WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fifth Third Bancorp v. Statistical Research Consulting
Case No. D2012-1801
1. The Parties
Complainant is Fifth Third Bancorp of Cincinnati, Ohio, United States of America, represented by Graydon Head & Ritchey, LLP, United States of America.
Respondent is Statistical Research Consulting of New York, New York, United States of America, representing itself.
2. The Domain Name and Registrar
The disputed domain name <curiousbank.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2012. On September 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 20, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on September 21, 2012. On October 5, 2012, Respondent requested an extension of time for its Response. Complainant objected to this extension request; however, the Center granted a 5 day extension to Respondent. Respondent then requested an additional extension. While the Center was seeking comment from Complainant on this additional extension request, Respondent filed its Response with the Center on October 15, 2012. The Center received a very brief supplemental email from Complainant on that same date, and Respondent submitted a responsive supplemental email on October 18, 2012.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on November 14, 2012. 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
Complainant is an Ohio corporation organized in 1975 as a bank holding company under the Bank Holding Company Act of 1956, as amended, with its principal office located in Cincinnati, Ohio.
Complainant owns a number of trademarks and service marks in the United States for general banking services and a variety of other financial products and services.
Complainant filed a federal trademark application for THE CURIOUS BANK service mark on November 3, 2011, for the Principal Register. This mark was published for opposition on April 17, 2012, and was not opposed by anyone, including by Respondent. On August 16, 2012, Complainant filed a Statement of Use with the United States Patent and Trademark Office (“USPTO”), declaring that first use of THE CURIOUS BANK mark was at least as early as February 27, 2012. Complainant filed for THE CURIOUS BANK mark in connection with banking and financial services, including money lending, credit card services, investment brokerage and management account services, mortgage lending services, electronic payment services, financial information services, trust management account services, cash management account services and stock brokerage services.
Complainant registered <thecuriousbank.com> on June 26, 2012, which currently links to Complainant's main website.
Respondent registered the Domain Name on March 22, 2012.
5. Parties’ Contentions
Identical or Confusingly Similar:
Complainant contends that it has legitimate rights in THE CURIOUS BANK service mark regardless of the fact that the registration has not yet issued. Complainant explains that it anticipates the federal registration of the trademark will issue within the next few weeks. While Complainant's preference would have been to wait until receipt of registration of the mark to file this Complaint, Respondent threatened to transfer the Domain Name to a third party in the short term, as discussed below.
Complainant claims it has common law rights in THE CURIOUS BANK mark because it has been continuously using the mark in commerce since at least February 27, 2012, as stated in Complainant's declaration filed with the USPTO on August 16, 2012. Since February, all of Complainant's services have been marketed and sold with this mark as the overarching theme behind Complainant's business. Complainant's primary point-of-sale website, “www.53.com”, shows use in commerce of the mark in the title and header information for the website. Further, an article published by PRNewswire (among others), on February 27, 2012, discussed Complainant's launch of the use of THE CURIOUS BANK mark by a campaign of television commercials, radio, print, online advertising, and digital out-of-home. Further, the mark is distinctive such that Complainant has legitimate rights for purposes of the UDRP. The USPTO trademark examiner found the mark to be distinctive by approving the mark for publication to register in the Principal Register, which requires that the mark be considered distinctive. The fact that the examining attorney approved the mark to proceed to publication for ultimate registration in the Principal Register should be given weight as a finding of distinctiveness. Thus, even though the registration has not yet issued (but is imminent) the mark has become a distinctive identifier of Complainant and Complainant has established its legitimate rights in THE CURIOUS BANK mark.
Respondent registered the Domain Name on March 22, 2012. As of August 28, 2012, any customer or potential customer of Complainant attempting to locate Complainant online at “www.curiousbank.com”, which is nearly identical to Complainant's mark, was directed to a "parking place" website. The website had no relationship to Complainant or its operations. However, from that main page, a user could click on various links purporting to be banking related, such as "Savings Account" or "Checking" on online banking. Each of those sub-linked pages then provided links to competitors of Complainant. As of September 5, 2012, the website changed and is merely a holding page.
The Domain Name is confusingly similar and nearly identical to Complainant's THE CURIOUS BANK mark. The only difference, which is immaterial, is Respondent's removal of the word "THE." The removal of the generic term "the" is not sufficient to distinguish the Domain Name from Complainant's mark. The Domain is, therefore, confusingly similar in all material aspects to Complainant's Mark.
