COMBINED
RESTRICTIONS DISPUTE
RESOLUTION POLICY
UNIFORM DOMAIN NAME DISPUTE
RESOLUTION POLICY
DECISION
U.S. Bancorp Licensing, Inc. v. Frederick
W. Scalise, Ph.D.
Claim Number: FA0203000106124
Claim Number: FA0203000110782
Complainant is U.S. Bancorp Licensing, Inc., Minneapolis, MN (“Complainant”)
represented by Michael L.Gannon, Esquire of Fish & Richardson, P.C., P.A. Respondent is Frederick W. Scalise a/k/a web
master, Elmira, OR (“Respondent”) pro se.
The domain names at issue are <us-bank.biz> and <u-s-bank.info>, registered with NameSecure.com, Inc.
The undersigned certifies that he has
acted independently and impartially and to the best of his knowledge, has no
known conflict in serving as Panelist in this proceeding.
M.
KELLY TILLERY, ESQUIRE,
as Panelist.
A) <us-bank.biz>
Complainant submitted a Complaint to the
National Arbitration Forum (“the Forum” electronically on March 28, 2002: the
Forum received a hard copy of the Complaint on March 28, 2002.
On March 29, 2002, NameSecure.com, Inc.
confirmed by e-mail to the Forum that the domain name <us-bank.biz> is registered with NameSecure.com, Inc. and that
the Respondent is the current registrant of the name. NameSecure.com, Inc. has verified that Respondent is bound by the
NameSecure.com, Inc. registration agreement and has thereby agreed to resolve
domain name disputes brought by third parties in accordance with the Restrictions
Dispute Resolution Policy (the “RDRP Policy”) and the Uniform Domain
Name Dispute Resolution Policy (the “UDRP Policy”).
On March 29, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 18, 2002 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent pursuant to
paragraph 2(a) of the Rules for the Uniform Dispute Resolution Policy as
supplemented by the Supplemental Restrictions Dispute Resolution Policy (the
“Rules”).
A timely Response was received and
determined to be complete on April 16, 2002.
Complainant’s timely Additional
Submission was received on April 19, 2002.
Respondent’s Additional Submission was received after the deadline for
submissions.
On April 30, 2002, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the
Forum appointed M. KELLY TILLERY, ESQUIRE as Panelist.
B)
<u-s-bank.info>
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on April 23, 2002; the Forum received a hard copy of the
Complaint on April 24, 2002.
On
April 26, 2002, NameSecure.com, Inc. confirmed by e-mail to the Forum that the
domain name <u-s-bank.info> is
registered with NameSecure.com, Inc. and that the Respondent is the current
registrant of the name. NameSecure.com,
Inc. has verified that Respondent is bound by the NameSecure.com, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
April 29, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 20,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@u-s-bank.info by e-mail.
A
timely Response was received and determined to be complete on May 20, 2002.
On May 22, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed M. KELLY
TILLERY, ESQUIRE as Panelist.
C) CONSOLIDATION
On April 23, 2002, Complainant filed a Petition to
Consolidate these two cases. Upon
consideration of the Petition and Respondent’s Response thereto, the two cases
were ordered consolidated on May 6, 2002 in accord with UDRP 4(f).
Complainant requests that the domain
names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it is the
owner of the following service marks registered with the U.S. Patent and
Trademark Office for banking and a number of related financial services:
MARK U.S.P.T.O. REGISTRATION# DATE OF REGISTRATION
US
BANK 1,481,868 3/22/88
USBANK 2,445,731 4/24/01
USBANK.COM 2,445,732 4/24/01
WWW.USBANK.COM 2,493,878 10/2/01
US
BANK&DESIGN 2,247,138 5/25/99
US
BANK & DESIGN 2,247,139 5/25/99
US
BANK & DESIGN 2,431,976 2/27/01
Complainant contends that Respondent has
violated the RDRP 4(a) in that Respondent is not using the <.biz> domain
name in question for a bona fide business or commercial
purpose. Rather, Complainant contends
that domain names resolve to a website created by Respondent to criticize
Complainant. Complainant contends that
Respondent describes his site as “non-commercial gripe site . . . not
associated with or condoned or otherwise sanctioned by U.S. Bank.” Complainant contends that the site located
by the domain name evidences no “ use or bona fide intent to use
the domain name or any content software, materials, graphics, or other
information thereon, to permit Internet users to access one or more host
computers through the D.N.S.: (i.) to
exchange goods, services or property of any kind; or (ii.) in the ordinary
course of trade or business; or (iii.) to facilitate the exchange of goods,
services, information or property of any kind or the ordinary course of trade
or business.” RDRP 4(b).
