WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fifth Third Bancorp v. Secure Whois Information Service
Case No. D2006-0696
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 Secure Whois Information Service, Denver, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <fifththirdreward.com> is registered with Name.net LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2006. The Center requested registrar verification, first from Nameview Inc., which originally created the Domain Name, then from Finduaname.com, and finally (by email dated June 19, 2006) from Name.net LLC, which is the current Registrar.
On June 26, 2006, after multiple reminders from the Center, Name.net LLC transmitted by email to the Center its verification response stating, confusingly, that “the listed respondent is the domain name, <fifththirdreward.com>. This is a nonsensical statement. The Uniform Domain Name Dispute Resolution Policy (the “Policy”) does not contemplate in rem proceedings against a domain name as a kind of property, as in certain legal actions involving land or ships. The Policy provides instead a means of administrative dispute resolution between a trademark owner and the natural or juridical person who applied “to register a domain name” (see, e.g., Policy, paragraph 2). As indicated in the introduction to the Policy, note 3, the Policy “uses ‘you’ and ‘your’ to refer to the domain-name holder” in describing a respondent’s rights and obligations in registering and using a domain name and defending against a UDRP complaint. Thus, the holder of the Domain Name – the party that registered it, unless it has been transferred to another – is the proper Respondent in this UDRP proceeding.1
The Registrar in its verification response went on to list “Registrant Contact” details for “Secure Whois Information Service” at an address in Denver, Colorado. The same Denver address, telephone number, and email address are given as the administrative, billing, and technical contact. Based on this information, the Center notified the Complainant that the Complaint was administratively deficient (in naming FIFTHTHIRDREWARD.COM rather than Secure Whois Information Service as the Respondent). The Complainant filed an amendment to the Complaint on July 10, 2006, along with revised Annexes. The Center verified that the Complaint, together with the amendment to 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”).
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 July 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2006.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 31, 2006. 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 Complainant Fifth Third Bancorp is an Ohio corporation based in Cincinnatti. It was organized in 1975 as a bank holding company supervised by the United States Federal Reserve Board. The Panel notes that the Complainant appears in the Fortune 500 ranking of America’s largest corporations and that its stock is publicly traded on the NASDAQ stock exchange.
Through its subsidiaries, many of which use “Fifth Third,” “5/3,” or “53” in their names or service marks, the Complainant offers commercial banking and other financial services. It operates full-service banks in ten US states, and it offers credit and debit cards and Internet banking nationally. The Complainant has a significant Internet presence and nearly a score of domain names that incorporate the words “fifth third.”
The Complainant’s unusual name reflects its history. The current corporation is the successor to an Ohio bank formed early in the 20th Century from the merger of the Third National Bank and the Fifth National Bank. Banking operations have been conducted under the current form of the name, Fifth Third Bank, since 1969.
The Complainant and its predecessors have used FIFTH THIRD BANK as a service mark to brand banking services since 1968. The mark was registered by the United States Patent and Trademark Office (USPTO) on May 21, 1991 (Registration No. 1645502). The Complainant also obtained USPTO registration of FIFTH THIRD as a service mark for investment counseling and stock brokering on July 11, 2000 (Registration No. 2366546), showing first use in commerce in November 1998. In addition, the Complainant holds at least eleven other USPTO registered marks for financial services incorporating its “Fifth Third” name, including FIFTH THIRD PAYCARD, FIFTH THIRD FUNDS, and FIFTH THIRD TRANSACT.
