WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wachovia Corporation v. Marcus Sims d/b/a Domains for Sale and d/b/a Key Option
Case No. D2002-0809
1. The Parties
Complainant in this administrative proceeding is Wachovia Corporation (formerly First Union Corporation), a North Carolina corporation with its principal place of business at Charlotte, North Carolina, United States of America. The Complainant is represented in this proceeding by Michael A. Tobin, Esq., Kennedy Covington Lobdell & Hickman, LLP, Charlotte, North Carolina, United States of America.
Respondent in this proceeding is Marcus Sims d/b/a Domains for Sale and d/b/a Key Option. The address for Domains for Sale is Roanoke, Texas, United States of America; the address for Key Option is Duncanville, Texas, United States of America.
2. The Domain Name and Registrar
The domain names in dispute are <firstunionmortgage.com> and <firstunionmortgage.net>
The registrar for the disputed domain name, <firstunionmortgage.com>, is Network Solutions, Inc.Dulles, Virginia, United States of America. The registrar for the disputed domain name, <firstunionmortgage.net>, is Intercosmos Media Group, Inc., d/b/a Directnic.com, New Orleans, Louisiana, United States of America.
3. Procedural History
Resolution of the Complaint shall proceed in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy") and Rules for the Uniform Domain Name Dispute Resolution Policy ("the Rules") approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Center", "the Supplemental Rules").
The Complaint was filed on August 23, 2002, by e-mail, and on September 3, 2002, in hard copy. On August 30, 2002, the Center sent a Request for Registrar Verification to the registrars of the disputed domain names, pursuant to which on September 3, 2002, the Center received verification that the Policy governed the disputed domain names registered with the registrars. The Center did however notice a small discrepancy and requested an amended Complaint from the Complainant on September 3, 2002. An Amended Complaint, correcting Respondent's name and the name of the registrar Network Solutions, Inc., was sent to the Center by e-mail on September 4, 2002, and in hard copy on September 6, 2002.
On September 9, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began. On October 3, 2002, the Center sent a Notification of Respondent Default to Respondent by e-mail.
The Administrative Panel submitted a Declaration of Impartiality and Independence on October 4, 2002, and the Center appointed the Panel on October 7, 2002. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
The due date of this Decision is October 21, 2002.
4. Factual Background
For several decades, Complainant has been a well-known American banking company, providing a variety of financial services to millions of American consumers, including the issuance of mortgage loans. Complainant owns registered trademarks in the name "First Union" in the United States. In addition, Complainant has registered and uses the domain name, <firstunion.com>, in advertising and providing some of its services.
Respondent is listed as the Registrant of the disputed domain names. The record of Respondent's registration was created on April 30, 2001, for the domain name <firstunionmortgage.com>, and on April 25, 2002, for the domain name <firstunionmortgage.net>.
5. The Partiesí Contentions (Summarized)
Complainant, one of the largest and most prominent financial institutions in the United States of America, with a customer base of over sixteen million customers, owns and/or controls numerous subsidiary companies engaged individually and collectively in providing, since at least 1958, a wide variety of banking, financial, mortgage, and investment related services throughout the United States under a family of "First Union" trade names, including First Union National Bank. Consequently, the "First Union" family of marks is distinctive of Complainantís services and is widely recognized by consumers as being associated with Complainantís banking, financial, investment, mortgage and credit services.
Complainant has three United States registrations of the trademark "First Union" as well as many other trademark registrations involving that name. Those trademarks were put into use long before Respondent registered the disputed domain name. Complainant has also spent a considerable sum of money in advertising those marks.
Complainant has a website linked to various domain names which it owns, including <firstunion.com>, where consumers may obtain information about Complainantís services and perform certain on-line transactions.
The disputed domain names are identical or confusingly similar to Complainant's trademark. The addition of the generic word "mortgage" does not reduce the confusion between the name and the mark.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not licensed to use Complainantís trademark, and Complainant has specifically informed Respondent on two occasions that Complainant does not desire to enter into any business relationship with Respondent. Respondent has not used the disputed domain names in association with a bona fide offering of goods or services. Respondent has never been known by the disputed domain names. Respondent is not making legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain or to misleadingly divert consumers or to tarnish the service marks at issue.
Respondent registered the <firstunionmortgage.com> disputed domain name with the specific intent to sell it and then pointed this domain name to a <Register.com> mortgage-related search tool. Respondent has not pointed the disputed <firstunionmortgage.net> domain name to any web page.
Respondent registered and is using the disputed domain names in bad faith. Respondent is attempting to sell the disputed domain names as evidenced by Complainant including the words "Domains For Sale" in the Registrant field of the disputed <firstunionmortgage.com> domain name and by Respondentís unsolicited invitation to Complainant to form some type of "joint venture", which presumably would involve the payment of money in excess of registration costs to Respondent.