Rights or Legitimate Interests:
Complainant contends Respondent has no rights or legitimate interests in respect of the Domain Name. The website linked to the Domain Name currently has no material content, linking only to a holding page that says the site is under construction. The site thus makes no offering of any goods or services, let alone a bona fide offering, and has no content that would otherwise demonstrate a legitimate noncommercial or fair use. Until approximately September 4, 2012, the site presented itself as a banking-related parking site with links to sites of Complainant's competitors. Complainant asserts it is well-established that operating a link-farm parking site using a distinctive trademark in a domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish rights or legitimate interests under the Policy. There is no indication that there is any preparation for a bona fide offering of goods or services. Respondent is in no way associated with Complainant and has never sought, nor received permission, to use Complainant's mark. For these reasons, it is plain that Respondent has no rights or legitimate interests with respect to the Domain Name.
Complainant explains that its counsel has been in communication with Respondent, who claims to be the registrant of the Domain Name. Complainant states that Respondent has never claimed to have legitimate rights to the mark or terms “The Curious Bank” or “Curious Bank”. In response to an email from counsel dated August 2, 2012, Respondent responded on August 10, 2012, that "all I did was to register a common generic phrase." He further stated that he is "planning to link the domain to generic video in Asia as part of an ad system." Thus, Respondent has admitted to having no legitimate interest in the mark or the Domain Name. He has repeatedly told Complainant that he is willing to transfer the Domain Name to Complainant for a high price, or he is going to transfer it to someone else. This is further evidence that Respondent does not have legitimate rights or interests in the Domain Name.
Registered and Being Used in Bad Faith:
Complainant states that Respondent registered the Domain Name and is using it in bad faith in violation of Paragraph 4(b) of the Policy. Respondent registered the Domain Name on March 22, 2012, approximately one month after Complainant launched its campaign using the mark, and approximately five months after Complainant filed its application to register the mark. Just four days after registration of the Domain Name, Respondent began contacting Complainant’s employees and representatives to try to sell the Domain Name to Complainant. He made multiple attempts to reach someone at Complainant with whom he could have such conversations. He was directed to Ms. Katz, leaving her at least one voice message on March 26, 2012, claiming he had acquired the Domain Name "some time ago" despite his registration date of March 22, 2012, and wanting to know whether Complainant had an interest in "acquiring" the Domain Name from him prior to Respondent putting it up for sale in Manhattan.
Respondent also contacted Ms. Scotney, trademark counsel for Complainant and whose contact information is available from the USPTO application documents, inquiring whether Complainant had an interest in acquiring the Domain Name from him. Similarly, he contacted Ms. Smith, trademark counsel for Complainant other marks and whose contact information is also publicly available through the USPTO. He called himself a "domain name broker' and also inquired from Ms. Smith whether Complainant had any interest in acquiring the Domain Name.
At the end of July 2012, Complainant directed Respondent to contact Complainant’s representative (now serving in this case) to discuss the Domain Name. He did so by telephone call to Mr. Greiner, an attorney at Complainant’s Representative’s firm. On July 31, 2012, Respondent told Mr. Greiner that he would transfer the Domain Name for USD 70,000. Mr. Greiner referred him to Complainant’s co-counsel, Ms. Cole, since Mr. Greiner was going to be out of the office. Notably, Respondent refused to provide any contact information for himself in any of the above-stated contacts so that no one could return any of his phone calls.
Respondent first called and spoke to Ms. Cole on August 1, 2012. In that conversation, he stated that he would transfer the Domain Name to Complainant for USD 50,000 to USD 70,000. He stated that if Complainant did not "care about this domain name," then he would transfer it to a Chinese or Indian contact that had allegedly made him an offer. He said that he would call back to get Complainant's response, but he also provided an email address. He would not provide a telephone number and called from an anonymous number. On August 2, 2012, Ms. Cole sent Respondent an email stating that Complainant was refusing his USD 50,000 to USD 70,000 demand and providing a brief statement of Complainant's position. On August 3, 2012, Respondent called Ms. Cole wanting to see if Ms. Cole "had any definitive numbers" from Complainant. He further stated that he had "some definitive numbers from other people" so he "wanted to compare [his] number with whatever numbers you may have and see if there's any way we can do business." He further stated, "If not, that's all I need to know." He did not leave a call-back number but said he would try again. Respondent called again the same day and stated that he had not yet checked his email. Ms. Cole told Respondent that Complainant would not pay anything near his USD 50,000 to USD 70,000 price and was evaluating its other options. In that call, Respondent threatened protracted litigation if Complainant filed any sort of claim. Yet, he stated that he would call back again to determine whether Complainant would make an offer. Ms. Cole stated that if Complainant decided to make an offer, it would be for only a couple thousand dollars at most. Respondent responded that such an offer would be a "joke." On the same day, he called back and left a voice message, claiming that Complainant, Ms. Cole and Ms. Cole’s law firm may be subject to criminal charges if they proceeded with any type of claim.