Almost nothing is known about the Respondent, which did not submit a Response in this proceeding. As indicated in the Procedural History above, the current Registrar demonstrated some confusion in identifying the Respondent. The Respondent cannot be the Domain Name itself, as the Registrar suggested. Instead, the registrant seems to be identified in the Registrar’s “Registrant Contact” details as “Secure Whois Information Service.” This appears, by its name, to refer to a “proxy registration” service that offers a form of domain privacy. Such services are also characterized as “identity shielding” or “private registration” by some service providers. The point of proxy registration services is generally to avoid displaying in the registrar’s WHOIS database the contact information of the party that actually requested and paid for a domain name (hereafter referred to as the “real party in interest,” to adapt a convenient legal phrase). Such proxy registration services have become popular with the rise in automated harvesting of email and postal addresses and telephone numbers for purposes of email spamming, direct marketing by mail and phone, and also for fraud and identity theft.2
However, neither the Complainant nor the Panel has been able to locate online any company or proxy registration service named Secure Whois Information Service. Despite the Colorado address, the business search database operated by the Colorado Secretary of State shows no registered business name, trademark, or trade name matching the name given as the Domain Name registrant. Thus, the Respondent appears to be nothing more than a fictitious name, and not one registered to a legal entity.
The Domain Name was initially registered with NameView, Inc., a Canadian registrar, on October 28, 2005. NameView’s WHOIS database, according to a printout provided by the Complainant, showed the registrant as “Administrator, Domain” at NameView, Inc., with a contact email address in the “identityshield.com” domain. Nameview’s website advertises a “Free Identity Shield” with domain registrations. Thus, there is no evidence in the record as to the identity of the real party in interest that originally requested and paid for the Domain Name when it was created by NameView.
The Complainant provided a printout of the website to which the Domain Name resolved on May 1, 2006, which was headed “Welcome to fifththirdreward.com,” with the tagline “For resources and information on Reward Programs and American Express Points.” The website displayed links for various payment card and travel reward programs, including those offered by Chase, American Express, and Citibank, at least some of which directly compete with the payment cards and associated rewards programs offered by the Complainant. (See the Complainant’s website at “www.53.com”, which includes a page on “Fifth Third Rewards” describing points rewards and cash rewards for using credit or debit cards issued by Fifth Third Bank.) There is no indication of source on the website printout, except for a copyright notice at the bottom of the home page that attributes copyright to “fifththirdreward.com” – which does not appear to be a legal entity (see note 1, above).
On May 4, 2006, counsel for the Complainant sent an email to the contact address listed in WHOIS directory, referring to the Complainant’s FIFTH THIRD mark and demanding transfer of the Domain Name. There was no reply to this message, but on that same day the website was removed and, as NameView subsequently reported to the Center, its unnamed “client” requested that the Domain Name be “deleted.”
The Domain Name must have been registered with some registrar after May 4, 2006, however, because the Complainant provided a printout dated May 31, 2006, of the website to which the Domain Name resolved at that time. This was simply a page headed “This service is currently unavailable,” followed by text stating, “Our team is working to restore service as quickly as possible. Please try your request later.”
The Domain Name was then registered with Name.net LLC, the current Registrar, on June 14, 2006. The Registrar’s WHOIS database shows the registrant, administrative, technical, and billing contacts all as “Secure Whois Information Service, DNS Admin, [street/address], Denver, CO 80230, US,” with a Denver telephone number and the email address “[email address]@whoisinfosecure.com.” The domain <whoisinfosecure.com> is registered to Spot Domain LLC, and the Panel notes that the same postal address and telephone number are listed on the website “www.domainsite.com”, operated by Spot Domain LLC, which offers domain name registration and web hosting services, including a “Hidden Whois” service. According to state databases, Spot Domain LLC is a Wyoming company registered in Colorado since 2003 as a “foreign limited liability company” and located at that address. The Panel also notes that the WHOIS database shows the same postal address for “Name.net LLC” (the current Registrar) as the registrant of <name.net>. Finally, the Colorado business search database lists Name.net LLC as a foreign limited liability company formed in 2004 and registered to do business at the same Denver address, and with the same registered agent, as shown for Spot Domain LLC.
Thus, it appears likely that the Registrant “Secure Whois Information Service” is in fact an unregistered trade name used by the Registrar, Name.net LLC, or by the apparently related Spot Domain LLC, both at the same address and both advertising proxy domain registration services.
