WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FirstMerit Corporation v. Registration Private, DomainsByProxy.com / Jon Murrell

Case No. D2015-1752

1. The Parties

Complainant is FirstMerit Corporation of Akron, Ohio, United States of America ("United States"), represented by Renner, Kenner, Greive, Bobak, Taylor & Weber, United States.

Respondent is Registration Private, DomainsByProxy.com of Scottsdale, Arizona, United States / Jon Murrell of Delaware, Ohio, United States, represented by Millen, White, Zelano & Branigan, P.C., United States.

2. The Domain Name and Registrar

The disputed domain name <firstmeritsucks.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 2, 2015. On October 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 3, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 5, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 9, 2015.

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" 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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on October 15, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2015. The Response was filed with the Center on November 3, 2015.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on November 20, 2015. 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 a financial services company with assets of approximately USD 25.3 billion (as of June 30, 2015), and 367 banking offices and 399 ATM locations in Ohio, Michigan, Wisconsin, Illinois and Pennsylvania.

Complainant owns numerous federal service mark registrations in the United States for its FIRSTMERIT (United States Registration No. 1,877,966) trademark, including the following service marks:

FIRSTMERIT SAVINGS CLUB

FIRSTMERIT STATEMENT SAVINGS

FIRSTMERIT CHECK & CASH CARD

FIRSTMERIT INVESTMENT SERVICES

FIRSTMERIT E-CONNECT

FIRSTMERIT CONSOLIDATED FINANCIAL MANAGEMENT ACCOUNT

FIRSTMERIT E-CONNECT GLOBAL

FIRSTMERIT EQUIPMENT FINANCE INC.

FIRSTMERIT SHOP & EARN

FIRSTMERIT BANK BUSINESS CREDIT

FIRSTMERIT HIGH YIELD MONEY MARKET

FIRSTMERIT FINANCIAL SERVICES

FIRSTMERIT SELECT PORTFOLIOS FIRSTMERIT WORKPLACE BANKING

FIRSTMERIT E-DEPOSIT

Complainant also has the following domain name registrations: <firstmerit.com>, <fmer.com>, <firstmerit-bank.com>, <firstmerit-bank.bz>, <firstmerit-bank.us>, <firstmerit.bz>, <firstmerit.us>, <firstmeritbank.bz>, <firstmeritbank.us>, <firstmeritcorp.com>, <firstmeritloc.com>, <firstmeritibt.com>, and <firstmeritib.com>. A number of these registrations have been maintained by Complainant since 1996.

Respondent registered the Domain Name, <firstmeritsucks.com>, on September 9, 2008.

5. Parties' Contentions

A. Complainant

(i) Identical or confusingly similar

Complainant states that the predominant portion of the Domain Name is identical to Complainant's distinctive service mark, FIRSTMERIT. The only difference between Complainant's mark and the Domain Name is that the Domain Name contains the generic term "sucks". Complainant refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.3, which states that "[g]enerally, a domain name consisting of a trademark and a negative or pejorative term (such as [trademark]sucks.com) would be considered confusingly similar to the complainant's trademark for the purpose of satisfying the standing requirement under the first element of the UDRP" and "[p]anels have recognized that inclusion of a subsidiary word to the dominant feature of a mark at issue typically does not serve to obviate confusion for purposes of the UDRP's first element threshold requirement, and/or that there may be a particular risk of confusion among Internet users whose first language is not the language of the domain name." Additionally, Complainant states that the generic Top-Level Domain ("gTLD") suffix ".com" forming part of the Domain Name has no relevant distinguishing function.

(ii) Rights or legitimate interests

Complainant states that Respondent is not known by the Domain Name, nor is "firstmerit" a common word or name. Instead, "firstmerit" is an arbitrary term created by Complainant. Complainant further states that Respondent is not authorized to use Complainant's name or registered service mark. Complainant's United States trademark registration for FIRSTMERIT was filed on January 19, 1994, more than 14 years prior to Respondent's registration of the Domain Name on September 9, 2008. To the best of Complainant's knowledge, Respondent does not have any trademark registration or pending application for FIRSTMERITSUCKS.

Complainant also states that to the best of its knowledge, there is no evidence of Respondent's use of the Domain Name in connection with a bona fide offering of goods or services prior to notice of this dispute. At the time of filing the Complaint, the Domain Name resolved to a website located at "www.getthebank.com". This website displays the following message: "I'm looking to bring a Class Action Lawsuit against FirstMerit Bank", along with other related wording. No bona fide offering of goods or services is provided.