On August 10, 2012, Respondent responded to the August 2, 2012, email claiming he had "not demanded one cent from anyone at any time." He also wrote, "I am planning to link the domain to generic video in Asia as part of an ad system. I have other generic domains working this way." He again threatened criminal liability if Complainant chose to proceed with a claim against him, writing, "I also remain open to a possible legal confrontation, where charges of grand theft by yourself and/or client could occur; owing to the tangible nature of this domain." On August 17, 2012, he left another voice message, stating that he was "going to try, I repeat try, to redirect or forward the domain name at issue in a way that would send it out to the Asian video content within the next 6 to 10 days." On August 28, 2012, Respondent called Ms. Cole again. She asked if he was still looking for USD 50,000 to USD 70,000 for transfer of the Domain Name. He said he was looking for an offer "well above a few thousand dollars." He said a "five-figure" proposal was something he would consider.
Complainant contends that paragraph 4(b)(i) of the Policy provides that sufficient evidence of bad faith may consist of circumstances indicating that Respondent has registered a domain name primarily for the purpose of selling or renting it to Complainant for a monetary consideration in excess of Respondent's out-of-pocket expenses directly related to the domain name. Complainant argues that is precisely the case here. Respondent's conduct has made clear that his intent in registering the Domain Name was to try to sell it to Complainant at an exceptionally high price, using the threat to transfer or link it to "generic video in Asia as part of an ad system" to coerce Complainant into paying an exorbitant price. This is bad faith.
Further, Respondent's ability to locate the contact information of Ms. C. Scotney, Complainant’s trademark counsel for prosecuting THE CURIOUS BANK mark, is evidence that Respondent was well aware of the mark and of the importance of it to Complainant. Respondent's pattern and practice of this conduct demonstrates bad faith. Respondent has repeatedly stated that he was going to transfer the Domain Name to other markets or to link it to "generic video" should Complainant not pay for it. This demonstrates bad faith use.
Complainant states that Respondent has also demonstrated bad faith because there is no bona fide use (and no preparation for such use) of the Domain Name; Respondent only passively holds it. The Domain Name was linked to a parking page related to banking and financial services, but this was taken down. The Domain Name currently links to a holding page that states the site is under construction. Where passive holding occurs, such conduct is further evidence of bad faith, particularly where the intent in registering the Domain Name is to sell it to the Complainant. Further, Respondent has made clear that he does not intend to make a bona fide use of the Domain Name. Respondent's conduct and communications have been focused solely on selling the Domain Name to Complainant or selling or transferring it in such a way that would disrupt Complainant's business.
Respondent urges that Complainant’s various claims against him have little or no merit and are seemingly motivated due to poor due diligence by Complainant’s attorneys and a probable lack of understanding as to how video content needs to be distributed in a post-search engine television age. Respondent states that, “after considering all the fancy legalese, the feigned outrage and the reams of exhibits, this case is actually simple”. Complainant started using the generic-descriptive phrase, “the curious bank”, at some point over the last 12 months. For at least part of the time, since the November 2011 filing, there appeared to be no date of first use for THE CURIOUS BANK mark in the USPTO database. Respondent suggests that the very legitimacy of a mark can often hang upon proving who first used the mark in commerce. Respondent speculates that perhaps Complainant wanted to insure that their claimed date of first use was at least a few days prior to Respondent’s date of first use of the Domain Name.
Respondent suggests that the recent USPTO acceptance of Complainant’s THE CURIOUS BANK mark was for a very narrow usage of the mark, which seems to be a weak descriptive mark. Respondent argues that Complainant’s mark does not even remotely meet the standards of “famousness” required for taking away Respondent’s Domain Name under federal trademark law.