While the real party in interest remains anonymous, the Domain Name currently resolves once more to a website displaying links to other websites advertising third-party products and services, with an emphasis on cash rewards, travel awards, credit cards, and financial services. The website is headed “Fifththirdreward.com” and bears no indication of its source. Pop-up advertisements delivered by “revenue.net” appear repeatedly while visiting the website.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to its registered FIFTH THIRD, FIFTH THIRD BANK, and other marks incorporating the name “Fifth Third.” It has not given the Respondent permission to use these marks, and it has not discovered any legitimate interests that the Respondent might have in these marks. To the contrary, the Complainant contends, the Respondent has used a Domain Name similar to the Complainant’s famous marks in bad faith to redirect Internet visitors to the websites of competitors and other third parties, presumably for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under Paragraph 15(a) of the Rules,
“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.”
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
“(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.”
As in other cases where a respondent fails to reply to a UDRP complaint, the Panel must still satisfy itself that the Complainant has met its overall burden of proof under paragraph 4 of the Policy. Thus, the uncontested facts, supported by plausible evidence, must provide a sufficient prima facie basis for finding confusing similarity with the Complainant’s mark(s) and then for inferring that, more probably than not, the Respondent has no right or legitimate interest in the Domain Name and has registered and used it in bad faith. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
A. Identical or Confusingly Similar
FIFTH THIRD is indisputably a registered service mark owned by the Complainant. The Complainant also holds a dozen other registered marks incorporating the words “Fifth Third,” which are the distinctive portion of its company name.
The Domain Name includes the FIFTH THIRD mark in its entirety and adds a generic word, “reward,” which does not lessen the likelihood of confusion. Rather, in this instance it heightens the likelihood of confusion, since the Complainant offers its own well-advertised rewards programs. See, e.g., Microsoft Corporation v. Wayne Lybrand, WIPO Case No. D2005-0020 (the addition of generic words to a distinctive mark normally does not avoid confusion, especially when the generic word is relevant to the trademark owner’s products or services, as was found to be the case with <microsoftcustomerservice.com>).
The Panel finds that the Domain Name is confusingly similar to the Complainant’s registered FIFTH THIRD marks.
B. Rights or Legitimate Interests
The Complainant states, without contravention, that it has no relationship with the Respondent and has not authorized the Respondent to use the FIFTH THIRD mark.
The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you 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 (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 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 is no evidence that the Respondent – or either of the companies at the same address, Name.net LLC and Spot Domain LLC, that may have operated a proxy registration service with the name attributed to the Respondent – was ever commonly known by the Domain Name or has used it in offering goods or services. From the available record and a review of the websites to which the Domain Name resolves or formerly resolved, there is no apparent noncommercial use of the Domain Name. Rather, the Domain Name resolves to a website that advertises the products and services of third parties, for which the Panel must assume that someone receives click-through and pop-up advertising revenues. Assuming there is an anonymous real party in interest, he, she, or it has not come forward to rebut the Complainant’s contentions and assert a legitimate use of the name.
Therefore, the Panel finds that the Complainant has satisfied the second element of the UDRP Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), sets forth a non-exhaustive list of circumstances indicating bad faith. The Complaint relies on one of these - Policy, paragraph 4(b)(iv):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
Such an intention can very plausibly be inferred in this case from several undisputed facts:
* The FIFTH THIRD marks are famous, long-established, and registered in the United States, where the Respondent is purportedly located (see also Fifth Third Bancorp. v. Domain Active Pty. Ltd., WIPO Case No. D2003-0884);
* The Complainant is a publicly traded, Fortune 500 company with a national as well as regional customer base;
* The Complainant offers a payment card rewards program, and the Domain Name adds the word “reward” to the Complainant’s FIFTH THIRD mark;
* The Domain Name resolves to a website advertising financial services and rewards programs offered by the Complainant’s competitors.
