WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
UPIB, Inc. v. Domains Asia Ventures
Case No. D2004-0020
1. The Parties
The Complainant is UPIB, Inc., Bermuda, United Kingdom of Great Britain and Northern Ireland, represented by Wyatt, Tarrant & Combs, United States of America.
The Respondent is Domains Asia Ventures, Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <unionplantersmortgage.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 12, 2004. On January 13, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On January 14, 2004, iHoldings.com Inc. d/b/a DotRegistrar.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 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 January 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on February 13, 2004.
The Center appointed Martine Dehaut as the sole panelist in this matter on February 18, 2004. 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 non-contradicted evidence submitted by Complainant, resulting from the complaint and the annexed documents, such as the Affidavit of Dale W. Langefeld, President of UPIB, Inc., is as follows:
- Complainant owns pending United States Trademark Application No. 76/425,468 filed on June 24, 2002, for the mark UNION PLANTERS BANK for "banking services," which has been used since 1929 through its exclusive licensee Union Planters Corporation and its subsidiaries and affiliates.
- Union Planters Corporation has a total asset of more than $32 billion and ranks among the thirty largest bank holding companies in the United States.
- Union Planters Corporation is the owner of United States Trademark Application No. 2264813 filed on June 1, 1998, for SOLUTION: UNION PLANTERS BANK for "banking services," which has been used since 1997.
- Union Planters Bank, N.A. is Union Planters Corporationís principal subsidiary and operates more than 730 banking offices in twelve states in the United States.
- One division of Union Planters Bank, N.A. is Union Planters Mortgage, which has used the trademark UNION PLANTERS MORTGAGE since at least 1987.
- As a result of the extensive advertising and promotion of the UNION PLANTERS MORTGAGE mark, the extensive sales of financial services under this mark, and the substantial time the UNION PLANTERS MORTGAGE mark has been in use, Complainant asserts that it is the owner of common law rights on this trademark, which is widely recognized by consumers and those in the trade.
- In the Fall of 2003, the Complainant became aware that the Respondent had registered the domain name <unionplantersmortage.com>, and used it to point to a search engine website entitled "Try the Top Searches on the Web!"
- The cease-and-desist letter sent to the Respondent on September 26, 2003, was returned as undeliverable. An e-mail copy of this letter was also sent to the Respondent.
- The Respondent never responded to the cease-and-desist letter.
- Later, the Respondent made a change to its website, which began providing links to five sites entitled "Mortgage Ė Find it the easy way," "Bad Credit OK Ė Find the Lowest Refinancing Rates," "Free Loan Evaluation!", "Refinance-Great Rates-Any Credit History!", and "Union Planters Mortgage-Free Mortgage Rate Quotes."
- Respondent is using the UNION PLANTERS MORTGAGE mark for a website that advertises the services of Union Planters Bank, N.A.ís competitors.
- Complainant has never given permission to the sponsors of those five sites to use any UNION PLANTERS mark.
5. Partiesí Contentions
Identity or Confusing Similarity
The <unionplantersmortage.com> domain name is identical to the common law mark UNION PLANTERS MORTGAGE.
The Complainant has rights in the UNION PLANTERS MORTGAGE trademark since Union Planters Bank, N.A. has used this trademark to offer a wide variety of mortgage financing options to its Clients since at least 1987. See Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141.
Union Planters Bank, N.A.ís usage of the UNION PLANTERS MORTGAGE mark long predates Respondentís registration of the <unionplantersmortage.com> domain name.
Rights and Legitimate Interest
Complainant never assigned, licensed or granted permission to Respondent to commercially utilize its UNION PLANTERS MORTGAGE trademark or any other trademark that incorporates the famous UNION PLANTERS mark.
Respondent was put on notice of the dispute before he made any use of the domain name in connection with a bona fide offering of goods or services; further to the sending of the cease-and-desist letter dated September 26, 2003, Respondent made changes to the UNION PLANTERS MORTGAGE website that now advertises the services of Union Planters Bank, N.A.ís competitors. Such a use does not constitute a bona fide offering of goods or services.
Neither Respondent nor his business have been commonly known by the domain name: Respondentís name allegedly is Domain Asia Ventures and not "Union Planters." Despite having no connection to Complainant or Union Planters Bank, N.A., and despite being located in China, Respondent has chosen to incorporate Complainantís English-language mark into its domain name. See Michael Andretti v. Alberta Hot Rods, FA99084 (NAF 10/4/01).