Respondent states that he bought the Domain Name on March 22, 2012, in anticipation of future demand for non-famous domains as video content links. He urges that his “little curiousbank.com television station did not have banks in it, any more than an Apple computer has apples in the box.” Respondent suggests he is making a “fanciful use of the phrase”. Respondent further asserts that:
“In my due diligence, I later called [Complainant] as to their ‘interest or concern’ as I myself have been contacted on other occasions and was basically stonewalled for months; presumably until [Complainant’s] dates of public opposition [for the trademark] could be cleared, approximately April 17, 2012 to May 16, 2012. I did not oppose at that time, as I easily could have, because I did not see any overlap between my usage of my [Domain Name] and [Complainant’s] proposed trademark.”
Respondent indicates he has legitimate interests in using the Domain Name to fancifully link generic video. He states that he has registered and used the Domain Name in good faith, claiming he is now commencing a United States trademark application for <curiousbank.com>. He also states he is planning to use the Domain Name for video linking just as Google is busy preparing a massive domain-based linking system to YouTube and may have a smaller version working now.
Identical or Confusingly Similar:
As to whether the Domain Name is identical or confusingly similar to Complainant’s THE CURIOUS BANK service mark, Respondent recognizes that a simple comparison of the Domain Name with Complainant’s trademark shows similarity.
Rights or Legitimate Interests:
With respect to any rights or legitimate interests in the Domain Name, Respondent claims he absolutely has a legitimate interest in it. Respondent suggests he has a theory as to how generic domains could be used to displace mainstream television, which he believes that Google is already using. He claims he has had the Domain Name fancifully linking to generic video content almost since its date of purchase.
Respondent also states that interestingly, it appears that Complainant has recently used the domain name <mybankiscurious.com> as a video linking tool. Since <mybankiscurious.com> was bought several days after Respondent bought the Domain Name, it is quite possible that Complainant is simply copying this video linking idea after viewing his link in Asia of the Domain Name.
Registered and Being Used in Bad Faith:
Respondent states that the Domain Name was not registered or used in bad faith. He asserts that he bought and used the Domain Name in a way described in his Response and plans to defend this use in the USPTO. Respondent argues that the USPTO did not grant Complainant “carte blanche to be the end all and be all of ‘curious bank(s)’”. Nor can Complainant claim that THE CURIOUS BANK is already “famous” under the Federal Trademark Dilution Act of 2003. Complainant does not automatically have the legal right to slam the door shut on all other uses of phrases somewhat similar to its infant mark. Respondent argues it should be very clear that he did not bring up the subject of money prior to Complainant raising the idea.
Respondent explained his views on how the domain-linking of generic video works. He refers to Cheezburger Nation, which has been in the business of linking short generic cat videos from YouTube with some 1000 mostly misspelled domain names. Three years ago, they were allegedly yielding about USD 4 million annually. Earlier this year, they allegedly received about USD 30 million to expand into a larger humor site. According to Respondent, their primary asset was about 1000 mostly misspelled domain names and they obtained USD 30 million, or about USD 30,000 per misspelled domain. If misspelled domains are worth USD 30,000 to investors, Respondent estimates that correctly spelled domains are worth double or triple that. Thus, any correctly spelled generic domain in such a system could well be worth ÛSD 90,000. It is in this context that generic, descriptive and suggestive domains in “.com” have risen in value and that Respondent has purchased the Domain Name. Such domains can be used to link users through direct navigation into video content, without the search step.
Respondent explains that in the present dispute, his use of the Domain Name as a fanciful linker of generic video content has been challenged by Complainant. He has been compelled to begin registration of <curiousbank.com> at the USPTO – his attorney is allegedly deciding which class is most appropriate and the paperwork should be started shortly.
Respondent argues that the litany of claims made by Complainant are almost laughable, and the due diligence performed by Complainant’s attorneys appears weak. Seemingly the easiest way for Complainant and its attorneys to deal with the situation has been through this crude case. Respondent contends that the Complaint should be rejected immediately, or at least suspended while Respondent submits his paperwork to the USPTO. The USPTO database is full of overlapping names, but not overlapping usage of similar marks.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to 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. Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the Domain Name is identical or confusingly similar to Complainant’s mark; and
(ii) 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) are evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which if proved by Respondent may be evidence of Respondent’s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. The Panel finds that Complainant has established common law rights in it’s THE CURIOUS BANK service mark, even in advance of the issuance of the trademark registration. Complainant chose a mark that is distinctive in relation to banking and financial services. The USPTO found the mark to be distinctive by approving the mark for publication to register in the Principal Register. Complainant has also provided evidence to show that the mark through use has become a distinctive identifier for Complainant.