Thus, it is more likely than not that the unknown real party in interest who requested and paid for this Domain Name in June 2006, was aware of the Complainant’s financial services business and sought to take advantage of the fame of the Complainant’s FIRST THIRD mark. The Respondent has not come forward with an alternative explanation for its choice of the Domain Name to rebut this presumption.
There is additional evidence suggesting that the real party in interest had actual knowledge of the Complainant’s trademark claim when the current domain registration was effected. The Complainant’s counsel sent its cease-and-desist email on May 4, 2006 to the registered contact email address for the Domain Name, a proxy registration service offered by the original registrar. On the same day, the website was removed and the unnamed client of the proxy registration service asked the registrar to “delete” the Domain Name, according to the registrar. It appears that the real party in interest was made aware of the Complainant’s demand and acted on it by removing the website and then successively re-registering the Domain Name with at least two other registrars over the course of the next five weeks, ultimately pointing the Domain Name again to a commercial website advertising competing services. Because of the proxy registrations, the Panel cannot be certain that the party behind the current registration is the same as the original real party in interest, but the timing and evasive conduct strongly suggest that the Domain Name was registered anew on June 14, 2006, by a person with knowledge of the Complainant’s trademark claims and transfer demand.
“Cyberflying” is the term used to describe an attempt to avoid or delay judicial or UDRP proceedings by changing domain registration details or registrars after learning of a complaint.3 The Panel agrees with the conclusion of other UDRP panelists that this conduct is itself an indication of bad-faith registration and use under Paragraph 4(b) of the Policy. See Kirkbi AG v. Company Require / Karlina Konggidinata and Pool.com, Inc., WIPO Case No. D2004-0359; British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683. The Panel finds evidence of cyberflying in this case, where a flurry of de-registration and re-registration immediately followed the Complainant’s cease-and-desist email. Although the conduct here may not technically violate Paragraph 8(a) of the Policy (prohibiting domain transfers during a pending administrative, court, or arbitration proceeding), it does support a conclusion of bad faith, as it is consistent with a pattern of evasion and non-responsiveness for which the Respondent has offered no explanation.
Similarly, the failure of the Respondent (or of the real party in interest) to reply to the Complainant’s cease-and-desist email or to respond to the Complaint in this proceeding supports an inference of bad faith. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
The use of a proxy registration service to avoid disclosing the name and coordinates of the real party in interest is also consistent with an inference of bad faith in registering and using the Domain Name, given the other evidence in this case of evasive and irresponsible conduct. This is not to say, of course, that proxy registration is necessarily a sign of illegitimate purpose. “Domain privacy” is an understandable objective, particularly for individuals who do not want to have their physical and electronic addresses exposed on the Internet.4 However, ICANN policies are designed to preserve accountability for unlawful acts on the Internet, including the UDRP for resolving claims of abusive domain name registrations. A balance between domain privacy and accountability might be achieved by listing the actual registrant’s name with a proxy service’s mail-forwarding address, which is what some proxy service providers offer. Other proxy service providers list the domain in their own name but provide, by contract, that the domain reverts to the real party in interest in the event of a claim. Some service contracts also expressly provide that the proxy service provider may disclose the name and address of the real party in interest to a court, arbitrator, or administrative panel.
Even with such provisions, proxy registration can be abused by cybersquatters, as the panel concluded in Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311 (finding bad faith on the part of the proxy service provider as well as by the real party in interest):
“finally the Panel cannot disregard the fact that, since the kind of service offered by the Registrar and the Respondent, which allows registrants to obtain domain names with anonymous contact information, encourages Cybersquatting, the Respondent, being informed of a trademark violation, should use best endeavours to support the UDRP system and the injured trademark owners. On the contrary, besides the attempt of Cyberflying, the Respondent covered the true owner of the Domain Name, engaged in Cybersquatting, disclosing false contact details and thus obstructing the UDRP system.”
