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

And*

U.S. Bancorp Licensing, Inc. v. web master

Claim Number: FA0203000110782

PARTIES

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.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <us-bank.biz> and <u-s-bank.info>, registered with NameSecure.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

 

            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).

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES CONTENTIONS

            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 <us-bank.biz> was submitted late.  It will not be considered.

 

            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

 

FINDINGS

 

(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).

 

DISCUSSION

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.”

 

Bona Fide Business or Commercial Use

 

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).

 

Identical and/or Confusingly Similar

 

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.

 

Rights or Legitimate Interests

 

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.

 

 

 

 

 

Registration and Use in Bad Faith

 

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.

 

DECISION

           

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.

 

 

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