The Panel also finds that the Domain Name, <curiousbank.com>, is confusingly similar to Complainant’s THE CURIOUS BANK service mark, combining the two terms “curious” and “bank” unusually into a single string, while omitting the word “the” and adding the “.com” top-level domain, which does not change the overall impression of the Domain Name.
Therefore, the Panel concludes that Complainant has established this element of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In this case, the Panel finds that Complainant has presented a prima facie showing that Respondent does not have rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy. The Panel also finds that Respondent has failed to successfully rebut this showing.
Complainant has demonstrated that Respondent is not commonly known by the Domain Name, nor made legitimate noncommercial or fair use of it. The Panel observes that Respondent is not affiliated or related to Complainant in any way, nor from the available record is Respondent generally known by the Domain Name or authorized by Complainant to use Complainant’s THE CURIOUS BANK service mark.
Respondent has asserted that "all I did was to register a common generic phrase." While this statement may show that Respondent claims no particular interest in the Domain Name, the Panel does not agree that the combination of the terms “curious” and “bank” in the Domain Name reflected a “common generic phrase.” Instead, as discussed below, the evidence indicates that, on the balance of the probabilities, Respondent targeted Complainant when selecting this singular Domain Name. Moreover, the evidence shows that until early September 2012, the Domain Name was linked to a banking-related parking site with links to sites of Complainant's competitors. At other times, the Domain Name has been linked to a holding page indicating the site is under construction. Most recently, the Panel found that the Domain Name links to a random Chinese website, YouKu at <http://v.youku.com/v_show/id_XNDA4NTc4OTM2.html>. There is no apparent connection between this site and Respondent or the Domain Name. Respondent claims he has had the Domain Name “fancifully linking to generic video content”, but this statement stands in contrast to Respondent’s initial attempts to extract an exorbitant fee from Complainant for purchase of the Domain Name, which Complainant has carefully documented in its Complaint.
This Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Finally, the Panel finds that Complainant has established bad faith registration and use of the Domain Name under paragraph 4(b) of the Policy, based on several factors:
- The incorporation of Complainant’s THE CURIOUS BANK service mark into the Domain Name without any plausible explanation for doing so, causing confusing similarity. The combination of the terms “curious” and “bank” into one string for the Domain Name is uncommon. Moreover, Respondent registered the Domain Name on March 22, 2012, approximately one month after Complainant launched its campaign using THE CURIOUS BANK mark and approximately five months after Complainant filed its application to register the mark. Further, Complainant has submitted detailed evidence to show that just four days after registration of the Domain Name, Respondent began his campaign of contacting Complainant’s employees and legal representatives, including trademark counsel, to try to sell the Domain Name to Complainant. Respondent’s attempts to sell the Domain Name were accompanied by demands for exorbitant amounts and threats concerning how the Domain Name would otherwise be used or transferred to another party.
- The panel finds the analysis in The California Milk Processor Board v. Mattia Fraulini, WIPO Case No. D2011-1077, to be applicable in this case as well. There, the panel found that the respondent's registration of the domain name <gotmilkband.com> using:
"the combination 'got milk' appears as more likely than not to be related to the various commercials and other advertising used by Complainant in its activity over the years, as a simple search on Google and YouTube suggests...On the balance, the Panel is inclined to accept that Respondent has chosen to register and use the Domain Name being aware of Complainant's brand and of its value, and in attempt to benefit from it.."
- The evidence thus indicates that Respondent registered the Domain Name with Complainant’s service mark in mind and primarily for the purpose of selling the Domain Name to Complainant for a monetary consideration in excess of Respondent's out-of-pocket expenses. Respondent's conduct has made clear that his intent in registering the Domain Name was to try to sell it back to Complainant at an exceptionally high price, using the threat to transfer or link it to generic video content in Asia.
- The fact that the Domain Name was initially used to generate click-through revenue through the provision of third-party commercial links, which related to competing banking services, is also evidence of bad faith use.
This Panel accordingly finds that, for all the foregoing reasons, the Domain Name has been registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <curiousbank.com>, be transferred to Complainant.
Christopher S. Gibson
Date: December 8, 2012