WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wachovia Corporation v. International Safekeeping AB

Case No. D2003-0897

 

1. The Parties

The Complainant is Wachovia Corporation, Charlotte, North Carolina, United States of America, represented by Kennedy Covington Lobdell & Hickman, LLP, United States of America.

The Respondent is International Safekeeping AB, Stockholm, Sweden.

 

2. The Domain Name and Registrar

The disputed domain name <firstunionoffshorebank.com> is registered with BulkRegister.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 11, 2003. On November 11, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On November 13, 2003, BulkRegister.com transmitted by email to the Center its verification response confirming 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 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2003. The Response was filed with the Center on November 24, 2003.

The Center appointed Ross Carson as the sole panelist in this matter on December 3, 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.

In the Complaint the Complainant states that the Registrant is International Safekeeping AB, the Registrant named in the Registrarís Verification response. In the Response a purported Respondent states that the Respondent is First Union Offshore Inc., a company incorporated in the British Virgin Islands (BVI) pursuant to the International Business Companies Act (IBC). Attached, as Annex 3 to the Response is the Certificate of Incorporation of First Union Offshore Inc. showing a date of Incorporation of May 28, 2003.

The purported Respondent states in paragraph 7 of the Response that First Union Offshore Inc is the legal owner of the domain name in dispute stating: "Thus, this domain name (the domain name in dispute) took the root of its "name" from its legal owner "First Union Offshore Inc." duly incorporated at the BVI."

The purported Respondent states that International Safekeeping AB the registrant of the domain name <firstunionoffshorebank.com> is the nominee and representative of the BVI company First Union Offshore Inc. in respect of the domain name in dispute.

The website associated with the domain name<firstunionoffshorebank.com> does not disclose any reference to the corporate name First Union Offshore Inc. The enterprise referred to on the webpages is First Union Offshore Bank and the Copyright owner is stated to be First Union Fidelity Offshore Group. (Annex E to the Complaint)

The BVI company First Union Offshore Inc. was not in existence at the date of registration of the domain name in dispute on May 18, 2003.

Almost simultaneously with the appointment of the Panel the Complainant e-mailed the Respondentís representative stating that as set forth in Rule l of the Rules, the Swedish Company International Safekeeping AB is the Respondent in this matter and not the BVI company First Union Offshore Inc. A series of e-mails were directed by both parties to the Case Manager over the next few days primarily relating to First Union Offshore Inc. the BVI Company and its right if any to be named as Respondent in this case.

In order to control the process and maintain the due date for decision of December 17, 2003, the Panel issued a Panel Procedural Order on December 5, 2003. The Panel Procedural Order permitted either party to file further statements or documents by December 7, 2003, and file replies if necessary by December 9, 2003. The Respondent stated that two days was not sufficient time. The Panel accepted the Respondentís request and granted the Respondent an extension of time until December 12, 2003, to file further statements or documents and granted the Complainant until December 19, 2003, to respond to the Respondents further statements or documents. The Panel extended the due date for the decision to January 3, 2004.

On December 7, 2003, the Complainant e-mailed a Supplemental Submission. On December 10, 2003, the Respondent filed a reply to the Complainantís Supplemental Submission. In the Respondentís reply, dated December 10, 2003, Respondent referred to a second domain name <firstunionoffshorebank.net> submitting that the registration of the .net domain name by First Union Offshore Inc. was proof of actual ownership of the domain name in dispute by First Union Offshore Inc. A search at Bulk Register WHOIS shows that the domain name <firstunionoffshorebank.net> was registered on December 7, 2003, by First Union Offshore Inc.

On December 19, 2003, the Complainant filed a Reply to Respondentís additional submissions in Respondentís reply dated December 10, 2003. The Complainantís submission of December 19, 2003, added the new domain name <firstunionoffshorebank.net> and a second Respondent First Union Offshore Inc. as an additional Respondent. The Complainant has no authority under the Policy or Rules to add a second Respondent to the dispute. Paragraph 10(e) of the Rules states: "A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules." Neither party has produced any evidence regarding use, if any, of the domain name <firstunionoffshorebank.net> by First Union Offshore Bank Inc. or any preparations to use such domain name by the Registrant First Union Offshore Inc.

