WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dollar Bank, Federal Savings Bank v. Paul Stapleton, The New Media Factory
Case No. D2016-0518
1. The Parties
Complainant is Dollar Bank, Federal Savings Bank of Pittsburgh, Pennsylvania, United States of America, represented by Metz Lewis Brodman Must O'Keefe LLC, United States of America.
Respondent is Paul Stapleton, The New Media Factory of Boulder, Colorado, United States of America, self-presented.
2. The Domain Name and Registrar
The disputed domain name <dollarbankers.com> 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 March 16, 2016. On March 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact detail.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on March 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2016. The Response was filed with the Center on April 9, 2016.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on April 18, 2016. 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 the owner of registration of the word service mark DOLLAR BANK on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3,539,973, registration dated December 2, 2008, in international class (IC) 36, covering banking services, application for registration filed April 14, 2008. Complainant is the owner of registration of the word service mark DOLLARBANK.COM, registration number 3,562,865, registration dated January 20, 2009, in IC 36, application for registration filed February 1, 2000.
Complainant is a United States bank corporation located in Pennsylvania, United States of America.
Complainant operates a commercial Internet website at "www.dollarbank.com". The "about us" information provided at that website indicates that Complainant has been doing business in Pennsylvania for 161 years, and has "has grown to become a large, full service, regional bank". According to an "historical timeline" at the about us page, the name of the institution was changed from "Dollar Savings Bank" to "Dollar Bank" in 1984. Further according to that historical timeline: "March 1997 - Dollar Bank becomes the 17th bank in the country to offer Online Banking via the Internet."
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, and undisputed by the parties, the record of registration of the disputed domain name was created on August 23, 2007. Respondent has been the registrant since the creation date.
The disputed domain name is directed to a nondescript parking page hosted by the Registrar, indicating that the disputed domain name is for sale by auction. Respondent had offered the disputed domain name at a "by it now" price of USD 4,995.
Respondent has provided evidence in the form of printouts from GoDaddy Auctions that he owns and is offering for sale over 80 domain names by auction. Complainant asserts he is the registrant of 405 domain names.
By email letter dated March 7, 2016, Complainant through its counsel advised Respondent of its belief that Respondent was infringing Complainant's trademark rights through registration and use of the disputed domain name, and Complainant offered to purchase the disputed domain name for USD 500. Respondent rejected this offer.
5. Parties' Contentions
Complainant asserts that it is the owner of rights in the trademarks DOLLAR BANK and DOLLARBANK.COM and that the disputed domain name is confusingly similar to its trademarks.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because: (1) Complainant has not granted permission to Respondent to use its trademarks; (2) Respondent's use of the disputed domain name has no connection to a bona fide offer of goods or services; (3) Respondent has not been commonly known by the disputed domain name or its parts, and; (4) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent is using the disputed domain name to direct Internet users for commercial gain to his website for commercial gain by creating confusion as to whether Complainant is the source, sponsor, affiliate or endorser of the website associated with the disputed domain name; (2) it is not immediately apparent to Internet users that the website associated with the disputed domain name is not associated with Complainant, and; (3) Respondent has offered to sell the disputed domain name by auction and has listed the name in the category "Business-Banking & Money" to "insinuate a connection to Complainant and/or" its marks.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent argues that the disputed domain name is not confusingly similar to Complainant's service marks, as the suffix "ers" added to "bank" creates an entirely new word with a different meaning. Respondent argues that the disputed domain name is not "phonetically or aurally similar" to Complainant's marks. Respondent contends there is no risk that Internet users would draw a connection between the disputed domain name and Complainant and/or its goods or services.
Respondent contends that the words "dollar" and "banker" even in combination are common and generic, and "The phrase can easily be used without intent to refer to Complainant."
Respondent argues that he has been an investment banker servicing Internet businesses for over 20 years and has always been compensated in dollars. He argues that his intent to use the disputed domain name in conjunction with his business background constitutes evidence of rights or legitimate interests.
Respondent contends that selling generic and descriptive domain names which are related to finance establishes rights or legitimate interests. Respondent further contends that using a disputed domain name to operate a parking website can be a bona fide offer of goods or services.
Respondent argues that the Complaint in this proceeding should be barred by laches since Complainant is a 161-year-old financial institution managing over USD 7 billion, has outside legal counsel, is sophisticated with regard to trademark law, Internet presence and business in general, and that Complainant would have taken action in a timelier manner had the disputed domain name been disruptive or confusing.
Respondent contends that the disputed domain name was registered on August 23, 2007, which is prior to Complainant's service mark registrations of January 20, 2009 for DOLLARBANK.COM and December 2, 2008 for DOLLAR BANK. Respondent alleges that the first to register a domain name should prevail when the domain name is a generic word and that word is widely used as a trademark or service mark.
Respondent contends that the disputed domain name was not registered or acquired for the purpose of selling or transferring it to Complainant. Respondent argues that he registered the disputed domain name because of his career in investment banking which inspired a business idea. He has failed to develop that idea, and he is now offering to sell the disputed domain name on GoDaddy Auctions. Respondent argues that this does not constitute bad faith.
Respondent argues there is nothing misleading on his website that would create confusion with operations of Complainant.
Respondent argues he was unaware of Dollar Bank until the Complaint was filed, and that Complainant operates only in Pennsylvania.