Complainant contends that Respondent
initially registered the <.biz> domain name with the additional purpose
of attempting to sell or lease it for compensation in violation of the
<.biz> registration restrictions and RDRP 4(c). Complainant contends that this is in violation of RDRP 4(c) which
provides that “neither selling, trading or leasing the domain name for
compensation” nor “the unsolicited offering to sell, trade or lease the domain
name for compensation” constitute a “bona fide business or commercial use” of
the domain name.
Complainant contends that the RDRP and
the <.biz> registration restrictions expressly provide that “[u]sing or
intending to use the domain name exclusively for the expression of
non-commercial ideas (e.g., registering exclusively to criticize or
otherwise express an opinion on the products or services of [a] company with no
other business or intended purpose”) shall not constitute a bona fide
business or commercial purpose of that domain name.
Complainant contends that both domain
names at issue are plainly identical and/or confusingly similar to
Complainant’s family of “US Bank” service marks which have been in continuous
use since as early as 1963.
Complainant contends that the use of its
marks long proceed the registration of both domain names in question by
Respondent and that each of the above-referenced Federal Service Mark
Registrations pre-date Respondent’s registration of the domain names in
question.
Complainant contends that Respondent has
no legitimate rights or interest in the domain names in question because (1)
Respondent has neither used nor had any bona fide intent to use
the domain name in connection with a bona fide business or
commercial offering, (2) Respondent has never been commonly known by the domain
names and (3) Respondent is not making, and has never made, a legitimate,
non-commercial or fair use of the domain names without intent for commercial
gain to misleadingly divert consumers or to tarnish the US Bank marks.
Complainant contends that although
Respondent has now removed the offers to sell or lease the domain names from
his website, such offers were on the website initially.
Complainant contends that Respondent is
using the website to air his negative opinions about Complainant as well as to
derive revenue from a variety of click-through and pop-up advertising present
on his site. Thus Respondent is
attempting to profit from his purportedly non-commercial use of the domain
names.
Respondent contends that even though
Respondent may have a right to establish a commentary or opinion website,
Respondent is not necessarily entitled to use Complainant’s mark as part of its
address for such a website.
Complainant contends that Respondent
registered the domain names in bad faith since they were registered long after
Complainant had adopted, used and secured multiple Federal Service Mark
Registrations for its USBANK marks and that Respondent knew or should have
known of Complainant’s rights in the mark prior to registering the offending
domain names.
Complainant argues that Respondent had
constructive and indeed no doubt actual knowledge of U.S. Bank’s trademark
rights. Complainant contends that
considering the content of Respondent’s website as well Respondent’s
admissions, Complainant need not rely on the constructive knowledge provisions
of the Lanham Act, since Respondent clearly had actual knowledge of US Bank’s
rights in its US Bank marks.
Complainant contends that Respondent had
initially launched his website using the site to offer the <us-bank.biz>
domain name for sale or lease and this is direct evidence of bad faith under
UDRP 4(b)(i). Complainant further
contends that Respondent has registered and used the domain names for the
purpose of “disrupting the business of the competitor” as prohibited by UDRP
4(b)(iii). Complainant does not contend
that Respondent provides the same types of services that Complainant does but rather
that Respondent “competes” for the attention of internet users and therefore a
“competitor” as the term is used in the UDRP.
B. Respondent
Respondent contends that the domain names
are not and will not be used primarily for a bona fide business
of commercial purpose and that Respondent was unaware of this requirement when
he registered the <.biz> domain name.
Respondent contends that he registered
the domain names exclusively to criticize the services of Complainant with no
intention to sell, trade or lease the domain name for compensation.
Respondent contends that Complainant has
never registered “US-BANK” (with hyphen) as a trademark, has never used
“US-BANK”, has never used a domain name incorporating US-BANK and therefore has
no legitimate rights in the mark “US-BANK.”
Respondent contends that the dash or hyphen has significance and is
commonly used to add distinction between potentially similar names. Respondent contends that domain names that
include “US Bank” or some variation of “US Bank” are in general usage on the
internet and that its extensive use of these two generic terms and domain names
is without any confusing similarity.
Respondent contends that its activity is
a legitimate non-commercial fair use of “US-BANK” as it accurately describes
the topic matter contained in Respondent’s website and that the content of
Respondent’s website represents non-commercial speech in the form of fair
comment and must be afforded First Amendment protection.