On December 22, 2003, the Respondent filed a Reply to the Complainantís submission dated December 17, 2003, in which the Respondent contests the Complainantís submissions and restates Respondentís positions. The Respondent states that Respondent has no objections that the registration of the domain name <firstunionoffshorebank.net> registered by First Union Offshore Inc. be included with the dispute relating to the domain name <firstunionoffshorebank.com>.

On December 23, 2003, the Parties were advised by the Panel that unless International Safekeeping AB the Registrant of the domain name <firstunionoffshorebank.com> is a party to the dispute concerning that domain name the Panel will not add the dispute relating to the domain name <firstunionoffshorebank.net> in this proceeding. No documentation was filed by the purported Respondent supporting the allegation that the International Safekeeping AB was the representative, nominee or agent of the BVI Company First Union Offshore Inc. when International Safekeeping registered the domain name on May 18, 2003. The BVI Company was not incorporated until a date following the registration of the domain name <firstunionoffshorebank.com>. The Panel has no authority to make an order with respect to the domain name <firstunionoffshorebank.com> unless the named registrant International Safekeeping AB is a party to the dispute relating to the domain name for which it is named as the registrant. By e-mail dated December 23, 2003, the representative of the purported Respondent maintained his objection to International Safekeeping AB, the named registrant of the domain name <firstunionoffshorebank.com> being a party to the dispute stating that International Safekeeping AB is nothing but a "nominee" and "agent" for the BVI company First Union Offshore Inc.

While the Complainant filed copies of some pages of the website associated with the domain name <firstunionoffshorebank.com> no evidence was filed by the Complainant or First Union Offshore Inc. relating to any website associated with the domain name <firstunionoffshorebank.net> or any preparation by First Union Offshore Inc. to use the domain name. The Panel, having regard to the lack of evidence, has decided not to entertain a dispute relating to the domain name <firstunionoffshorebank.net> in this proceeding.

 

4. Factual Background

Complainant Wachovia Corporation, formerly First Union Corporation, is a holding company that owns and/or controls numerous subsidiary companies engaged individually and collectively in providing a wide variety of banking, financial, mortgage and investment related services throughout the world under a family of "First Union" trade names, including First Union National Bank.

Complainant is one of the largest and most prominent financial institutions not only in the United States but internationally as well. Complainant has branches in Hong Kong, Tokyo, Taipei, Seoul and London. In addition, Complainantís extensive global network includes 33 representative offices and over 3000 correspondent banking relationships in more that 130 countries. Complainant maintains account relationships with 80% of the largest non-U.S. banks.

Since at least as early as 1958, Complainant has provided a full range of banking and financial services to its customers using a family of FIRST UNION service marks. Complainant has devoted extensive efforts and expended substantial sums of money in advertising, promoting and marketing its various banking, financial, investment, mortgage and credit services in association with its FIRST UNION family of marks to identify its services. Consequently, the FIRST UNION family of marks is widely recognized by consumers as being associated with Complainantís banking, financial, investment, mortgage and credit services.

Complainant has spent hundreds of millions of dollars promoting its financial services to businesses and consumers throughout the world using its FIRST UNION family of marks since adoption of the FIRST UNION mark and other marks in its FIRST UNION family of marks for over forty (40) years. Through Complainantís substantial advertising using these marks to identify its banking, mortgage, financial, credit, investment and insurance services, Complainantís FIRST UNIION mark has become well known and has earned substantial goodwill among its customers worldwide.

Complainantís FIRST UNION word mark is registered with the United States Patent and Trademark Office (U.S. Trademark Reg. No. 1,338,333) in connection with banking services. (Annex C to the Complaint)

Complainantís FIRST UNION mark in the stylized form is also registered with the United States Patent and Trademark Office (U.S. Trademark Reg. Nos. 1,335,876 and 1,581,875). (Annex C to the Complaint). The stylized form of the FIRST UNION marks features the word FIRST in bold print in an upwardly inclining presentation with the word UNION in less bold print in an identical upwardly inclining presentation immediately below the word FIRST.