Additionally, Complainant states that Respondent is not making legitimate noncommercial or fair use of the Domain Name. Complainant asserts that the website contains commercial advertisement links on the website's main page. Thus, the use of the Domain Name cannot be said to be noncommercial.

Further, Complainant asserts that Respondent has exceeded any fair use or free speech rights. The selection of a domain name that merely adds the word "sucks" cannot be reasonably said to accomplish the goal of assembling a class action group. Also, the use of such text on a website would be sufficient to lead search engines to the website, without the need for using the trademark FIRSTMERIT in the Domain Name. Respondent's use of the domain name, <getthebank.com>, is an example of how to assemble such a class action without the use of Complainant's trademark in the Domain Name.

Upon information and belief, Complainant states that Respondent has not updated the information that appears on the website linked to the Domain Name since at least December 20, 2009. Therefore, the information has become so stale, as to no longer be newsworthy.

(iii) Registered and used in bad faith

Complainant argues that Respondent has placed commercial advertisement links on the main page of the website linked to the Domain Name, and this is evidence that Respondent's registration and use of the Domain Name is an intentional attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website.

Further, Complainant contends it is well established that a respondent's actual knowledge of a complainant's rights at the time of the registration is further evidence of bad faith. In the present case, Complainant has been using the mark FIRSTMERIT since at least 1994, and through extensive advertising and promotions has become well-known in the banking industry. Complainant owns over 40 federal trademark applications and registrations that include FIRSTMERIT as a formative element, and has nationwide rights and recognition. Moreover, Complainant has had an Internet presence since 1994, and therefore information about Complainant has become well known. The website to which the Domain Name points references Complainant, and it is indisputable that Respondent is aware of Complainant's rights.

B. Respondent

(i) Identical or Confusingly Similar

Respondent states that while Complainant's service mark is FIRSTMERIT, the Domain Name is <firstmeritsucks.com>. The word "sucks" is an adjective meaning "to be repellent or disgusting". Respondent contends that the inclusion of the term "sucks" conveys the impression that the Domain Name, and the resulting website, is an online location where an Internet user may find the reason why Complainant is repellent. Respondent argues that for this reason alone, the Panel should deny transfer of the Domain Name.

(ii) Rights or Legitimate Interests

Respondent indicates that both Parties are located in the state of Ohio, and Respondent is using the Domain Name to exercise his rights of free speech, enshrined in the First Amendment to the United States Constitution. Respondent argues that Complainant is attempting to use this case to accomplish what it could never accomplish in a United States court, namely, to silence Respondent.

Respondent explains that in 2005 he opened a "free" checking account with Complainant's bank. Respondent eventually was charged several hundred dollars in what he considers to have been unfair and excessive overdraft fees. In frustration, Respondent closed his account in the year 2008 or 2009.

Respondent registered the Domain Name on September 9, 2008. Around that same time, Respondent also registered the domain name <getthebank.com>. The Domain Name redirects to a website located at "www.getthebank.com". Respondent states that he is using the Domain Name to solicit other unhappy customers to join him in a class action against Complainant for its unfair business practices. Respondent asserts that even a glance at the website linked to the Domain Name demonstrates Respondent's purpose. The website states the following in relatively large and prominent text, "FirstMerit Bank Sucks!!!", and the first full paragraph on the website is as follows:

"I'm looking to bring a Class Action Lawsuit against FirstMerit Bank, First Merit, FirstMerit Corporation, and/or it's holdings for the way they handle OverDraft Fees on their 'Free' checking accounts."

Respondent states that he uses the service Yola to host the website linked to the Domain Name. Yola provides services free of charge to Respondent and others. At the bottom of the website, Yola includes a line in relatively small and non-prominent text that states, "[m]ake a free website with Yola", and includes a hyperlink to the website at "www.yola.com". Respondent did not put this line or the hyperlink on the website linked to the Domain Name. Respondent does not receive any direct financial benefit from the Yola offer, including so-called referral fees.

Respondent submits that Complainant knows Respondent has nothing to do with the Yola reference and link and derives no benefit from it. Respondent contends that Complainant's allegation that this link and reference transforms Respondent's legitimate gripe site into a commercial venture is devoid of merit. Respondent maintains that Complainant's mischaracterization of the content of the website as commercial constitutes a bad faith attempt to mislead this Panel, and should be sufficient to support a finding that Complainant is engaging in reverse domain name hijacking ("RDNH").