In the current proceeding, whoever is behind the fictitious registrant name has similarly acted irresponsibly, first in providing incomplete registrant details5 and then in concealing the real party in interest when a trademark infringement claim was asserted and when a UDRP proceeding was initiated. Whether or not these legal notices were forwarded to the party that requested and used the Domain Name, the service named in the registration details is the registered name holder and as such bears legal responsibility for the registration and use of the domain name in contravention of the Policy, unless it “promptly discloses” the identity of its licensee. See ICANN Registrar Accreditation Agreement (RAA), section 22.214.171.124 (May 17, 2001, as amended through 2006, available online at “www.icann.org/registrars/ra-agreement-17may01.htm)”:
“Any Registered Name Holder that intends to license use of a domain name to a third party is nonetheless the Registered Name Holder of record and is responsible for providing its own full contact information and for providing and updating accurate technical and administrative contact information adequate to facilitate timely resolution of any problems that arise in connection with the Registered Name. A Registered Name Holder licensing use of a Registered Name according to this provision shall accept liability for harm caused by wrongful use of the Registered Name, unless it promptly discloses the identity of the licensee to a party providing the Registered Name Holder reasonable evidence of actionable harm.”
In this case, the unknown party who requested and paid for the Domain Name used a Registrar that listed the Domain Name itself as the “respondent” and provided “registrant contact” details listing only what is apparently a fictitious name for a service offered by an unnamed legal entity. This form of proxy registration simply amounts to a failure to identify any legally responsible party – a feature shared with many cybersquatting cases involving fictitious registrant data. Neither the Complainant nor the Panel in this case have been able to find a legal entity, website, or published agreement using the name of the service that is listed in the registrant contact details. And neither the operator of that service nor the client of that service, the real party in interest, has responded to the cease-and-desist email from the Complainant or to notices from the Center and the Complainant about this UDRP proceeding. Given the covert nature of the registration – disclosing neither the name of the service provider nor of the real party in interest – and the lack of any substantive response to the Complainant’s claims, the inference of bad faith is strengthened.
Taken together, the Panel finds sufficient facts in evidence to conclude that the Domain Name was registered and used in bad faith, satisfying the third element of the UDRP Complaint.
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 <fifththirdreward.com> be transferred to the Complainant.
W. Scott Blackmer
Dated: September 14, 2006
1 In some cases a domain name, including the top-level domain such as “.com,” is also the exact name of the legal entity that registered it. Here, however, there is no evidence in the record of any legal entity called “FIFTHTHIRDREWARD.COM,” and that name is not registered as a business entity or trade name in Colorado, the state indicated in the “Registrant Contact” details provided by the Registrar.
2 See, e.g., the Wikipedia entry on “Domain Privacy” at http://en.wikipedia.org/wiki/Domain_privacy and citations therein.
3 See, e.g., DomainesInfo, Cyberflying, “www.domainesinfo.fr/definition/138/cyberflying.php”.
4 The ICANN Generic Names Supporting Organization (GNSO) is currently examining WHOIS data elements and the relationship between registered contact requirements, on the one hand, and privacy laws and interests on the other (see comments and reports published at http://gnso.icann.org). In the interim, of course, UDRP panels must continue to evaluate complaints under the Policy based on the current rules and whatever evidence is available concerning the identity and purpose of the registrant.
5 ICANN-accredited registrars are obliged by RAA section 3.7.7 to include in their registration agreements a requirement that registered name holders submit “accurate and reliable contact details and promptly correct and update them” (RAA sec. 126.96.36.199). These details are to include the full name, postal and email addresses, and telephone number of the registered name holder, and the name of a contact person in the case of an organization. Failure to comply can result in cancellation of the domain name (RAA sec. 188.8.131.52). Even assuming the registration here was made in the name of a proxy registration service related to the Registrar, the registration is deficient in failing to identify the legal name holder and its contact person.