The Complainant also owns at least twenty-seven (27) other United States federal trademark registrations for its FIRST UNION family of marks for use in association with Complainantís banking, financial, investment and insurance services. An abbreviated list of Complainantís U. S. federal registrations for its FIRST UNION family of financial services marks is included in Annex C to the Complaint. In addition to registering its FIRST UNION mark with the United States Patent and Trademark Office, Complainant owns trademark registrations for its FIRST UNION mark in the European Community Ėwhich includes Respondentís home country, Sweden Ėand in ten additional countries throughout the world, including Australia, Canada, Japan, Korea, Russia, Singapore, South Africa, Taiwan, Thailand, and Turkey.

 

5. Partiesí Contentions

A. Complainant

On the issue of who is the proper Respondent in the dispute relating to the domain name <firstunionoffshorebank.com>, the Complainant submits that International Safekeeping AB is the Respondent. International Safekeeping AB was at all times relevant to this dispute the registrant named in the Bulk Register WHOIS (Annex A to the Complainant). The Complainant relies on the definition of Respondent in Rule l of the Rules in which "Respondent means the holder of a domain name registration against which a complaint is initiated."

In later submissions the Complaint states that the Respondent International Safekeeping AB should be declared in default as no Response was filed by International Safekeeping AB. The only Response was filed on behalf of First Energy Offshore Inc. a Company incorporated in the British Virgin Islands which company is allegedly the owner of the domain name <firstenergyoffshorebank.com>. The representative of First Energy Offshore Inc., the purported Respondent, stated throughout the proceeding, that International Safekeeping AB is nothing but a "nominee" and "agent" company of First Energy Offshore Inc. and no document or submission was sent to WIPO on behalf of International Safekeeping AB in this proceeding.

On the substantive issues set out in paragraph 4 (a), (b), and (c) of the Policy and paragraph 3 of the Rules the Complainant made numerous submissions.

Confusingly Similar

The Complainant submitted that its service marks for or including FIRST UNION had been extensively used for over forty years in relation to banking services and other financial services and had become distinctive and well known service marks distinguishing Complainantís services throughout the United States and throughout the world. (See Paragraph 4 of this decision immediately above)

The Complainant states that the Respondent (registrant) created the domain name <firstunionoffshorebank.com> by appending the words offshorebank.com to Complainantís well known service mark FIRST UNION which is registered and used alone or in combination in association with banking and other financial services.

The Complainant further submits the Respondent has copied the stylized presentation of the words FIRST UNION as registered in Complainantís stylized representation of the service mark FIRST UNION, U.S. Service Mark Reg. No. 1,335,876. The Stylized mark is one in which FIRST is inclined upwardly and the letters are in bold print and the words UNION are also inclined upwardly and appear in less bold print immediately below FIRST. As seen in copies of pages taken from the website associated with the domain name <firstunionoffshorebank.com> shown in Annex E to the Complaint, the Respondent has copied the Complainantís stylized representation of its FIRST UNION service mark and added the word OFFSHORE in an inclined manner below the inclined words FIRST and UNION. In addition to copying the inclined presentation of the words FIRST and UNION with UNION below FIRST Respondent has copied the typeface and boldness of the letters found in the Complainantís stylized service marks. The Complainant submits that the Respondent has copied the Complainantís stylized representation of FIRST UNION in order to deceive viewers of Respondentís website into believing that the website is affiliated with the Complainant.

