MerchantWarehouse.com, Inc.
d/b/a Capital Bankcard v. Domain for sale or partner c/o Richard Morris
Claim Number: FA0710001093690
PARTIES
Complainant is MerchantWarehouse.com, Inc. d/b/a Capital
Bankcard (“Complainant”), represented
by Laura M. Franco, of Manatt, Phelps & Phillips LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalbankcard.com> (hereinafter,
“Disputed Domain Name”), registered with Register.com, Inc.
PANEL
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.
Kendall C. Reed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 11, 2007; the
National Arbitration Forum received a hard copy of the Complaint on October 15, 2007.
On October 11, 2007, Register.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <capitalbankcard.com> domain name is
registered with Register.com, Inc. and
that the Respondent is the current registrant of the name. Register.com,
Inc. has verified that Respondent is bound by the Register.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 October 19, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 8, 2007 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@capitalbankcard.com by
e-mail.
A timely Response was received and determined to be complete on November 6, 2007.
A timely Additional Submission was received from Complainant on
November 13, 2007.
On November 13, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Kendall C. Reed as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is MerchantWarehouse.com, Inc., which was founded in
1998. It has “since become one of the
most respected providers of credit card payment processing services, software
and equipment in the merchant services industry.”
Since at least as early as 1998, Complainant has been using the CAPITAL
BANKCARD service mark in connection with credit card transaction processing
solutions for banks and their customers.
“Complainant serves over 40,000 merchants and processes over
$1,000,000,000 annually in Visa® and MasterCard® sales.”
Compliant has continuously and extensively used the CAPITAL BANKCARD trademark
in connection with credit card transaction processing solutions for banks and
their customer since at least as early as 1998.
On March 12, 1999 Complainant filed a fictitious business name
statement for the business name “Capital Bankcard.” A copy of a relevant LexisNexis public records
search is provided as an exhibit.
In 1998 Complainant registered the domain name <capitalbankcard.com>, which registration inadvertently
lapsed on August 21, 2001. Invoices for this domain name showing invoicing to
Complainant back to 2000 are provided as exhibits.
On August 22, 2001, Respondent registered the Disputed Domain
Name. A relevant WHOIS lookup is
provided as an exhibit.
On December 5, 2001, Complainant registered the domain name
<capitalbankcard.net> and has continuously and extensively used that
domain name since approximately that date.
A relevant WHOIS lookup is
provided as an exhibit.
April 23, 2007, Complainant filed a trademark application for “CAPITAL
BANKCARD,” in which application Complaint claimed a date of first use of June
30, 1998. A copy of a relevant United States Patent and Trademark Office
Trademark Electronic Search System report is provided as an exhibit.
Respondent’s domain name is identical or confusingly similar to
trademarks and service marks which Complainant has rights. The Disputed Domain Name is identical to
Complainant’s CAPITAL BANKCARD mark. The
addition of a top-level domain name, “.com,” does not distinguish the Disputed
Domain Name from Complainant’s mark.
Respondent has no rights or legitimate interests in respect of the
Disputed Domain Name.
Complainant has prior and senior rights in the CAPITAL BANKCARD
mark. Complainant began using the
CAPITAL BANKCARD mark in connection with its services since at least as early
as 1998. Complainant also owned the
Disputed Domain Name since at least as early as 1998, which pre-dates
Respondent’s 2001 registration.
Respondent is not commonly known by
the Disputed Domain Name.
Respondent is not making a legitimate noncommercial or fair use of the
Disputed Domain Name. Since Respondent’s
registration, the Disputed Domain Name has been located to a parked
website. Respondent’s failure to make
any legitimate use of the Disputed Domain Name over the past seven years
clearly evidences a lack of any intention to use the Disputed Domain Name in
connection with a bona fide offering
of goods or services. Sample printouts of archived websites dating back to
August 6, 2002 are provided as exhibits.
Further, Respondent made repeated attempts to sell the Disputed Domain
Name back to Complainant, removing all doubt that Respondent was aware of
Complainant and its rights in the CAPITAL BANKCRD trademark. Further still, Respondent registered the
Disputed Domain Name knowing that it had previously been registered by another
person whose registration had recently lapsed, and Respondent could have easily
discerned Complainant’s rights in the domain name by making reasonable
inquiry.
As a result of Complainant’s widespread use of the CAPITAL BANKCARD
trademark, Respondent can make no use of the Disputed Domain Name that would
not cause a likelihood of confusion.
