WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Archer-Daniels-Midland Company v. Robyn Bodine (a.k.a. D.L. Tate, Donnie Tate)
Case No. D2002-0482
1. The Parties
The Complainant is the Archer-Daniels-Midland Company, a Delaware corporation with its principal place of business in Decatur, Illinois, United States of America, represented by Tracy-Gene G. Durkin of the law firm Sterne, Kessler Goldstein & Fox P.L.L.C., Washington, D.C. United States of America.
>The Respondent is Robyn Bodine, a.k.a. D.L. Tate, Donnie Tate, an individual who resides in Decatur, Illinois (USA) and who purports to do business as "Robyn Bodine Co." The Center received a Response from R.D. Bodine and D.L. Tate.
2. Domain Name and Registrar
The domain name at issue is: <hickorypointbank.com>. It is referred to as the Domain Name. According to the "whois" database, Respondent registered the Domain Name on March 17, 2000, with the registrar Register.com.
3. Procedural History and Jurisdiction
The WIPO Arbitration and Mediation Center ("the Center") received Complainant's Complaint on May 23, 2002 (hard copy), and May 27, 2002 (email). The Center verified that the Complaint satisfied the formal requirement of the ICANN 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). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is June 4, 2002.
On May 27, 2002, the Center transmitted via email to Register.com, the registrar, a request for registrar verification in connection with this case. On May 28, 2002, the Center received verification via email from the whois database, confirming that the Respondent Robyn Bodine is the registrant and the administrative contact for the Domain Name <hickorypointbank.com>. Register.com of New York, New York (USA) is the technical contact.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, on June 4, 2002, the Center transmitted to the Respondent, via post/courier and e-mail, a Notification of Complaint and Commencement of the Administrative Proceeding.
The Center received a Response from Respondent on June 25, 2002 (email). The Center sent a Response Deficiency Notification to Respondent on June 25, 2002. The Center received an amended Response on July 1, 2002.
Also on July 1, 2002, the Center received the Complainant's Reply to Respondent's Response, dated June 28, 2002 (email). Complainant's Reply was unsolicited and included neither a request for leave to submit (see Rule 12) nor any argument that the Response raised contentions that Complainant could not have previously anticipated. Under Rule 12, filings other than the Complaint and Response are discretionary with the Panel. As I believe that supplemental filings are inconsistent with the Policy's goal of expedited proceedings, and that there is no reason on the record for an exception, I deny leave to file the Reply, and take no account of the matters submitted in the Complainant's Reply to the Response.
In view of the Complainant's designation of a single panelist and Respondent's acquiescence in that format, the Center invited Mr. Richard G. Lyon to serve as a Panelist.
After receiving Mr. Lyon's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted via email to the parties a Notification of Appointment of Administrative Panel on July 4, 2002. The projected decision date is July 18, 2002.
I find that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules, and that the Panel has jurisdiction over this dispute.
The Administrative Panel shall issue its decision based on the Complaint, the Response, the evidence presented, the Policy, the Rules and Supplemental Rules.
4. Factual Background
Complainant is a multinational conglomerate with its principal place of business in Decatur, Illinois, USA. Complainant owns Hickory Point Bank & Trust, fsb, which is a federal savings bank (i.e., a bank chartered under United States banking laws). The bank operates under that name in eleven locations throughout central Illinois, seven of which are in Decatur, Illinois.
Complainant claims trademark rights in the name "Hickory Point Bank." Complainant has not registered this mark with Illinois, any other state of the United States, or the United States Patent and Trademark Office. It has operated Hickory Point Bank & Trust in Illinois for more than fifteen years. The bank's signage, letterhead, business cards, envelopes, sales material and promotional material (copies or pictures of which were submitted with the Complaint) use the "Hickory Point Bank" mark. The mark is prominently displayed on all of these materials. On September 21, 2000, Complainant initiated a website at <hickoryptbank.com>.
Complainant has not licensed Respondent to use its name or marks.
Respondent registered the Domain Name <hickorypointbank.com> on March 17, 2000. Respondent has not developed this website. According to the Complaint, at one point the website indicated "Coming Soon!" An attempt on July 12, 2002, to access a website using the Domain Name yielded a response of "this page cannot be found."
Complainant (through counsel) and Respondent have communicated for over one year. On May 23, 2001, fourteen months after Respondent registered the Domain Name, and seven months after Complainant launched its own website, Complainant's counsel sent a letter to the Respondent requesting that the Respondent cease and desist from use of the Domain Name and transfer it to the Complainant. Respondent responded via email on June 5, 2001, claiming his right to the Domain Name. Complainant subsequently made two offers to settle the matter, each involving a payment to Respondent of $1000 in exchange for transfer of the Domain Name. Respondent rejected the offers.
5. Parties' Contentions
Complainant's contentions may be summarized as follows:
Complainant has common law trademark rights in "Hickory Point Bank" stemming from the bank's use of the mark for banking services for many years. The Domain Name incorporates the descriptive portion of Complainant's mark and is therefore identical or confusingly similar to its mark. Consumers seeking Complainant's website and finding the Domain Name would tend to believe that Hickory Point Bank & Trust does not maintain a website or offer electronic banking services. Respondent has no rights or legitimate interest in the Domain Name. He received no authorization to use the Complainant's marks, is not commonly known by the Domain Name, and makes no fair use of the Domain Name. Respondent registered and now holds the Domain Name for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the owner of the trademark or to a competitor of Complainant for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the Domain Name. Respondent's failure to transfer the Domain Name and failure to make any use of the Domain Name for two years indicates that Respondent registered the Domain Name in bad faith.