Respondent contends that it has not registered
the domain names in bad faith nor is it using them in bad faith. Respondent has not registered them primarily
for the purpose of selling, renting or otherwise transferring the domain name
to Complainant or to a competitor of Complainant; Respondent has not registered
in order to prevent Complainant from reflecting its mark and corresponding
domain name; and Respondent has not registered the domain name primarily for
the purpose of disrupting the business of a competitor. Respondent contends that it is not using the
domain name intentionally to attract, for commercial gain, internet users to
his website 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 his website or location or of a product or service on his website
location.
C. Additional Submissions
(1) Complainant
Complainant contends that Respondent now
admits and proclaims Complainant’s rights in its U.S. Bank marks.
Complainant contends that Respondent’s
admitted motivation to host a website critical of Complainant depends on the
confusingly similarity in order to drive traffic to his site. Complainant contends that the UDRP provides
no defense to a Respondent on the basis of third party use of or even
registration for marks or domain names similar to the mark claimed by
Complainant. Complainant contends that
Respondent’s website containing one-sided critical commentary and occasional
offers to sell the domain names are activities that do not suffice to establish
a legitimate interest in the domain names.
Complainant contends that Respondent does not and can not cite any
authority for the proposition that his one-sided critical commentary of
Complainant gives him a First Amendment right to use Complainant’s Federally
Registered trademarks and internet domain names.
Complainant contends that Respondent has
acknowledged that his internet website contained and offer to sell or lease the
domain name, that Respondent has not explained how the words “the domain
http://www.us-bank.biz is for sale or lease” constitutes any form of satire or
how that offer is in any way thus a response to a message board posting.
Complainant contends that Respondent
offers nothing more than bare denials that he is engaged in the conduct
prohibited by UDRP 4(b) and that Complainant has in contrast produced evidence
of Respondent’s lack of compliance therewith.
(2) Respondent
Respondent’s Additional Submission
for <u-s-bank.info> was filed timely.
Respondent contends that others use the
mark “US BANK” such as a bank headquartered in Johnstown, Pennsylvania which
began using the name in 1950 and a second “US BANK” headquartered in Nashville,
Tennessee. Respondent thus contends
that “US BANK” has had common and widespread use throughout the U.S. in
reference to a significant number of other banking institutions other than
Complainant.
Respondent acknowledges that Complainant
successfully convinced U.S. Bank of Johnstown to relinquish its name.
Respondent
also contends that the term “US BANK” has been incorporated into names of, and
has been commonly used by, a number of other legitimate companies such as “US
Bank Supply” and “US Bank Equipment” and their corresponding internet domain
names.
Respondent contends that Complainant has
offered no evidence that Respondent benefits from any commercial gain in
registering or using the domain names in question. Respondent acknowledges that banner advertising is placed on
Respondent’s website by the web hosting service, but Respondent contends that
he receives no revenue from this advertising and has no control over the specific
placement or contact of any such advertising by the web host. Respondent contends that he has no knowledge
of who is adding the pop-up advertising that Complainant claims to experience.
Respondent reiterates that his use is a
clearly legitimate and fair use of the domain names without intent of
commercial gain, and that he operates a website which relates to his experience
as a customer of Complainant and which provides information from public sources
about Complainant.
Respondent contends that Complainant has
failed to provide evidence that Respondent has registered any disputed domain
name for the purpose of selling the domain name to the trademark owner or
others for profit. Respondent contends
that Complainant has failed to submit evidence that Respondent has registered
the disputed domain names for the purpose of disrupting the business of the
competitor.
Respondent claims its use of the disputed
domain names for a bona fide website is not directly competitive
with Complainant’s business and thus should engender no consumer confusion
(1) Complainant
has met its burden to prove by a preponderance of the relevant, admissible and
credible evidence that Respondent is not currently using the domain name <usbank.biz>
for a bona fide business or commercial purpose. RDRP 4(a).
(2) Complainant
has met its burden to prove by a preponderance of the relevant, admissible and
credible evidence that the domain names registered by Respondent are identical
or confusingly similar to service marks in which Complainant has rights. UDRP 4(a)(i).
(3) Complainant
has met its burden to prove by a preponderance of the relevant, admissible and
credible evidence that Respondent has no rights or legitimate interests in
respect to the domain names in question.
UDRP 4(a)(ii).