Respondent’s opportunistic registration of the Disputed Domain Name
after it inadvertently lapsed is evidence of Respondent’s lack of rights or
legitimate interests in the Disputed Domain Name.
Respondent’s willingness to sell the Disputed Domain Name, as evidenced
by emails attached as exhibits to the Complaint, is inconsistent with rights or
legitimate interests in the Disputed Domain Name.
Respondent registered the Disputed Domain Name in Bad faith.
Because Complainant’s use and ownership of the CAPITAL BANKCARD
trademark predates Respondent’s registration of the Disputed Domain Name by
many years, Respondent knew or should have known of the CAPITAL BANKCARD
trademark at the time Respondent registered the Disputed Domain Name. Respondent did or should have known because
Complainant and the CAPITAL BANKCARD trademark are well known in the
Respondent’s registration of the Disputed Domain Name shortly after
Complainant’s registration inadvertently lapsed gives rise to a presumption of
bad faith.
Respondent’s demand for $125,000 to sell the Disputed Domain Name
constitutes bad faith.
Respondent’s registration and use of the Disputed Domain Name that is
obviously connected with Complainant’s famous trademark demonstrates
Respondent’s opportunistic bad faith.
Respondent’s failure to make any use of the Disputed Domain Name is evidence
of its bad faith. Respondent registered
the Disputed Domain Name on August 22, 2001, and since that time, Respondent has
not developed or made any use of the Dispute Domain Name except in connection
with “popular searches” search engine.
Respondent’s failure to develop or use the Disputed Domain Name in
connection with any legitimate offering of goods or services over the past
seven years demonstrates that he does not now nor has he ever had any intention
of developing or using the Disputed Domain Name.
Respondent registered the Disputed Domain in Name for the purpose of
disrupting Complainant’s business.
Respondent uses the Disputed Domain Name to link to websites of
Complainant’s competitors, which constitutes bad faith.
Respondent’s refusal to transfer the Disputed Domain Name in the face
of Complainant’s rights constitutes bad faith.
B. Respondent
Is an individual whose business involves domain names, either
developing them with partners or re-selling them to others. Respondent is interested in two categories of
domain names. The first category consists of combinations of generic
words. His interest in this first
category is to use them to potentially drive traffic to existing or future
websites. The second category consists
of words and combinations of words that are not so generic. His interest in this second category is to
use them for development or to re-sell them to others.
Respondent registered the Disputed Domain Name in 2001. At the time, “there were numerous variations
of these words [making up the Disputed Domain Name] being used in a descriptive
manner, none of which directed or redirected links to the Complainant’s and/or
any other business, [sic] they were just words generally describing a service
or product to some several thousand web pages, none of which were the
Complainant’s.” Further, Respondent had no reason to believe that Complainant
was using the Disputed Domain Name in connection with its business
activities.
Respondent received an email from Complainant in 2001 inquiring about a
possible purchase of the Disputed Domain Name.
No mention was made in this email about Complainant being the owner of a
service mark or trademark, “nor did they state that they had once owned the
domain for a viable business and would like it back.”
In 2006, Respondent was contacted about the possible purchase of the
Disputed Domain Name, and, once again, there was no mention of a service mark
or trademark.
Complainant’s claim is invalid because Complainant’s fictitious business
name statement lists its place of business as
Complainant’s claim is invalid because it is not very popular as
demonstrated in a Quancast report attached as an exhibit to the response.
Complainant’s claim is invalid because no trademark existed at the time
Respondent registered the Disputed Domain Name.
The Respondent does indeed have rights or legitimate interests in the
Disputed Domain Name by offering the name for development through a partnership
arrangement.
The Complainant’s claim is invalid because Respondent had no reasonable
way of knowing that a service mark existed nor has the Complainant presented
evidence of the existence of a service mark.
A trademark was filed six years after the registration of the Disputed
Domain Name.
C. Additional Submission by
Complainant
The Dispute Domain Name is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights.
Respondent does not dispute the fact that the Disputed Domain Name is
identical to Complainant’s trademark.
Moreover, Respondent has conceded that Complainants owned the domain
name prior to Respondent.
Respondent’s point about the Disputed Domain Name consists of generic
words is off point. Trademarks are considered in their entirety and are not
dissected into constituent elements.