Respondent did not file a response in this proceeding.
The Center forwarded a copy of this Complaint to Respondent by hard copy and e-mail, sent Respondent a Notification of Respondent Default by e-mail and engaged in various communications regarding these proceedings by e-mail with Respondent. Therefore the Panel is convinced that Respondent has been duly notified of these proceedings and that Respondentís right to due process with respect to administrative disposition of the disputed domain names has been observed.
6. Discussion and Findings
In order for Complainant to prevail in this proceeding and have the disputed domain names <firstunionmortgage.com> and <firstunionmortgage.net> transferred to it, Complainant must prove the following (the Policy, paragraphs 4(a)(i-iii)):
- the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
- Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- the disputed domain names were registered and are being used in bad faith.
Identical or Confusingly Similar
The record amply demonstrates that Complainant owns three registrations of the trademark "First Union" in the United States (i.e., U.S. Registration No. 1,335,876, dated May 14, 1985; No. 1,338,333, dated May 28, 1985; and No. 1,581,875, dated June 2, 1990 (Annex 3 to the Amended Complaint)). Complainant's rights in those trademarks arose years before Respondent's registration of the disputed domain names.
Both disputed domain names include Complainant's full trademark, adding to it the word "mortgage" and a gTLD. Prior panels ruling under the Policy have held unanimously that the inclusion of a gTLD is irrelevant when determining identity or similarity between marks and domain names (Ticketmaster Corporation v. Discover Net, Inc., WIPO D2001-0252 (April 9, 2001), and Treeforms, Inc. v. Cayne Industrial Sales, Corp., NAF FA95856 (December 18, 2000)). Moreover, the addition of the word "mortgage" does not reduce the confusion between the Complainant's trademark and the disputed domain names because Complainant is well-known in the United States, where both Complainant and Respondent reside, and Complainant issues mortgage loans as a substantial part of its business. As examples where prior Policy panels have discounted the addition of words pertaining to a Complainant's business when assessing similarity, see Wachovia Corporation v. Organized Crime, Inc., WIPO Case No. D2002-0362 (June 13, 2002); and Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (March 3, 2000).
Accordingly, the Panel finds that the disputed domain names are confusingly similar to a trademark or service mark in which Complainant has rights.
No Rights or Legitimate Interests
There is no suggestion in the record that Respondent has received permission, consent or a license from Complainant to use the Complainant's trademark or that Respondent owns a trademark corresponding to the disputed domain names. The foregoing establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names (see Prisma Presse v. Buydomains.com, WIPO Case No. D2001-1073 (October 22, 2001)), and thus, in light of the inherent difficulty facing Complainant in proving a negative, the burden in these proceedings shifts to Respondent to produce substantive evidence that Respondent possesses those rights or interests. However, in this case Respondent has chosen to present no evidence to the Panel, whether pursuant to the criteria enumerated in paragraph 4(c) of the Policy or otherwise, to establish such rights or interests.
Thus, the Panel finds that Complainant has carried its burden to show that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant alleges that, after registering the disputed domain names, Respondent apparently contacted Complainant and proposed that they establish a joint venture. Complainant interpreted that proposal as a request for a payment in excess of Respondent's out-of-pocket registration and transfer costs. Given that one of the domain names in question, <firstunionmortgage.com>, was registered by a business named "Domains for Sale," such an interpretation seems entirely reasonable to the Panel. Furthermore, the Panel finds nothing in the record to contradict the conclusion that Respondent had any intention other than excessive remuneration. Thus, the Panel concludes that Respondent's actions in this case fall squarely under the criterion evidencing bad faith listed in paragraph 4(b)(i) of the Policy, i.e., that Respondent acquired the disputed domain names primarily for the purpose of selling, renting or otherwise transferring them to Complainant for valuable consideration in excess of Respondent's demonstrated out-of-pocket costs directly related to the names.
Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith.
The Panel finds the disputed domain names, <firstunionmortgage.com> and <firstunionmortgage.net>, are confusingly similar to Complainantís "First Union" trade and service marks. The Panel also finds the Respondent has no rights or legitimate interests in the disputed domain names. Finally, the Panel finds the Respondent registered and is using the disputed domain names in bad faith because Respondent's primary intent was to sell them to Complainant for valuable consideration in excess of Respondent's demonstrated out-of-pocket costs directly related to the names.
In accordance with paragraphs 4(a) of the Policy and Rule15, the Panel orders that the disputed domain names, <firstunionmortgage.com> and <firstunionmortgage.net>, be transferred from the Respondent, Marcus Sims d/b/a Domains for Sale and d/b/a Key Options, to the Complainant, Wachovia Corporation.
Dennis A. Foster
Dated: October 21, 2002