WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Associated Banc Corp. v. Services LLC
Case No. D2007-0335
1. The Parties
The Complainant is Associated Banc Corp., Wisconsin, United States of America, represented by Reinhart Boerner Van Deuren s.c., United States of America.
The Respondent is Services LLC, Roseau, Dominica.
2. The Domain Name and Registrar
The disputed domain name <associatedbanc.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2007. On March 7, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On March 29, 2007, Moniker Online Services, LLC 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 12, 2007. 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 April 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2007.
The Center appointed J. Christopher Thomas, Q.C. as the sole panelist in this matter on May 23, 2007. 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. The Panel finds that it was properly constituted.
4. Factual Background
The Complainant, Associated Banc-Corp. is a banking institution that has used the ASSOCIATED BANK name in the United States of America since at least December 31, 1970, and on the internet since as early as 1999. It owns the domain names <associatedbank.com>, <associatedbank.net>, <associatedbank.org>, <associatedbank.info> and <associatedbank.us>. It also owns the United States trademark registration for ASSOCIATED BANK.
The Respondent registered the contested domain name <associatedbanc.com> on October 24, 2004. The Complainant became aware of this registration and found that the domain name directs users to a site that offers links to a variety of financial services companies in the United States of America. The Complainant sent a letter by email demanding that the Respondent transfer the name to it and received no reply.
5. Parties’ Contentions
The Complainant asserts that its trademark ASSOCIATED BANK is highly distinctive of its goods and services which range from banking and financing services to investment advice and estate trust management and insurance agency services, and that it has achieved a significant degree of consumer goodwill, recognition, and reputation in the marketplace.
The contested domain name is, in the Complainant’s view, confusingly similar to its trademark. The only difference between its trademark and the domain name is that the Respondent has changed the “k” to a “c”, which is a common misspelling of the Complainant’s mark.
It is contended further that the Respondent has no legitimate rights to the ASSOCIATED BANK trademark. The domain name directs the user to a site which lists financial services providers in the United States of America. It lists “Wisconsin” and “Green Bay”, where the Complainant is headquartered, and other states in which the Complainant does business. Each of the companies that link to or from the contested domain name is a competitor of the Complainant. Further, the site offers a link to “Associated Banc-Corp.” which resolves to <hoovers.com> which provides company information. In the Complainant’s view, the site is intended to take advantage of users who misspell its name and to create a false impression that an affiliation with the Complainant exists, when in fact, this is not the case.
The Respondent has not been authorized or licensed to use the Complainant’s trademark, nor has it ever conducted business under that trademark. The domain name is intended to misdirect persons who wish to visit the Complainant’s site.
It is contended further that the domain name was registered and is being used in bad faith. Taken together, the Complainant’s trademark, its five websites and the Respondent’s use of the domain name as a clearing area for financial services that compete with the Complainant’s business, indicates that the Respondent either knew or ought to have known of the Complainant’s trademark rights. It therefore had legal, if not actual, knowledge of the trademark prior to registering the contested domain name.
It is asserted that the Respondent is seeking to profit from those trademark rights and is using the domain name for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website. In addition, it is contended that the Respondent has registered the domain name either to sell it to the Complainant or to otherwise prevent it from registering the name. Accordingly, it has registered the domain name in bad faith and will use it in bad faith to the Complainant’s detriment.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by the Complainant under the Policy, it is necessary that the Complainant prove, as required by paragraph 4(a) of the Policy, in respect of the contested domain name, that:
(i) the contested 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 respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has carefully examined the contention that the contested domain name is confusingly similar to the Complainant’s trademark. It has been contended that the use of the letter “c” in place of “k” was intended to employ a common misspelling of “bank” so as to direct the user away from the “www.associatedbank.com” and related websites owned by the Complainant. The Panel would not find this to be dispositive of the point for the simple reason that the word “banc” has been intentionally used by other financial services providers, including the Complainant itself, and it is possible that a person might legitimately use the word “banc” in lieu of “bank”. Therefore, the word would not be a misspelling of the Complainant’s trademark but rather an intentional spelling of a name.
However, the fact that the Respondent has employed the contested domain name (which is the same as the Complainant’s trade name minus the word “Corp”) to direct users to U.S. financial services providers which compete with the Complainant in various states, including its home state of Wisconsin, adds the element of confusion to the contested domain name. It is hardly a matter of coincidence, in the Panel’s view, that the site resolves to competitors of the Complainant in the states in which it does business. The inference to be drawn from this is that the Respondent, aware of the fact that Associated Banc-Corp. did business in various U.S. states, chose a name that was similar to its trademark (and indeed to its trade name) in an attempt to confuse would-be users of the Complainant’s services and to divert them away to other would-be suppliers.
Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. There is no evidence of the Respondent’s 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.
The Respondent has no apparent connection with Associated Banc Corp., nor has it been licensed or authorized by it to use the disputed domain name. To the contrary, the Complainant has instructed it to cease and desist using the ASSOCIATED BANK mark. The disputed domain name is evidently not the Respondent’s name, and there is no evidence that the Respondent is commonly known by the disputed domain name. Nor is the Respondent making a legitimate non-commercial or fair use of the disputed domain name.
Given the use of the disputed domain name described above and in the absence of a rebuttal by the Respondent, the Panel agrees with the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a) (ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent’s domain name serves to divert users to the Complainant’s competitors. By employing a spelling of the word “bank” that is the same in terms of its phonetic pronunciation, one that is used by some financial services providers including the Complainant itself, and by adding that word to “Associated”, the Respondent is attempting to mislead consumers by diverting Internet traffic away from the Complainant’s websites for its own commercial gain. In the circumstances, the Panel concludes that the domain name was registered and used in 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 <associatedbanc.com> be transferred to the Complainant.
J. Christopher Thomas, Q.C.
Dated: June 6, 2007