Respondent has not made a legitimate non-commercial or fair use of the domain name. Instead, he has used the domain name to misleadingly divert consumers: Respondent has always used the domain name for illegitimate commercial purposes. Initially it used the domain name for an unnamed Internet search engine that had no relationship whatsoever to Complainant or Union Planters Bank, N.A.. Only after being notified of this dispute, did Respondent attempt to use the domain name for financial services. Moreover, the financial services are not ones offered by Union Planters Bank, N.A. Instead, they are financial services offered by some of Union Planters Bank, N.A.ís competitors. The mere fact that Respondent adopted Complainantís trademark for its domain name is proof that Respondent intended to misleadingly divert consumers. See Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415.
According to Complainantís assertions, Respondent was well aware of Union Planters Bank, N.A. at the time it registered the domain name <unionplantersmortage.com>, since (1) the UNION PLANTERS mark had been in use for almost seventy-five years prior to Respondentís registration of the domain name, and (2) the bank using the UNION PLANTERS mark had grown into one of the largest in the United States. The long-term and widespread use of the UNION PLANTERS and UNION PLANTERS MORTGAGE marks is proof that Respondent knew the marks before it registered <unionplantersmortage.com> and that it acted in bad faith. See Peter Frampton v. Frampton Enterprises, Inc. WIPO Case No. D2002-0141.
Another proof of Respondentís bad faith is that it is using the domain name to offer the same type of services as offered by Union Planters Bank, N.A. Given the prominent use of the UNION PLANTERS MORTGAGE mark in the domain name and on the website, consumers might readily believe that the website is sponsored by, endorsed by or affiliated with Union Planters Bank, N.A. The fact that Respondent (and its advertisers) wish to profit from this confusion is evidence of bad faith registration and use of the domain name. See Michael Andretti v. Alberta Hot Rods, FA99084.
Finally, Respondentís false address is further proof of its bad faith registration of the domain name. See Ticketmaster Corporation v. Dotsan, WIPO Case No. D2002-0167.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
In accordance with 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.
In accordance with Paragraph 14(b) of the Rules, the panel shall draw such interferences as it considers if a party, in the absence of exceptional circumstances, does not comply with the provisions of the Rules.
Under Paragraph 4(a) of the Policy, the complainant must establish 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;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name;
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Two issues must be addressed: does the Complainant have a trademark right, and is the domain name identical or confusingly similar with said trademark?
As regards the first question, the Panel notes that, although two pending and registered US trademarks are quoted and evidenced in the Complaint, the only trademark invoked by the Complainant for the purpose of the comparison with the domain name is UNION PLANTERS MORTGAGE. Accordingly, for the purpose of comparing the signs, the Panel will only assess the existence of a trademark right over UNION PLANTERS MORTGAGE.
The wording of Paragraph 4(a)(i) of the Rules has been interpreted, in many decisions in the past, to include both registered and common law marks. In order for a complaint to succeed on a common law mark, the Complainant must demonstrate that the mark has been in continuous use, and that it has achieved secondary meaning (distinctive character) in association with the complainant. See FleetBoston Financial Corporation v. Albert Jackson, WIPO Case No. D2003-0915.
As evidence of the existence of common law rights over the trademark UNION PLANTERS MORTGAGE, attached to the Complaint is the affidavit of Mr. Dale W. Langefeld, which states that trademark UNION PLANTERS MORTGAGE has been used by a subsidiary company of the Complainant in connection with a full range of mortgage products, since 1987, in the United States. According to Mr. Langefeld, these products are offered through the offices of Union Planters Bank, and trademark UNION PLANTERS MORTGAGE is "widely recognized by consumers and those in the trade."
Although more concrete evidence might have been filed with the Complaint, the Panel is satisfied that the affidavit of Dale W. Langefeld constitutes prima facie evidence of the Complainantís rights over the trademark UNION PLANTERS MORTGAGE in the United States. Trademark UNION PLANTERS MORTGAGE has been used continuously since 1987, and appears to be a distinctive trademark. In addition, the Respondent has not objected the existence or validity of the trademark right of the Complainant.
As regards the second question, the Panel finds that the disputed domain name is identical to the Complainantís unregistered trademark UNION PLANTERS MORTGAGE. The addition of the generic top level domain extension ".com" does not render the signs non-identical. See Caracol Primera Cadena Radial Colombiana S.A. v. ABCSites, Inc., WIPO Case No. D2003-0880.
