WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fifth Third Bancorp. v. Domain Active Pty. Ltd.
Case No. D2003-0884
1. The Parties
The Complainant is Fifth Third Bancorp., Cincinnati, Ohio, United States of America, represented by Graydon Head & Ritchey, LLP, United States of America.
The Respondent is Domain Active Pty. Ltd., Clayfield, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <fifth-third-bank.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 5, 2003. On November 6, 2003, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On November 10, 2003, Fabulous.com transmitted by email to the Center its verification response confirming that the Uniform Domain Name Dispute Resolution Policy applies, and that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 11, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 5, 2003.
The Center appointed Daniel J. Gervais as the sole panelist in this matter on December 12, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Respondent registered the disputed domain name <fifth-third-bank.com> on July 25, 2002, and is using the domain name to provide links to third partiesí websites that offer various financial and banking services.
The Complainant is a multi-bank holding company, which owns second tier holding company, Fifth Third Financial Corporation, and 11 wholly-owned direct subsidiaries: Fifth Third Bank; Fifth Third Bank, Florida; Fifth Third Bank, Northern Kentucky, Inc.; Fifth Third Bank, Kentucky, Inc.; Fifth Third Bank, Indiana; Fifth Third Bank (Michigan); Fifth Third Community Development Corporation; Fifth Third Investment Company; Heartland Capital Management, Inc; Old Kent Capital Trust I and Fifth Third Reinsurance Company, LTD. The Complainant, through its subsidiaries, engages in and provides a wide range of financial products and services, including commercial, retail and trust banking; checking, savings and money market accounts; credit products such as credit cards, installment loans, mortgage loans and leasing; electronic payment processing services and investment advisory services.
Complainant has been using continuously, since 1968, the verbal marks FIFTH THIRD BANK and FIFTH THIRD, as well as the numerical mark 5/3. The Complainant has registered service marks FIFTH THIRD BANK and 5/3 for banking services since 1991.
The Complainant operates and maintains websites at a number of several domain names, including <fifththirdbank.com>, <fifththird.com>, <fifththirdbancorp.com>, and <fifththirdsecurities.com>.
The Complainant sent a cease and desist letter via email to the Respondent, requesting the transfer of the disputed domain name from the Respondent on October 31, 2003. The Complainant also contacted the Respondent via telephone on October 27, 2003. The Complainant has not received any response by the Respondent.
5. Partiesí Contentions
The Respondent registered and is using a domain name that is identical and confusingly similar to Complainant's service mark. According to the information in WHOIS database, the Respondent registered the domain name <fifth-third-bank.com> on July 25, 2002. According to the Complainant, the Respondent is using the disputed domain name to provide links to third partiesí websites that offer various financial and banking services.
The Complainantís marks are well known marks, and have been used by the Complainant in connection with its financial services. The first use of the Complainant mark FIFTH THIRD BANK occurred in 1968, and the Complainant has been using the mark in connection with its financial services ever since.
The Respondent could not have been unaware of the Complainantís rights in the mark. The disputed domain name is identical and confusingly similar to the Complainantís marks and has been used by the Respondent in bad faith.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.C).
Paragraph 4(a) 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.
A. Is the domain name 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; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As to the first question, the wording of the paragraph 4(a)(i) to "trademark or service mark" has been interpreted by numerous Panels in the past to include both registered marks and common law marks. The record confirms that the Complainant has been continuously using the mark FIFTH THIRD BANK since 1968, and that the mark has been registered since 1991. Therefore, the Panels finds that the Complainant has rights in the mark FIFTH THIRD BANK.
As to the second question, the Panel finds that the disputed domain name <fifth-third-bank.com> is identical and confusingly similar to the FIFTH THIRD BANK mark. The disputed domain name <fifth-third-bank.com> is composed from the words "fifth", "third" and "bank", which are joined by hyphens, and the generic top-level domain reference ".com".
Numerous Panels in the past have found that the use of the hyphen in a domain name to separate or join a mark does not alter the mark, and therefore, the domain name which fully incorporates the mark is identical and/or confusingly similar to the mark. See inter alia Chernow Communications Inc. v. Kimball, WIPO Case No. D2000-0119, Ticketmaster Corporation v. Cecil Spafford, WIPO Case No. D2002-0944, InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075, Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550, Guinness UDV North America, Inc. v. UKJENT, WIPO Case No. D2001-0684, Nintendo of America inc., v. This Domain Is For Sale, WIPO Case No. D2000-1197, Cathay Pacific Airways Limited v. Orcom Communication, WIPO Case No. D2002-0317, Habib Bank AG Zurich v. Jay Smith, WIPO Case No. D2003-0216, Dreamworks L.L.C. v. Carol Maleti, WIPO Case No. D2003-0548, Club Méditerranée v. Yosi Hasidim, WIPO Case No. D2000-1350, Transcontinental Media Inc v. Infa Dot Net Web Services/Mr. James M. Van Johns, WIPO Case No. D2001-0908, Macquarie Bank Limited v. Mike Smith, WIPO Case No. D2003-0890, Macquarie Bank Limited v. Robert Seagle aka Oxford University, WIPO Case No. D2003-0374, Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314.
B. Does the Respondent Have Rights or Legitimate Interests in the domain name?
The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant's prior use of the FIFTH THIRD BANK mark. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the domain name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, 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 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."
There were no elements introduced in evidence to show that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. Quite contrary, the evidence suggest that the Respondent is using the disputed domain name for commercial gain, and that such use of the domain name may tarnish the Complainantís mark.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Was the domain name Registered and Used 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, namely:
(i) circumstances indicating that Respondent has registered or 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 the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website 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 Respondent's website or location or of a product.
There is evidence of the situation described in paragraph 4(b)(iv). The relevant facts are mentioned below.
The Respondent registered the domain name in bad faith. Apart from the famous nature of the Complainantís marks, the domain name is identical to the Complainantís mark FIFTH THIRD BANK. It is reasonable to conclude that only someone who was familiar with the Complainantís mark would have registered the identical domain name, especially because it was used by the Respondent in the same sector, namely banking. In addition, a number of decisions under the Policy stand for the proposition that the person who registers a domain name confusingly similar with a known mark should be willing to show an intention to express himself or herself by responding to communications and indicating good faith use of the domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Telstra Corporation, Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Encyclopaedia Britannica, Inc. v. Zuccarini and the Cupcake Patrol aka Country Walk aka Cupcake Party, WIPO Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis (trading as .com and manessis.com), WIPO Case No. D2001-1461. The Respondent did not respond to any communication from the Center and did not indicate good faith use of the disputed domain name by any means.
It is difficult to conceive that Respondent chose to register domain name <fifth-third-bank.com> by accident. In fact, based on the facts submitted, it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be infringing to the Complainantís marks.
In addition, the Respondent is using the disputed domain name for commercial purposes creating likelihood of confusion with the Complainantís marks. Users who visit the disputed domain name are offered links to third partiesí websites which supply financial and banking services, which are the exact services offered by the Complainant.
The Panel finds for the Complainant on this third element of the test.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <fifth-third-bank.com>, be transferred to the Complainant.
Daniel J. Gervais
Dated: December 26, 2003.