The Complainant submits that the disputed domain name registered by Respondent is confusingly similar to Complainantís FIRST UNION service mark. Respondent has appropriated Complainantís FIRST UNION mark and then added the generic words "offshorebank" to create a domain name descriptive of the services provided by Complainant. The resulting domain name, <firstunionoffshorebank.com>, unquestionably satisfied the Policyís "confusingly similar" requirement. See Wachovia Corporation v. InterMos, NAF Claim No. FA0111000102520 (finding the domain name <firstunionbank.com> confusingly similar to Complainantís FIRST UNION mark "because it contains Complainantís mark in its entirety and because the addition of a generic term like "bank" and a top level domain name like ".com" does not distinguish the domain name from the Complainantís mark for purposes of confusing similarity). See also Wachovia Corporation v. Organized Crime, Inc., WIPO Case No. D2002-0362 and Wachovia Corporation v. Sims, WIPO Case No. D2002-0809

Complainant submits that in addition to being confusingly similar to Complainantís FIRST UNION mark, the disputed domain name is also confusingly similar to other marks in Complainantís FIRST UNION family of marks, including Complainantís FIRST UNION SPECIALTY BANKING service mark.

Rights Or Legitimate Interest

The Complainant submits that Respondent, International Safekeeping AB, has no rights or legitimate interest in the disputed domain name. The Respondent is not licensed to use Complainantís FIRST UNION mark or any other mark in Complainantís family of FIRST UNION marks. Respondent is not a subsidiary of Complainant, nor is Respondent controlled by Complainant.

After receiving the initial Response, in which it is submitted that International Safekeeping AB is not the Respondent, the Complainant denied that the purported Respondent, First Union Offshore Inc., a company incorporated in the British Virgin Islands, was the Respondent. The Complainant further stated, that in any event, incorporation does not provide any trademark or service mark rights in the elements of the corporate name in the country of incorporation or internationally.

The Complainant further submits that the purported Respondent First Union Offshore Inc.ís name is not used on the pages of the website associated with the domain name in dispute. The trade name appearing on the website is First Union Offshore Bank and not the corporate name First Union Offshore Inc.

The Complainant further submits that Respondent is not making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain or to misleadingly divert consumers or to tarnish the service marks at issue. The Complainant submits that just the opposite is true Ė Respondent is making commercial use of the disputed domain name by purporting to offer online banking services at the website associated with the disputed domain name in exchange for fees. Complainant submits that it is axiomatic that use of a disputed domain name to attract customers for commercial gain to a respondentís website by creating consumer confusion with a complainantís trademarks does not establish rights or legitimate interests in a domain name on the part of a respondent. Adobe Systems, Inc. v. Domain OZ, WIPO Case No. D2000-0057; AltaVista Co. v. Yomtobian, WIPO Case No. D2000-0937.

Registered and Used in Bad Faith

The Complainant submits that Paragraph 4 (b) of the Policy sets forth factors that, if found, shall be evidence of registration and use of a domain name in bad faith. Complainant submits that Respondentís actions satisfy the fourth factor, namely, Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, users to Respondentís website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís web site or service.

Complainant submits that Respondent is unquestionably attempting to attract users to its website (i.e., which offers online banking services) for commercial gain (i.e., service fees) by creating a likelihood of confusion with Complainantís FIRST UNIION mark for banking and financial services, including online services. Complainant submits that after sufficient time has elapsed for search engines to index Respondentís website, Internet users seeking banking services from Complainantís prominent financial institutions searching for websites using Complainantís FIRST UNION mark and the word "banking" would very likely find Respondentís web site. Viewers reaching Respondentís website are presented with a nearly identical version of Complainantís stylized FIRST UNION mark, further adding to the viewersí confusion and deceiving such viewers into believing that they are conducting business with Complainant rather than with Respondent.

Using a domain name that incorporates Complainantís trademark to offer goods and services that are virtually identical to Complainantís and including a representation of Complainantís trademark on the Respondentís web site constitutes bad faith under paragraph 4 (b) (iv) of the Policy. TPI Holdings, Inc. v. Jason Guida, WIPO Case No. D2000-0269. See also, LIN Television Corp. v. Home In USA, WIPO Case No. D2000-0257.