Respondent contends that he never solicited purchase of the disputed domain name by Complainant.
Respondent requests a finding of reverse domain name hijacking on grounds that the disputed domain name was registered prior to the service mark registrations of Complainant, and that Complainant has provided no evidence of bad faith on the part of Respondent.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent. Respondent by his filing of the Response has confirmed receipt of the Complaint. The Center followed the procedures for notification established by the Rules. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by Complainant to merit a finding that Respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the service marks DOLLAR BANK and DOLLARBANK.COM by registration at the USPTO, as well as by use in commerce in the United States (see Factual Background, supra). Respondent has referred to the dates upon which Complainant's service mark rights were registered in addressing the issue of bad faith, and the Panel will revert to that. Respondent has not, however, challenged Complainant's rights in the service marks as such. The Panel determines that Complainant has rights in the service marks DOLLAR BANK and DOLLARBANK.COM.
The disputed domain name incorporates the service marks of Complainant, adding the suffix "ers" to the word "bank". The suffix "ers" added to the noun "bank" to form "bankers" may generally be understood to add reference to the persons who operate the bank. The operators of "Dollar Bank" may well be referred to as "dollar bankers". In the Panel's view, the terms "dollar bank" and "dollar bankers" are substantially similar from a visual and aural standpoint. The term "dollar bank" does not have an inherent common or generic meaning. Use of the term "dollar" (referring to the currency unit of the United States of America) in combination with the term "bank" (referring to a depository institution) is not a common phrase or generic reference in the English language. Adding the suffix "ers" to "bank" modifies Complainant's service mark term to refer to persons operating the bank rather than the institution, but such reference would be an expected modification of the term "dollar bank" for Internet users. The Panel determines that the disputed domain name is confusingly similar to Complainant's service marks.
The Panel has determined that Complainant has rights in the service marks DOLLAR BANK and DOLLARBANK.COM, and that the disputed domain name is confusingly similar to those service marks.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c)).
Complainant's allegations to support Respondent's lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Use of a domain name in connection with a parking page and/or offering it for sale does not preclude the owner of registration from establishing rights or legitimate interests. However, establishing rights or legitimate interests requires more than Respondent has shown in this proceeding. Respondent has not provided evidence of a concrete business plan that might have made use of the disputed domain name. Moreover, while registration of generic terms as domain names and offering them for sale may constitute a legitimate business, Respondent has not established that the combination term "dollarbankers.com" is generic or commonly descriptive. Registration of that term with intent to sell does not establish rights or legitimate interests, whether or not associated in the interim with a parking page.
The Panel determines that Respondent has failed to rebut Complainant's prima facie showing. The Panel determines that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of the registration and use of a domain name in bad faith. These are "(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] web site or location or of a product or service on [the respondent's] web site or location."
Respondent's principal defense to a finding of registration and use in bad faith is that the disputed domain name was registered following the dates of registration of Complainant's service marks. Respondent is correct that registering a domain name prior to a complaining party's establishment of trademark rights generally precludes a finding of bad faith registration in so far as a registrant is not attempting to unfairly take advantage of rights that have not been established. However, Respondent is facing a different set of facts here.
As Respondent acknowledges, Complainant has been in business for a long time, at least on a regional basis, and apparently has been using the name Dollar Bank in commerce since 1984. Complainant's rights in its service mark DOLLAR BANK did not arise as of the date registration was formally granted by the USPTO. Complainant's rights arose substantially before that through use in commerce. It appears that Complainant was an early adopter of Internet banking, and has maintained an online presence since the late 1990s. Finally, although Complainant may not have formally secured registration of its service marks until 2008 and 2009, it filed applications substantially before that. A search of the USPTO database in 2007 (when the disputed domain name was registered) would have revealed Complainant's application for DOLLARBANK.COM, at least alerting Respondent to Complainant's assertion of service mark rights.
Respondent asserts that he is a "domainer" with experience dating back to 1999. The disputed domain name was registered in 2007. At that time, a basic Google search would have revealed Complainant's business. A search of the USPTO database would have revealed Complainant's service mark application for DOLLARBANK.COM.1 In sum, a basic Google search would have established Complainant's online presence and well-established business at the time the disputed domain name was registered.
The Panel concludes that Complainant had rights in its service marks prior to Respondent's registration of the disputed domain name. Respondent's registration may therefore entail bad faith.
Respondent has used the disputed domain name solely in connection with a GoDaddy Auction offering it for sale. Long-standing UDRP jurisprudence establishes that an offer for sale need not specifically target a trademark owner in order to evidence registration in bad faith. See, e.g., Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044.
Respondent registered the disputed domain name which is confusingly similar to Complainant's service marks, and has offered it for sale to the public at a price that appears to be substantially in excess of his costs associated with the disputed domain name. Respondent is seeking to take unfair financial advantage of goodwill associated with Complainant and its service marks. Respondent has provided no reasonable justification for his 2007 registration of the disputed domain name other than to take advantage of that goodwill.
The Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
The Panel will direct the Registrar to transfer the disputed domain name to Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <dollarbankers.com> be transferred to the Complainant.
Frederick M. Abbott
Date: April 24, 2016
1 Respondent wishes to claim legitimate business interests as a buyer and seller of domain names, yet at the same appears to rely on a lack of knowledge regarding how to determine whether a third party has service mark rights.