WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fifth Third Bancorp v. Whois ID Theft Protection
Case No. D2006-1209
1. The Parties
The Complainant is Fifth Third Bancorp, Cincinnati, Ohio 45263, United States of America, represented by Graydon Head & Ritchey, LLP, United States of America.
The Respondent is Whois ID Theft Protection, West Bay, Grand Cayman, GT KY, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <fifththirdbanking.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2006. On September 20, 2006, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On September 21, 2006, Dotster, Inc. transmitted by email to the Center its verification response. In response to a notification that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 6, 2006. The Center verified that the Complaint together with the Amendment to 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 October 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2006.
The Center appointed Michael J. Spence as the Sole Panelist in this matter on November 15, 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 is a corporation providing banking services under the name Fifth Third Bancorp. It is based in Cincinnati, Ohio, United States of America. It is the registered proprietor of several registered trademarks incorporating the words FIFTH THIRD, not least the mark FIFTH THIRD BANK for banking services. Indeed, the service mark FIFTH THIRD BANK has been in continuous use since 1968. The Complainant is also the registrant of several domain names including the words ‘Fifth Third Bank’ and ‘Fifth Third Bancorp’.
The identity of the Respondent is protected by the “Whois ID Theft Protection” database. The Respondent registered the disputed domain name <fifththirdbanking.com> on November 26, 2005. The site operated under the domain name links directly to financial institutions in competition with the Complainant.
5. Parties’ Contentions
The Complainant argues that the disputed domain name is identical or confusingly similar to its registered trademarks; that the Respondent has no legitimate interest in the use of the domain name; and that the name was registered in bad faith. The relevant bad faith consists in either: (i) an attempt to divert customers of the Complainant to the Respondent’s site for the purpose of redirecting them to the sites of the Complainant’s competitors, presumably for profit, or (ii) an attempt to extort money from the Complainant for the transfer of the domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
There can be little doubt that the domain name is identical or confusingly similar to the trademarks of the Complainant. The Complainant is a “nationally known financial institution” and it is highly probable that potential customers would regard the trademark FIFTH THIRD BANK and the domain name <fifththirdbanking.com> as effectively identical. As the Complainant points out, this finding is supported by the decisions such as First Tennessee National Corporation v. R.S. Potdar WIPO Case No. D2002-0247 and Fifth Third Bancorp v. Ashley Khong WIPO Case No. D2005-1360.
The first element of a proceeding under paragraph 4(a) of the Policy is therefore made out.
B. Rights or Legitimate Interests
The Complainant bears the burden of establishing that the Respondent has no rights or legitimate interests in the use of the domain name. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions helpfully summarises the burden on the Complainant. It reads:
“If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a generic word(s). Factors a panel should look for when determining legitimate use would include the status and fame of the mark, whether the respondent has registered other generic names, and what the domain name is used for…”
In this case the Complainant has strong and longstanding goodwill in its marks, the similarity of the disputed domain name and the marks is considerable, and the domain name is being used to provide competing services in the same market sector as that in which the Complainant operates by exploiting the potential confusion created by the similarity of the marks. This establishes a strong prima facie case that the Respondent has no right or legitimate interests in the use of the disputed domain name that has not been rebutted in any way.
The second element of a proceeding under paragraph 4(a) of the Policy is therefore made out.
C. Registered and Used in Bad Faith
The Complainant bears the burden of establishing that the Respondent has registered and user the domain name in bad faith. Again the WIPO Overview of WIPO Panel Views on Selected UDRP Questions helpfully summarises the burden on the Complainant. It reads:
“The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
In this case the following all justify a finding of bad faith: the strength of the Complainant’s trademarks; the strong likelihood that the Respondent is exploiting the confusion created by the similarity of those marks and the disputed domain name (in either of the ways asserted by the Complainant); the Respondent’s failure to answer the Complainant; and the concealment of the Respondent’s identity. It is important to recognize that the site operated under the disputed domain name offers nothing by way of comment on the activities of the Complainant. The Panel finds that the website merely seeks to divert the Complainant’s potential customers, many of whom may continue to believe, having arrived at the Respondent’s site, that they are dealing with the Complainant. This is a clear case of bad faith registration.
The third element of a proceeding under paragraph 4(a) of the Policy is therefore made out.
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 <fifththirdbanking.com> be transferred to the Complainant.
Michael J. Spence
Dated: November 29, 2006