Complainant further submits that this Panel should also find that Respondentís action satisfies the bad faith criteria in paragraph 4 (b) (iii) of the Policy. Respondent purports to offer the same services as Complainant offers and thus the two parties should be construed to be competitors under the Policy. Since Respondent registered the disputed domain name with constructive knowledge of Complainantís business and marks by virtue of Complainantís trademark registration in Respondentís country -- and probably with actual knowledge of Complainantís mark based on the imitation thereof contained on Respondentís website Ė this Panel should find that Respondent registered the disputed domain name primarily for the purpose of disrupting Complainantís business.

Complainant further submits that the Panel should reject any argument by the Respondent, if made, that bad faith is avoided under the Policy because Respondentís website purports to disclaim any relationship between the Complainant and Respondent, for at least three reasons. First, the purported disclaimer is buried so deep in Respondentís website that most viewers of Respondentís website will never see it. In order to locate Respondentís purported disclaimer language, a viewer of Respondentís website would not only have to activate the link labeled "Terms of Use" Ė which is below the fold of Respondentís home page Ė but then the viewer would have to scroll down through a legal agreement (which is not even in Respondentís name) in order to somehow notice the sentence stating: "It should be noted that FIRST UNION OFFSHORE BANK, FIDELITY OFFSHORE INVESTMENTS, FERRARI OFFSHORE CONSULTANTS and FIRST UNION FIDELITY OFFSHORE GROUP are not in any way whatsoever related to First Union Bank or Fidelity Investments."

The Complainant further submits that having intentionally created the appearance of an affiliation between Respondent and Complainant by including the entirety of Complainantís FIRST UNION mark in the disputed domain name and then presenting viewers with an substantially identical representation of Complainantís stylized FIRST UNIION mark, Respondent cannot then claim that a hidden disclaimer cures the very deception that Respondent sought to create. In the words of a former WIPO panelist, "[t]he fact that the users, once so diverted or attracted are confronted with numerous disclaimers does not cure the initial and illegitimate diversion." Estee Lauder Inc. v. Hanna WIPO Case No. D2000-0869 (citing, Gallo v. Hanna Law Firm, WIPO Case No. D2000-0615 and DFO, Inc. v. Williams, WIPO Case No. D2000-0181).

The Complainant further submits that it is well established under the Policy that actual confusion is not required and that bad faith can be found even in circumstances where a viewer, once at a respondentís website, realizes that there is no affiliation between the respondent and the complainant. See, e.g., National Football League Properties, Inc. v. One Sex Entertainment Co., WIPO Case No. D2000-0118, SGS Societe Generale de Surveillance S.A. v. Inspectorate WIPO Case No. D2000-0024.

B. Respondent

The first issue is which legal entity or entities is the proper Respondent?

In the Complaint, International Safekeeping AB, the registrant named in the BulkRegister WHOIS, is stated to be the Respondent. In the Response filed by the purported Respondent First Union Offshore Inc. the purported Respondent is stated to be First Union Offshore Inc, a company incorporated in the British Virgin Islands on May 28, 2003, under the International Business Corporation Act, Chapter 291 of the law of the Territory Of The British Virgin Islands. The legal representative for the purported Respondent states that International Safekeeping AB is a nominee, representative or agent which registered the domain name <firstunioinoffshorebank.com> on behalf of the purported Respondent First Union Offshore Inc.

The legal representative of the purported Respondent First Union Offshore Inc. did not submit any documentation nominating or appointing International Safekeeping AB to register the domain name <firstunionoffshorebank.com> on its behalf. Secondly, the legal representative for First Union Offshore Inc. did not make any submissions or refer to any authorities under the Policy or Rules authorizing a Panel to substitute a person or legal entity other than the registrant of the domain name in dispute as the Respondent in a proceeding.

The legal representative of the purported Respondent First Union Offshore Inc. states and maintains that no document or other submission was sent to WIPO on the part of International Safekeeping AB in this proceeding.

On the substantive issues set out in paragraphs 4 (a), (b), (c) of the Policy and paragraph 3 of the Rules the representative of the purported Respondent made numerous submissions.