(4) Complainant
has met its burden to prove by a preponderance of the relevant, admissible and
credible evidence that Respondent’s domain names have been registered and are
being used in bad faith. UDRP
4(a)(iii).
Paragraph 15(a) of the Rules instructs
this Panel to “decide a Complainant on the basis of the statements and
documents submitted in accordance with the Policy, these Rules and any rules
and principles of law that it deems applicable.”
Paragraph 4(a) of the UDRP Policy
requires that the Complainant must prove each of the following three elements
to obtain an order that a domain name should be cancelled or transferred:
(1)
the domain
name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights;
(2)
Respondent
has no rights or legitimate interests in respect of the domain name; and
(3)
the domain
name has been registered and is being used in bad faith.
Paragraph 4(b) of the RDRP Policy defines
“bona fide business or commercial use” as the bona fide
use or bona fide intent to use the domain name or any content
software, materials, graphics or other information thereon, to permit Internet
users to access one or more host computers through the DNS:
(1)
to exchange
goods, services, or property of any kind; or
(2)
in the
ordinary course of trade or business; or
(3)
to
facilitate the exchange of goods, services, information, or property of any
kind or the ordinary course of trade or business.”
Both Complainant and Respondent appear to
be in agreement that Respondent’s uses of these domain names are not for a bona
fide business or commercial use.
Under these circumstances, Plaintiff has
met its burden to prove by a preponderance of the relevant, admissible and
credible evidence that Respondent does not currently use the domain name <usbank.biz>
for a bona fide business or commercial purpose. RDRP 4(a).
Complainant
has presented substantial evidence that it owns numerous registered service marks
for “US BANK” and variations thereof registered in the U.S. Patent and
Trademark Office. Both Complainant and
Respondent are located in the U.S.
Respondent does not contest these registrations or the factual
allegations associated therewith regarding use. Complainant clearly has rights in and to these service
marks.
The only difference between Respondent’s
domain names and Complainant’s registered service marks is that Respondent
places a hyphen between “US” and “BANK.”
Where the only difference between a mark
and a domain name is the presence of a hyphen between the two prominent
elements of the mark, such is not sufficient to negate confusingly
similarity. Numerous ICANN Panels have
ruled similarly. See Draw-Tite v.
Plattsburgh Spring, D2000-0017 (WIPO Mar. 14, 2000) (<drawtite.com>
is “confusingly similar” to “Draw-Tite” trademark despite lack of hyphen in
domain name); see also Channel Tunnel Group v. Powell, D20000-0038 (WIPO
Mar. 17, 2000) (<euro-tunnel.com> is “confusingly similar” to “Eurotunnel”
trademark despite lack of hyphen in domain name); see also Transamerica v.
Inglewood Computer Servs., D2000-0690 (WIPO Aug. 20, 2000)
(<trans-america.com> is “confusingly similar” to trademark “Transamerica”
despite hyphen in domain name); see also Quotesmith.com v. Noble,
D2000-1088 (WIPO Nov. 9, 2000) (hyphen is of de minimis importance); see
also Ranstad Holding v. Brazilai, D2001-0649 (WIPO July 8, 2001) (hyphen
not significant); see also Chernow Communications, Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (hyphen not significant); see also Nortel
Networks Limited v. Gremer, FA 104104 (Nat. Arb. Forum Mar. 15, 2002)
(hyphen alone does not negate confusing similarity).
Under these circumstances, Complainant
has met its burden to prove by a preponderance of the competent, credible and
admissible evidence that the domain names registered by Respondent are
confusingly similar to service marks to which Complainant has rights.
Respondent argues that it has rights and
legitimate interests in and to the domain names in question since it is merely
utilizing same to exercise his First Amendment rights to criticize the services
of Complainant. Respondent is thus
arguing for the benefit of UDRP 4(c)(iii) which, if applicable, might establish
that he has rights to or legitimate interest in the domain names because he is
making a legitimate, non-commercial or fair use of the domain names, without
intent for commercial gain to misleadingly divert customers or to tarnish the
trademark or service mark at issue.
Complainant contends and Respondent does
not deny that his website includes banner advertisements. Although Respondent contends that he
receives no monetary benefit from those advertisements and they are placed there
by his web hosting company over which he has no control, without any
corroborating evidence thereof, this Panel finds that difficult to
believe. Complainant also contends that
pop-up advertisements appear on the website, although Respondent denies any knowledge
of same. Under these circumstances,
there is a serious question as to whether Respondent’s site is in fact
“non-commercial.” If it has any
commercial element, Respondent may not have the benefit of UDRP 4(c)(iii). However, for other and additional reasons,
this Panel need not decide that issue.
