mark corresponding to the Domain Name in connection with the bona fide offering of goods and services. The Respondent has not made a bona fide non-commercial fair use of the Domain Name. The Complainant has never authorized, licensed or otherwise permitted the Respondent to use the FLEET trade mark or indeed to apply for any domain name comprising or including the trade mark.
The Complainant observes that the Domain Name does not currently resolve to an active website nor has it ever done so.
The Complainant contends that the Respondentís registration of the Domain Name was done in bad faith in order to prevent the Complainant from reflecting its FLEET trade mark in a corresponding domain name. The Complainant also contends that the Respondent has used the Domain Name in bad faith even though it does not currently resolve to an active website. In support of that claim the Complainant refers to a number of previous WIPO decisions demonstrating that there are circumstances in which passive use of a domain name can constitute bad faith registration and use of the domain name in question.
The Complainant refers in particular to August Storck KG v. Tony Mohamed, WIPO Case No. D2000-0196 and Telstrar Corporation v. Nuclear Marshmallow, WIPO Case No. D2000-0003.
The Complainant contends that given the fame of the Complainantís trade mark and the numerous trade mark registrations for it which the Complainant has around the world "it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the Domain Name".
The Respondent concedes that the Domain Name is in substance identical to the Complainantís trade mark.
The Respondent contends however that it does have rights or legitimate interests with respect to the Domain Name. The Respondent describes his business and his intentions behind the Domain Name as follows:
"I work with organizations and businesses to assess and increase the efficiency of existing processes, focusing on marketing. I also work to leverage relationships between businesses by trading goods and services ie no-cash transactions and do some business systemization Ė leveraging internal systems to maximize profitability. As part of my online marketing plan to target a large number of different industries to offer my services, I am using 91 generic/dictionary/acronym .biz domain names not including the Domain Name. Most of these domain names are in phase 1 of the marketing plan, but some are in phase 2 (somewhat targeted for each industry) of a 3 phase process. Phase 3 is full industry targeting with search engine submissions and relocation of the websites to paid servers. They are on free servers at the moment as cashflow is an issue after the purchase of the domain names. The Domain Name fleet.biz is to be used to target the vehicle leasing and buying/selling industries, which the word fleet is commonly associated with. This is a very large industry and as marketing is a skill that many business owners do not have, I believe it has much opportunity."
The Respondent contends that of those 91 domain names (92 if one includes the Domain Name), 2 were mistakes which are no longer in use (one has been transferred to a third party) and the remaining 89 which the Respondent is using "fall into the categories of generic and dictionary words and targeted acronyms, which allows me to specifically target a great number of industries to offer my services."
The Respondent denies that the Domain Name has been registered in bad faith or is being used in bad faith.
As to registration, the Respondent contends that until receipt of the Complaint in this case, the Respondent had never heard of the Complainant. The Respondent has conducted some investigations and has been unable to find any trace of the Complainant having a presence in Australia nor is the Respondent aware of the Complainant having any trade mark registrations in Australia.
The Respondent observes that the word Ďfleetí is an ordinary generic dictionary word. The Respondent claims that the Domain Name was registered for its generic value. The Respondent contends that it did not register or acquire the Domain Name for the purpose of selling, renting or otherwise transferring it to anybody. The Respondent claims that it will be using the Domain Name and that it is not for sale to anyone.
The Respondent asserts that it is obviously not a competitor of the Complainant and has never had any intention of disrupting the Complainantís business. Indeed, as indicated above, until the launch of this Complaint the Respondent was not aware of the existence of the Complainant.
The Respondent claims that when it is able to use the Domain Name it will be connected to an active website very similar to the website that it uses for <worship.biz> and <windsurfing.biz>. The website will in no way reflect any of the Complainantís trade marks and will not be likely to lead to any confusion with the Complainant.
The Response closes with the following:-
"As stated previously, I have intended to use the Domain Name fleet.biz for a bona fide offering of my marketing services as described earlier and this was obviously before I received any notice of the dispute. Based on the foregoing I (the Respondent) have not registered and used the Domain Name fleet.biz in bad faith."
6. Discussion and Findings
According to paragraph 4(a) of the STOP, the Complainant must prove that
(i) The Domain Name is identical to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered or is being used in bad faith.
There is no dispute that the Domain Name is in substance identical to a trade mark in which the Complainant has rights.
