Sovereign Bank v. Boris Karpachev
Claim Number: FA0708001068750
Complainant is Sovereign
Bank (“Complainant”), represented by John
L. Welch, of Lowrie, Lando & Anastasi, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sovereignbank.us> and <sovereignbanksucks.us>, registered with Namesdirect.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Robert T. Pfeuffer, Senior District Judge, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 27, 2007; the Forum received a hard copy of the Complaint on August 28, 2007.
On August 27, 2007, Namesdirect.com, Inc. confirmed by e-mail to the Forum that the domain names <sovereignbank.us> and <sovereignbanksucks.us> are registered with Namesdirect.com, Inc. and that the Respondent is the current registrant of the names. Namesdirect.com, Inc. has verified that Respondent is bound by the Namesdirect.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 26, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on September 24, 2007.
On October 1, 2007 both Complainant and Respondent
submitted to the National Arbitration Forum additional submissions. In its additional submission, Complainant
addresses pages 1 and 2 of Respondent’s Answer regarding Respondent’s
assertions that Sovereign Bank is not
the “real party in interest”.
Complainant points out that Sovereign Bank located in
This additional submission was considered by the Panel and has in fact influenced its decision.
Respondent also filed with the National Arbitration
Forum an additional response which was received by the National Arbitration
Forum on October 1, 2007 and was filed in a timely manner. In his additional submission, Respondent
denies that the Sovereign Bank in
The Respondent’s additional submission has been fully considered by the Panel and its contents noted. The submission did not in any way influence the resulting decision in this matter.
On October 4, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Robert T. Pfeuffer as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The Complainant contends that the <sovereignbank.us> domain name is identical to its SOVEREIGN BANK mark, because the disputed domain name simply adds the country code top-level domain “.us.” It further asserts that it is the owner of a mark registered with the United States Patent and Trademark Office which was issued May 23, 2006 and that it has used that mark in pursing its business for a considerable period prior to that time.
Additionally, Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names and with respect to the assertion by Complainant, the burden of proof has shifted to Respondent to show that he does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
Complainant further contends that the Respondent is using the disputed domain names in an unsuccessful attempt to obtain money from Complainant and thus his registration and use of the disputed names are in bad faith. See Policy ¶ 4(a)(iii).
Respondent alleges that the Complainant is not the real party in interest in this matter, that the disputed domain names <sovereignbank.us> and <sovereignbanksucks.us> do not infringe upon Complainant’s rights to the word mark that it registered on May 23, 2006 and that Respondent’s use of such names is a fair use of the domains under the First Amendment to the United States Constitution. Respondent further alleges that the Complainant should fail because it has failed to allege sufficient factual grounds to support its complaint. Furthermore, Respondent alleges he has made a good faith effort to work out the differences with Complainant over the disputed domain names and that he has not registered them for any purpose to secure money. He alleges his sole purpose is to achieve moral satisfaction for himself and his wife because of allegations of physical injury resulting from an alleged exposure to asbestos in a building which he alleges is owned by Complainant.
C. Additional Submissions
A recitation of the Additional Submissions has been set out above to which the reader is directed.
The Panel is convinced by a preponderance of the evidence that Complainant has well established all of the necessary elements under the Policy to support a finding that under ICANN Policy ¶ 4(a)(i) the disputed domain names registered by Respondent are confusingly similar to the mark heretofore registered by Complainant, that Respondent has no rights or legitimate interests in the names pursuant to Policy ¶ 4(a)(ii) and that Respondent’s registration and use has been in bad faith, see Policy ¶ 4(a)(iii).
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint 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 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
The Panel finds that the Complainant has rights in the SOVEREIGN BANK mark by virtue of its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,094,970 issued May 23, 2006). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).
The Panel further finds that the <sovereignbank.us> domain name is identical to its SOVEREIGN BANK mark, as the disputed domain name merely adds the country code top-level domain “.us,” which the Panel finds fails to sufficiently distinguish the disputed domain name from the mark. The Panel finds that the <sovereignbank.us> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark).
It is a further finding of the Panel that the <sovereignbanksucks.us> domain name is confusingly similar to Complainant’s mark. See Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) (finding the domain name <vivendiuniversalsucks.com> was confusingly similar to the complainant's VIVENDI UNIVERSAL mark, because non-English speakers would associate the domain name with the owner of the trademark); see also Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000) (finding that the complainant, owner of the Federally registered trademark ‘Cabela’s,’ and user of the domain name <cabelas.com> was entitled to relief under UDRP against the respondent for the bad faith registration and use of the domain name <cabelassucks.com> because “by using Complainant’s marks in its domain names, Respondent makes it likely that Internet users entering ‘Cabela’s’ into a search engine will find [<cabelassucks.com>] in addition to Complainant’s site <cabelas.com>.”).
Rights or Legitimate Interests
Policy ¶ 4(a)(ii) states that once the Complainant has made a prima facie case in support of its allegations, the burden shifts to the Respondent to show that he does have rights or legitimate interests pursuant Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is using the <sovereignbank.us> and <sovereignbanksucks.us> domain names to divert Internet users to Respondent’s complaint website. Respondent’s website disparages Complainant and alleges that Complainant is negligent in various business endeavors. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”); see also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark).
Complainant further contends that Respondent is not commonly known by the <sovereignbank.us> and <sovereignbanksucks.us> domain names, as the record indicates that Respondent’s name is “Boris Karpachev,” and Respondent does not own a trade or service mark identical to the disputed domain names. The Panel is convinced and so finds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) and (iii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Registration and Use in Bad Faith
Complainant states that Respondent is using <sovereignbank.us> and <sovereignbanksucks.us> domain names to operate a complaint website that seeks to cast aspersions on Complainant’s business after an unsuccessful attempt to obtain money from Complainant. Complainant further asserts that such disparaging use of the SOVEREIGN BANK mark will cause a disruption of its business. The Panel finds that such use is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) (finding the respondent's use of the complainant's mark to redirect Internet users to a website dedicated to criticizing the complainant was evidence that the respondent’s domain names were registered and used in bad faith); see also Nw. Airlines, Inc. v. Jorgenson, FA 96586 (Nat. Arb. Forum Mar. 28, 2001) (“Respondent registered the domain name for the purpose of bringing Internet users desiring to learn more about Complainant to Respondent's site for the intended purpose of publishing contrary and critical views of Complainant thus disrupting the business of Complainant. Registering a domain name identical with the mark of Complainant, for this purpose, is bad faith.”); see also Jenner & Block LLC v. Defaultdata.com, FA 117310 (Nat. Arb. Forum Sept. 27, 2002) (“Respondent’s argument that there is an inherent conflict between the Internet and the Constitutional right to free speech at the address to a business sounds impressive but is no more correct that than the argument that there is a Constitutional right to intercept telephone calls to a business in order to speak to customers. Respondent’s conduct is not the equivalent of exercising the right of free speech outside Complainant’s business street address but of impermissibly blocking traffic to that street address.”).
Having established all three elements required by the usTLD Policy, the Panel concludes that all relief sought by Complainant shall be GRANTED.
Accordingly it is Ordered that the <sovereignbank.us> and <sovereignbanksucks.us> domain names be TRANSFERRED from Respondent to Complainant.
ROBERT T. PFEUFFER, Senior District Judge, Panelist
Dated: October 18, 2007
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