Respondent's contentions may be summarized as follows:
The Respondent has a right to the Domain Name. Complainant has no protected interest in the "Hickory Point Bank" mark. Respondent researched whether "Hickory Point Bank" was a registered trademark before registering the Domain Name. There was no such registered trademark. Complainant's use of the mark in local commerce does not produce universal trademark rights, indeed any rights beyond the geographic area in which the mark is used. Complainant is known as Hickory Point Bank & Trust, while Respondent solely uses "Hickory Point Bank." Therefore, Respondent does not use an identical, protected mark, and "many names could be considered similar". (Response ¶ 7) Respondent has not taken or attempted to extort money from Complainant for the Domain Name, or otherwise used the Domain Name "for profit."
Respondent advanced the foregoing arguments in his email correspondence with Complainant prior to commencement of this proceeding, and advances them in the Response. In the Response, Respondent disclosed for the first time his future plans for the Domain Name. In Respondent's own words:
Webster's dictionary defines "Bank" as "a mound", "a pile", or "ridge" raised above the surrounding level. My site is still in pre-launch. It is to be a free website of scenic waterways and other points of interest such as lakes, creeks, and rivers mainly of the Hickory N. Carolina area. Hickory Point Bank is a good name for such a website.
(Response ¶ 2). Based on the foregoing, Respondent did not register and is not using the Domain Name in bad faith.
6. Discussion and Findings
The Complainant must prove the elements set out in paragraph 4(a) of the Policy:
(i) Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent's Domain Name has been registered and is being used in bad faith.
Complainant bears the burden of proof on each of these elements.
Complainant's Right to the Mark
Complainant has submitted evidence, summarized above, of its trademark rights in "Hickory Point Bank." Respondent does not dispute that evidence or perforce Complainant's trademark rights, although he contests their legal significance. Contrary to Respondent's assertion, the Policy protects misuse of unregistered as well as registered trademarks. "A Complainant may rely on an unregistered word, phrase or string of characters, provided that the unregistered mark is and performs the function of a 'trademark'." Sydney Markets Ltd. v. Nick Rakis, WIPO Case No. D2001-0932. A trademark distinguishes the goods and services of one party in trade from those of another. Id. Furthermore, under United States law trademark rights accrue from usage, not registration. Georgia Gulf Corporation v. The Ross Group, WIPO Case No. D2000-0218 ("There is no requirement, at least under U.S. law, for a mark to be registered before rights attach. Rather, under U.S. trademark law, rights attach upon use of the mark in commerce.").
Respondent's claim that Complainant's full trade name is Hickory Point Bank & Trust while the Domain Name is only <hickorypointbank.com> is a distinction without a difference; there is no doubt that the Domain Name—which incorporates the principal words of Complainant's mark—will confuse customers and prospective customers of Complainant's banking services. Just as the addition of common words to a protected mark will not save a challenged domain name, so deletion of a nonessential portion of the mark does not vitiate the likelihood of confusion.
Respondent's claim that only intrastate use of the mark does not give trademark protection is likewise inaccurate, as a matter of trademark law and in respect to protection under the Policy. The Policy does not distinguish between common law, national or international trademark rights. See Oshawa Centre Holdings Inc. v. M. Bharwani, eResolution Case No. AF-0820 (protecting Oshawa's common law rights despite its solely local use). Moreover, Complainant's limited geographic use avails the Respondent not at all. Respondent does not claim to use the mark at all, for any services, in any locale.
Complainant meets its burden of proof on this issue.
Respondent demonstrates no legitimate interest in the Domain Name. The only argument put forward by Respondent to support his assertion that he has a legitimate interest in the Domain Name is his stated intent to use the website for nature photography. This unsworn allegation does not demonstrate a legitimate interest. Respondent offers no evidence of any preparation for such use. His "intention" surfaced after Complainant filed the Complaint. It is also clearly and clumsily contrived to fit into those cases where use of a domain name incorporating a generic term resulted in a finding for respondent, and is hence unworthy of belief. Respondent has shown none of the circumstances that could demonstrate any legitimate interest in the Domain Name.
Complainant meets its burden of proof on this issue.
The Policy requires Complainant to show registration in bad faith as well as use in bad faith. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
As to registration, Respondent admits knowing of Complainant's bank before registering <hickorypointbank.com>. Respondent lives in the same city as Complainant's principal place of business, a city in which Complainant operates seven bank branches under the name Hickory Point Bank & Trust. In these circumstances, "It would be difficult, perhaps impossible, for Respondent to use the Domain Name as the name of any business, product or service for which it would be commercially useful without violating Complainant's rights." Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. Bad faith in registration may be inferred from these circumstances.
As to use, Respondent's conduct as shown by the evidence does not fit neatly into any of the examples set out in Paragraph 4(b) of the Policy as indicative of bad faith. Those circumstances are, however, nonexclusive. Here, Respondent has done nothing with the Domain Name over the last fourteen months. It was only after Complainant filed the Complaint that Respondent claimed he was preparing for use of the Domain Name for a website. This warehousing of the Domain Name constitutes use in bad faith. "[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith. . . . [P]aragraph 4(b) [of the Policy] recognizes that inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith." Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Complainant has proven bad faith in registration and use.
For the foregoing reasons, the Panel orders that the registration of the Domain Names be transferred to the Complainant.
Richard G. Lyon
Dated: July 16, 2002