While the First Amendment to the U.S.
Constitution entitles Respondent to a number of rights and benefits, this
Record includes no evidence or legal argument to the effect that one of them
would or should be the right to utilize the service marks of Complainant in
domain names without specific, written authorization of Complainant which
Respondent clearly does not have.
There is no question that it is the
obvious intent of Respondent to “divert customers” and it is certainly the
intent of Respondent to “tarnish” the image of
Complainant if not its service marks.
Under all of these circumstances,
Complainant has met its burden to prove by a preponderance of the competent,
credible and admissible evidence that Respondent has no rights or legitimate
interests in the respect of the domain names.
Complainant contends and Respondent does
not deny that Respondent was aware of at least some of Complainant’s service
mark registrations and uses prior to registering the domain names in
question. Respondent merely claims that
he believed in good faith that such registrations would not infringe upon any
rights of Complainant. There is no
question that the use of these domain names will in fact confuse the
internet-roaming public and will divert traffic of customers and potential
customers of Complainant to Respondent’s website. In fact, Respondent has made it clear that such is precisely his
intent – to draw people interested in Complainant’s company to his website and
this will, of course, occur whether they are really interested in his website
or Complainant’s.
Respondent seems to contend that such
“initial interest confusion” can and is remedied by disclaimer. However, this Panel finds that such
disclaimers are inadequate to dispel “initial interest and confusion.” By the time an internet surfer arrives at
the “wrong” website, he or she has already been deceived and the business of
Complainant has been disrupted. Indeed,
if there is a commercial purpose to Respondent’s website, Respondent has gained
the benefit of this deception for commercial purposes. Respondent’s argument would be much stronger
and have more merit if the domain name itself included a disclaimer or some
other element which clearly told the reader that it was not the site of the
owner of the “US BANK” service marks.
For example, an internet surfer would be unlikely to believe that a site
entitled “usbanksucks” is sponsored by or affiliated with Complainant. Respondent’s domain names include no such
disclaimers or obvious “warnings.”
Numerous ICANN Panels have held that such
“criticism” sites do not constitute “fair use” of a mark under
the U.D.R.P. See Estee Lauder, Inc. v. estelauder.com, D2000-0869 (WIPO
Sept. 25, 2000) (finding the Respondent’s use of domain names comprised of the
Complainant’s marks to constitute bad faith diversion of Internet traffic and
disruption of the Complainant’s business); see also Dixons Group Pic v.
Abdullah, D2000-1406 (WIPO Jan. 18, 2001) (finding that a respondent’s use
of domain names comprised of the complainant’s mark disrupts the complainant’s
business in bad faith); see also E. & J. Gallo Winery v. Hanna Law Firm,
D2000-0615 (WIPO Aug. 3, 2000); see also Mission KwaSizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000); see also Louis Vuitton Malletier v. Prade,
D2000-1115 (WIPO Oct. 13, 2000); see also Hunton & Williams v. Am.
Distribution Sys., D2000-0501 (WIPO Aug. 1, 2000); see also Rolex Watch USA, Inc. v. Spider Webs,
Ltd., D2001-0398 (WIPO July 2, 2001) (finding the respondent’s
registration of domain names comprising of the complainant’s marks for a
criticism website was in bad faith); see also Monty & Pat Roberts, Inc.
v. Bartell, D2000-0300 (WIPO June 13, 200) (finding a respondent’s use of a
domain name for a news criticizing the complainant disrupts the complainant’s
business).
Even shareholder “gripe” sites have been
found to use a complainant’s marks in bad faith. See Geniebooks.com Corp. v. Merrit, D2000-0266 (WIPO July
26, 2000); see also Compagnie de Saint Gobain v. Com-Union Corp.
D2000-0020 (WIPO Mar. 14, 2000).
Under
these circumstances, Complainant has met its burden to prove by a preponderance
of the competent, credible and admissible evidence that the domain name has
been registered and is being used in bad faith.
Complainant’s request for relief is granted. The domain names <us-bank.biz> and
<u-s-bank.info> shall be transferred to Complainant.
M. KELLY TILLERY, ESQUIRE, Panelist
Dated: June 19, 2002
Philadelphia, PA
* Consolidated under U.D.R.P. 4(f) by Order dated May 6, 2002.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page