Respondentís Rights or Legitimate Interests
In view of the Panelís decision below in relation to bad faith registration or use (STOP Paragraph 4(a)(iii)), it is not strictly necessary for the Panel to consider this ground of the Complaint, in order for the Panel to conclude that the Complaint should be dismissed. However, this is a situation where there are multiple IP claimants, and it is therefore necessary under subparagraphs 4(l)(ii) 2 and 3 of the STOP to consider whether the Respondent has demonstrated that it has "legitimate rights" to the domain name.
The Respondentís sole justification for selecting the Domain Name is that it is an ordinary generic dictionary word suitable for the Respondent to use to promote the Respondentís services to the automotive industry. Whether an expressed intention to that effect (and little more) is sufficient to establish a "legitimate right", the Panel is far from sure. Suffice it to say that in this case, while the Panel believes the Respondentís reason for having registered the Domain Name to have been entirely reasonable, the Panel is not satisfied that the Respondent has done enough to prove "legitimate rights" to the Domain Name.
For a Domain Name registration to constitute a bad faith registration for the purposes of paragraph 4(a)(iii) of the STOP the Respondent must have had a bad faith intention directed at the Complainant at the time of registration of the Domain Name. Necessarily, therefore, for the Complainant to succeed, the Complainant has to establish at the very least that at the time of registration the Respondent knew of the existence of the Complainant or its trade mark.
In this case, the Complainant is evidently a very well known organization in the United States, but there is no evidence before the Panel that the Complainant has any reputation in Australia. True, the Complainant claims to have a reputation in twenty countries around the world outside the United States, but the Complainant does not identify what those countries are.
The Respondent states categorically that he had no knowledge of the existence of the Complainant prior to service of the papers in this complaint. The Panel has no reason to doubt that assertion. Indeed, the Panel itself was not aware of the existence of the Complainant until receipt of the papers in this complaint.
Is it nonetheless the case that the Respondent is using the Domain Name in bad faith? There is no dispute that the Domain Name is not being used at all. The Complainant invites the Panel to draw adverse inferences from the fact that the Domain Name is not being used. The Respondent on the other hand explains that the only reason that the Domain Name is not being used is because the STOP procedure prevents the Domain Name from being used.
Whether or not that is the case, the Panel would have been diffident about inferring bad faith use in this case.
First, the Domain Name was only registered about 4 weeks prior to the launch of this Complaint. There is no obligation upon a registrant of a domain name to make immediate use of a domain name and, ordinarily, in the absence of any other indicative factors, four weeks of non-use is far too short a time from which to draw adverse inferences.
Secondly, it is not as if the Domain Name is in the Kodak category i.e. a made up word which has been in use as a trade mark for a long time and which has acquired a truly worldwide reputation as a household name. In this case, the mark/name is an ordinary dictionary word and however famous the mark might be in its home territory and/or in its business area, it is not of a kind that someone outside the Complainantís home territory and outside the Complainantís business area must necessarily have heard of.
Thirdly, the previous WIPO Decisions which the Complainant cites in support of passive use constituting bad faith use are materially different from the case in hand. In the August Storck case the domain name was Ďwerthersoriginal.comí, a far more complex domain name than the Domain Name in this case and, in that case, on the Complainantís own admission, the respondent registered one other domain name which was similar to the corporate name of a well known investment company. The respondent in that case also, according to the Complainant, admitted in an email that he would not use the domain name to sell goods and services. In this case the Complainant has made no allegation in respect of the Respondentís other domain name registrations and the Respondent has asserted that he does propose to use the Domain Name to promote his services. In the Telstra case the domain name was <telstra.com>, which unlike <fleet.biz> comprises as its essential element a made up name. Moreover, on the Complainantís analysis of that case, the respondent provided false contact information (not the case here) and it was not possible to conceive of any plausible, actual or contemplated active use of the domain name by the respondent that would be legitimate. Again, in this case the Respondentís explanation is, to say the least, plausible.
In the result, the Complainant has failed to satisfy the Panel that the Domain Name was registered in bad faith or is being used in bad faith.
The Complaint is dismissed, but subsequent challenges against the domain name under the STOP shall be permitted. In accordance with paragraph 4(l)(ii)(3) of the STOP, no such challenge may be brought by, or on behalf of, the Complainant.
Dated: July 22, 2002