Regarding Complainant's claim that the information on the website linked to the Domain Name is stale, Respondent states that, to the contrary, the information is not stale since the salient facts have remained unchanged since the site was first created in 2009 – that is, Complainant charged what Respondent considers to be unfair and excessive overdraft fees, and Respondent would like to join forces with others with similar grievances. Respondent states he is actively pursuing the matter, and the website continues to generate interest from similarly situated unhappy customers of Complainant's services.

Respondent's registration and use of the Domain Name began over seven years before Complainant commenced this proceeding. Respondent submits that the doctrine of laches should bar the remedy requested by Complainant. Complainant's excessive delay in commencing this proceeding should weigh against Complainant in its attempt to establish that Respondent lacks rights or legitimate interests and that Respondent registered and is using the Domain Name in bad faith.

In similar situations, other UDRP panels have determined that the respondent has a legitimate interest in using the trademark as part of the domain name. This is particularly so in this case since it involves United States parties and the location of mutual jurisdiction is the United States. Further, the instant case is clearly distinguishable from other UDRP cases in which the domain names pointed to competitive financial products and services. The commercial reference on the website is ancillary, very limited in nature and bears no relationship to Respondent and his message.

In summary, Respondent has rights and legitimate interests in the Domain Name because: (a) the Domain Name does not consist purely of Complainant's mark, or even Complainant's mark plus an anodyne descriptive term; rather, it includes the pejorative term "sucks" thereby signaling its purpose; (b) Respondent has not derived a commercial advantage from the website; (c) the website reflects Respondent's genuine views, albeit views which are critical of and objectionable to Complainant, and includes a statement of facts that tend to support his views; and (d) it is immediately clear to Internet users visiting the site at the Domain Name that it is not operated by Complainant. This is classic gripe site usage that is protected under the United States Constitution and must be respected by the Panel. Accordingly, Complainant's case must fail, and the Panel should deny transfer of the Domain Name.

Respondent states that he is aware of at least one other action against Complainant arising out of Complainant's allegedly unfair, deceptive, unconscionable, and bad faith assessment and collection of overdraft or insufficient funds fees. Respondent is not a party to that case. This is further evidence that Respondent has rights to and legitimate interests in the Domain Name and that Respondent's registration and use of the Domain Name is not in bad faith.

(iii) Registered and used in bad faith

Respondent is using the website linked to the Domain Name to solicit other unhappy customers to join Respondent in a class action against Complainant for its unfair business practices. Respondent did not place commercial advertisement links on this site. The Yola link and reference bears no relation to Respondent or his purpose for registering and using the Domain Name. Respondent does not receive any direct financial benefit from the Yola offer, including so-called referral fees.

Respondent contends there are no indicia of bad faith here. Respondent did not register so many domain names that Complainant was prohibited from using its mark; Respondent is not a competitor of Complainant who is using criticism as a potential pretext to drive business from Complainant to Respondent; and Respondent has not designed its site in a deceptive or confusing manner that would create a likelihood of confusion as to whether the site is a genuine criticism site or is posing as Complainant's site.

Respondent states that Complainant has failed to establish that Respondent registered and is using the Domain Name in bad faith. Respondent argues that the only bad faith present in this case is Complainant's effort to use this proceeding to suppress Respondent's free speech rights, and its attempt to mislead the Panel by mischaracterizing Respondent's site as commercial in nature. For this reason, Respondent respectfully requests that, in addition to denying the relief sought by Complainant, this Panel should find that Complainant has engaged in RDNH.

6. Discussion and Findings

The Panel notes that in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has submitted evidence to show that it owns numerous trademark registrations for its FIRSTMERIT trademark, including in the United States where Respondent is located.

Here, the Panel finds that the Domain Name is confusingly similar to Complainant's FIRSTMERIT trademark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark. See WIPO Overview 2.0, paragraph 1.2 ("The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name…."). Moreover, WIPO Overview 2.0, paragraph 1.3, states that

"Generally, a domain name consisting of a trademark and a negative or pejorative term (such as [trademark]sucks.com) would be considered confusingly similar to the complainant's trademark for the purpose of satisfying the standing requirement under the first element of the UDRP (with the merits of such cases typically falling to be decided under subsequent elements)."

The dominant and distinctive portion of the Domain Name is identical to Complainant's service mark. The difference between Complainant's mark and the Domain Name is that the Domain Name contains the generic term "sucks". This generic word does not effectively distinguish the Domain Name from Complainant's FIRSTMERIT trademark. See "Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH v. MCPS, Timothy Marten, WIPO Case No. D2011-1728; Société Air France v. MSA, Inc., WIPO Case No. D2007-0143; and Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

Accordingly, the Panel therefore finds that Complainant has established the first element of paragraph 4(a) 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 a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In this case, Complainant has established a prima facie case, but Respondent has successfully rebutted it.