Confusingly Similar

The purported Respondent submits that the words in the domain name in dispute <firstunionoffshorebank.com> differs from the Complainantís registered service marks for or including FIRST UNION. The representative for the purported Respondent states that the Complainantís service marks do not include the words offshore and banking. The purported Respondent also submits that although the Complainantís stylized service mark is found on the web pages associated with the domain name in dispute the web pages include "OFFSHORE" and additional design features. The purported Respondent submits that the stylized design features of the Complainantís service mark which are copied are merely a choice of type and arrangement of words. The legal representative of the purported Respondent states that the domain name in dispute is not confusingly similar to the Complainant Ďs service marks for or including FIRST UNION.

Rights Or Legitimate Interest

The legal representative of the purported Respondent submits that the purported Respondent was incorporated in the British Virgin Islands as First Union Offshore Inc., which provide rights and a legitimate interest to use the words First Union Offshore.

Registered And Used In Bad Faith

The legal representative for the purported Respondent submitted the incorporation of First Union Offshore Inc. in the British Virgin Islands provide rights to use the words First Union Offshore in the domain name in dispute <firstuninoffshorebank.com> registered by its "nominee" and "agent" company International Safekeeping AB.

The legal representative for the purported Respondent submits that if the web pages, associated with the domain name in dispute, are read clearly and with the disclaimers, no visitor to the website will confuse the purported Respondentís or purported Respondentís associates business with the Complainantís services or business.

 

6. Discussion and Findings

Rule 15 (a) of the Rules states that "a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Proposed Change Of Respondent

The Response to the Complaint named First Union Offshore Inc., a company incorporated in the British Virgin Islands, as the Respondent.

The BulkRegister WHOIS (Annex A to the Complaint) shows International Safekeeping AB as the Registrant of the domain name < firstunionoffshorebank.com>. The Policy is incorporated by reference in the registration agreement between International Safekeeping AB and BulkRegister. (See paragraph l of Annex 2 to the Complaint).

Under the Policy, an agreement between the domain name holder or registrant and the Registrar, the domain name holder or registrant agrees that any dispute over the registration and use of an Internet domain name registered by the domain name holder or registrant shall be decided pursuant to the Policy and Rules. (Policy, paragraph 1).

Paragraph 4 of the Policy sets forth the type of disputes to which the domain name holder or registrant is required to submit to a mandatory administrative proceeding. The proceeding commenced by the Complainant is a proper dispute under paragraph 4 (a) of the Policy.

Paragraph 8 (a) of the Policy states that the domain name holder or registrant "may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4Ö".

An administrative proceeding under Paragraph 4 of the Policy is initiated by filing a Complaint with any Provider. (Paragraph 3 of the Rules). Paragraph 3 (v) of the Rules requires the Complaint to provide "the name of the Respondent (domain name holder)Ö".

The Complainant initiated this dispute against the named registrant International Safekeeping AB. There is no provision in the Policy, Rules or Supplemental Rules for substituting another entity for the Respondent after a proceeding has been initiated under the Policy and Rules.

In Unilever PLC v. ABC Corp, WIPO Case No. D2003-0164 the Panel disregarded a purported Response from a person other than the named registrant. At page 3 of the decision the Panel concluded: "Accordingly, the Panel proposes to disregard the purported Response from "Umail Sheikh. It did not come from the registrant of the disputed domain, registered as such at the time when notice of the administrative proceeding was received by the Registrar." In the majority decision in Gloria-Werke H. Schulte Ė Franckenfeld GmbH & Co v. Internet Development Corporation and Gloria MacKenzie, WIPO Case No. D2002-0056 it was stressed that the register must be taken as reflecting the correct identity of the registrant at the time the registrar receives a copy of the Complaint.

The Panel finds that the Respondent International Safekeeping AB named in the Complaint is the Respondent in this proceeding.