B. Rights or Legitimate Interests
In compliance with the wording of Paragraph 4(a)(ii) of the Policy, the Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the domain name at issue.
However, in view of the difficulties linked with the probatio diabolica, it is sufficient for the Complainant to establish prima facie evidence showing that none of the three circumstances listed in Paragraph 4(c) of the Policy, and which could demonstrate the Respondentís rights to and its legitimate interest in the domain name, applies.
Paragraph 4(c)(i) of the Policy, use of the domain name by the Respondent in connection with a bona fide offering of goods or services.
According to the evidence annexed to the Complaint, before receiving the cease-and-desist letter sent by the Complainant, the Respondent was using its website as a search engine, without any connection with financial services. Such a limited use of the domain name does not establish a bone fide offering of goods or services under trademark UNION PLANTERS MORTGAGE.
Paragraph 4(c)(ii) of the Policy, the Respondent commonly known by the domain name.
The Complainant has duly observed that it has no direct relationship or any kind of relationship with the Respondent.
Paragraph 4(c)(iii) of the Policy, legitimate and non commercial use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has demonstrated that, further to the sending of its cease-and-desist letter to the Respondent by electronic means, the latter has used the domain name as a portal in connection with mortgages. The webpage, as used presently, is likely to divert consumers of UNION PLANTERS MORTGAGE to other financial institutions.
Once the Complainant has established prima facie evidence of the absence of right or legitimate interest of the Respondent in the domain name, the burden is to the Respondent to invoke that any of the none-exhaustive circumstances referred to in Paragraph 4(c) applies. The Respondent has failed to make any allegations in response to this complaint and, in accordance with Paragraph 14(b) of the Rules, the Panel concludes that the Respondent has no right or legitimate interest in the domain name at issue. See Aventis Pharma, Inc., Merrell Pharmaceuticals, Inc. v. Connor Trip, WIPO Case No. D2003-0956.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates a number of non-exhaustive circumstances which may evidence the registration and use of a domain name in bad faith.
Firstly, the Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website (Policy, Rule 4 (b) (iv)). A likelihood of confusion may occur if a potential consumer, when entering the domain name of the Respondent, believes that the domain name is connected with the Complainant. The Panel is satisfied that the Respondent has attempted to create such a confusion as to the potential relationship between the Complainant and the website. The Respondent has not shown any right or legitimate interest in the domain name, and any potential consumer, when typing in the domain name <unionplantersmortgage.com>, would expect to reach a site linked with the Complainant or any of its affiliated companies. Accordingly, the Panel concludes that the Respondent has attempted to attract Internet users to its website by creating a likelihood of confusion with the Respondentís mark.
Secondly, the Complainant contends that the Respondent is acting in bad faith as it is using the domain name to offer the same type of services as offered by the Complainant. It appears, from the evidence filed, that although the Respondent is not directly offering mortgage services to potential consumers in its website, this latter is used as a portal which offers links to the sites of competitors that might offer identical services. Accordingly, the Panel is convinced that the Respondent has also acted in bad faith by using the domain name, indirectly, to offer the same type of services as offered by the Complainant, taking advantage of the Complainantís reputation for personal benefit.
Moreover, according to the copy of the website of the Respondent, which was filed with the Complaint, it appears clearly that the Respondent also uses the domain name at issue for the purpose of disrupting the business of the Complainant. Indeed, the website is used as a portal in the field of mortgages, and therefore offers links with competitors that may market the same type of services. Such a use of the domain name, which started once the cease-and-desist letter of the Complainant presumably reached the Respondent, is also clear evidence, in the Panelís view, of bad faith. See Just Jeans Group Limited v. Domain Trade, WIPO case No. D2000-1821.
Accordingly, in the absence of any convincing alternative explanation by the Respondent, the Panel finds that the domain name at issue is used in bad faith.
This conclusion can be supported by the fact that, apparently, the street address provided by the Respondent is false, as the cease-and desist letter sent via courier, by the Complainant, was returned as undeliverable. Past cases, such as United Parcel Service of America, Inc. v. Shipping Administration, WIPO Case No. D2002-1162 have found that the provision of false contact details can be an indicator of bad faith.
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 <unionplantersmortgage.com> be transferred to the Complainant.
Dated: March 3, 2004