Complainant has shown that Respondent is not commonly known by the Domain Name; instead, it is clear he registered the Domain Name because it incorporates Complainant's FIRSTMERIT trademark. Further, Complainant has not authorized Respondent's use of Complainant's FIRSTMERIT mark. There is no dispute between the Parties that the Domain Name is not being used in connection with a bona fide offering of goods or services; instead, it resolves to a website located at "www.getthebank.com", which contains the following statement on its home page:

If we can show that we are similarly situated, we have a pretty good shot at some money back!! Remember David and Goliath? Nothing is too big to bring down.

If you are an attorney and would like to take part in this case, please let me know, and I will get you in touch with our representation.

In case you needed their address, here it is:

FirstMerit Corporation
III Cascade Plaza
Akron, OH 44308

Please tell me your thoughts and let me know. My email is: […]@getthebank.com. Let me know how they screwed you and I can post it on this site (with your consent)."

The issue in the case is therefore whether Respondent's website linked to the Domain Name amounts to a "legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark…" in accordance with paragraph 4(c)(iii) of the Policy. Complainant asserts that Respondent's website contains commercial advertisement links and thus, use of the Domain Name cannot be said to be noncommercial. Respondent, on the other hand, claims he is using the Domain Name to solicit unhappy customers to join him in a class action against Complainant for its allegedly unfair business practices. Respondent also contends that the reference and link to "Make a Free Website with Yola" at the bottom of the homepage of his website does not transform his legitimate gripe site into a commercial venture.

The Panel has carefully reviewed Respondent's website. The reference to the Yola service at the bottom of the site does not transform it into an illegitimate one seeking commercial gain. Yola is the free hosting service used by Respondent for his website and Yola has placed a reference and link in small font at the bottom of the home page of Respondent's site, as well as at the bottom of the "About Us" page. There are only two webpages to Respondent's site. There are no other listings on Respondent's site that could be considered commercial. The Panel believes it is likely that Respondent has not derived any commercial advantage from the Yola link or from the website.

The circumstances that UDRP panels have taken into account in considering whether criticism websites generate any rights or legitimate interests for respondents are discussed in detail in paragraph 2.4 of WIPO Overview 2.0 and have been considered in numerous UDRP cases.

In this case, the Panel considers that Respondent's website generates a legitimate interest on the part of Respondent for the following reasons (see e.g., Ironfx Global Limited v. MR Qaisar Saeed Butt / Moniker Privacy Services, WIPO Case No. D2015-1221):

1. The Domain Name does not consist purely of Complainant's FIRSTMERIT trademark or, even, Complainant's trademark plus an anodyne descriptive term; rather, it includes the derogatory term "sucks", thereby signaling its likely purpose.

2. There is no evidence that Respondent has derived any commercial advantage from the website linked to the Domain Name.

3. There is no evidence that the website reflects anything other than Respondent's genuine views, albeit views that are challenged by Complainant.

4. The evidence suggests, on the balance of the probabilities, that the Domain Name was registered and is being used by Respondent genuinely for the purposes he has described.

5. It is clear to Internet users visiting the website linked to the Domain Name that it is not operated by Complainant.

6. Respondent has refrained from registering other domain names reasonably suitable for Complainant's use.

The Panel therefore concludes that Complainant has failed to establish the second element of paragraph 4(a) of the Policy. This conclusion, however, does not reflect a finding by the Panel as to the veracity of the content of Respondent's website or his allegations regarding Complainant. The Panel is in no position to make any such assessment.

C. Registered and Used in Bad Faith

In view of the Panel's finding of a legitimate interest on the part of Respondent, the Panel need not consider in detail Complainant's assertions that Respondent registered and is using the Domain Name in bad faith. Nevertheless, the Panel notes that it is inclined to find that Respondent did not register and use the Domain Name in bad faith because the registration and use of a domain name for a genuine, noncommercial criticism site, if the site is otherwise legitimate, should not be deemed bad faith. See Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.

7. Reverse Domain Name Hijacking

As there is a legitimate disagreement between the Parties, the Panel does not consider this a case of Reverse Domain Name Hijacking.

8. Decision

For the foregoing reasons, the Complaint is denied.

Christopher S. Gibson
Sole Panelist
Date: December 17, 2015