Paragraph 4 (a) of the Policy

The Complainant must prove each of the following three elements to succeed in the dispute:

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

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

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

Identical Or Confusingly Similar

The domain name in dispute is <firstunionoffshorebank.com>. The Complaint is the owner of the numerous registrations for FIRST UNION registered in relation to banking and other financial services. The Complainant has used its FIRST UNION service marks for over 40 years and is well known around the world for providing banking and other financial services in association with its FIRST UNION service marks. The addition of the adjective "offshore" before banking does not serve to distinguish the domain name in dispute from Complainantsís banking and other financial services associated with Complainantís FIRST UNION service marks. In Wachovia Corporation v. InterMos, NAF Claim No. FA0111000102520, the Panel found that the domain name <firstunionbank.com> was confusingly similar to Complainantís FIRST UINION service marks "because it contains Complainantís mark in its entirety and because the addition of a generic term like "bank" and a top level domain name like ".com" does not distinguish the domain name from Complainantís mark for the purposes of confusing similarity." For other reported decisions in which domain names were found confusingly similar to Complainantís FIRST UNION well known service marks see Wachoria Corporation v. Organized Crime Inc.,WIPO Case No. D2002-0362 and Wachoria Corporation v. Sims, WIPO Case No. D2002-0809.

The Panel finds that the domain name is confusingly similar to Complainantís FIRST UNION service marks registered, used and advertised in many countries throughout the world.

Rights or Legitimate Interests

The Respondent International Safekeeping AB is not licensed to use the Complainantís FIRST UNION service marks. There is no evidence that International Safekeeping AB has ever carried on business in association with FIRST UNION alone or in combination with generic qualifiers.

The Respondentís name does not appear at the web site associated with the disputed domain name. The name associated with the website is First Union Offshore Bank, part of the First Union Fidelity Offshore Group. The web pages contain links to banking services offered by Nessuah Zannex Ltd. and financial services offered by Ferrari Offshore Consultants. As seen in copies of the web pages attached as Annex E to the Complaint the website includes one page setting out the Schedule of Bank Fees of First Union Offshore Bank. The Copyright marking on the web pages names the copyright owner as First Union Offshore Group.

The web pages associated with the domain name in dispute: (1) include the Complainantís stylized FIRST UNION service mark with the addition of OFFSHORE below UNION in Complainantís format; (2) include links to competitive financial institutions or (3) Schedules of Bank Charges of First Union Offshore Bank Inc., all intended to misleadingly divert persons searching the web to Respondentís website. The use of a disputed domain name to attract customers for commercial gain to a respondentís website by creating consumer confusion with a Complainantís trademark or service mark does not establish rights or legitimate interests in a domain name on the part of a respondent. Adobe Systems, Inc. v. Domain OZ, WIPO Case No. D2000-0057; AltaVista Co. v. Yomtobian, WIPO Case No. D2000-0937.

The Panel finds that the Complainant has proven that the Respondent lacks rights or legitimate interests in the domain name.

Registered And Used In Bad Faith

The Respondent has registered a domain name which incorporates the Complainantís well known service mark FIRST UNION as the distinctive element of the domain name. The distinctive elements FIRST UNION are associated with the word banking, services associated with Complainantís service mark registrations. The web pages associated with the domain name in dispute include links to banking companies and financial companies offering services which are in competition with the Complainantís services. The web pages associated with the domain name in dispute include a representation of the Complainantís mark in a unique stylized or design format to create an impression of association or approval of the Respondentís service with the Complainant. The Respondentís activities on the website associated with the domain name in dispute constitutes bad faith under paragraph 4 (b) (iv) of the Policy. TPI Holdings Inc. v. Jason Guida WIPO Case No. D2000-0269.

The Panel finds that the Complainant has proven that the Respondent International Safekeeping AB has registered and used the domain name in bad faith.

 

7. Decision

For the foregoing reasons the Panel decides that pursuant to paragraphs 4 (i) of the Policy and 15 of the Rules, the registration of the domain name <firstunionoffshorebank.com> be transferred to the Complainant.

 


 

Ross Carson
Sole Panelist

Dated: January 3, 2004