Respondent is wrong about Complainant not having trademark rights in
CAPTIAL BANKCARD mark because Complainant does not have a trademark
registration. The Policy applies equally
to unregistered, common law trademarks, which Complainant did have since at
least 1998. “Indeed, Respondent
implicitly admits that Complainant has prior rights in the CAPITAL BANKCARD
mark when it concedes that Complainant was the prior user of the <capitalbankcard.com> domain
name.”
Complainant’s lack of a fictitious business name filing in
Respondent’s website tracking data is a non-issue and cannot defeat
Complainant’s claim that the Disputed Domain Name is identical or confusingly
similar to Complainant’s trademark.
Respondent has no rights or legitimate interests in respect of the
Disputed Domain Name.
“Respondent admits that it is solely in the business of registering
‘domains to either develop with partners or re-sell them.’ Respondent further concedes that his purpose
in registering the disputed domain name was for this very purpose.” Further, Respondent is not commonly known by
the domain name, or acquired trademark or service mark rights.
Respondent has registered and is using the domain name in bad faith.
Respondent has registered or has acquired the domain name primarily for
the purpose of selling the domain name for consideration in excess of
Respondent’s reasonable out-of-pocket costs.
Respondent has offered the Disputed Domain Name to Complainant for the
sum of $125,000. “Respondent’s high
valuation of the domain can only be the result of the added value attached to
the domain as a result of the reputation and goodwill built up by Complaint in
its CAPITAL BANKSCARD mark . . . and exhibits a clear intent by Respondent to
profit over and over [sic] the registration costs he invested in the disputed
domain name.”
Respondent’s refusal to transfer the Disputed Domain Name despite
Complainant’s clear rights in the domain is further evidence of bad faith. Respondent knew or should have known about
Complainant’s rights in the CAPITAL BANKCARD trademark given Complainant’s long
standing use thereof and its prior registration of the Disputed Domain
Name. Complainant has demanded return of
the Disputed Domain Name, and Respondent has refused to do so.
DISCUSSION
Paragraph
15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 and is
being used in bad faith.
In order to
satisfy its burden under the Policy, a complainant must establish each of the
elements of ¶ 4(a), necessarily including ¶ 4(a)(i), which provides: “[a respondent’s]
domain name is identical or confusingly similar to a trademark or service mark
in which the complainant has rights.” Complainant
is correct that the referenced trademark rights do not require registration
with a national authority; common law trademark rights are protected by the
Policy against abusive domain name registrations. See
Thomas Weisel Partners Group Inc. v. Thomas Weisel house of Entm’t, FA
954028 (Nat. Arb. Forum May 21, 2007) (finding that Policy ¶ 4(a)(i) does not require the formality of a trademark
registration to establish rights in the mark);
see also MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (stating
the UDRP “does not distinguish between registered and unregistered trademarks
and service marks in the context of abusive registration of domain names”).
Complainant
is not correct that the Policy protects prior "naked" domain name
registrations, meaning domain name registrations in the absence of associated trademark
rights.
Complainant
does not provide this Panel with evidence from which it can determine that the
asserted trademark CAPITAL BANKCARD had acquired the status of a common law
trademark. No examples or description is
given as to how the asserted trademark was used in commerce. No evidence is provided as to the amount
expended on advertising using the asserted trademark. No evidence is provided as to the amount of
sales made using the asserted trademark.
See Brinks Servs. v. Holt, FA
324699 (Nat. Arb. Forum Nov. 4, 2004) (finding that the complainant did not
have standing to bring a complaint under the Policy because the complainant did
not provide any evidence that it had valid trademark registration for the mark
or common law rights in the mark, and the complainant did not even suggest how
long it had used the mark or identified what services were connected with the
mark); see also Retail Indus. Leader
Assoc., Inc. v. R.I.L.A., FA 347841 (Nat. Arb. Forum Dec. 20, 2004)
(“Complainant neither asserted common law rights in the RILA service mark nor
supplied evidence that it has acquired common law rights in the mark. Therefore, the Panel finds that Complainant
failed to establish common law rights inn the RILA mark; therefore, Complainant
lacks standing under the Policy.”).
The
Complainant does provide general statements as to the number of customers served
and sales volume. Further, Complainant repeatedly
asserts that the trademark was extensively used since 1998. However, it is not clear that such sales activity
occurred before or after Respondent registered the Disputed Domain Name and Complainant
does not provide evidence of use prior to Respondent’s registration of the
Disputed Domain Name.
Complainant
does show evidence that it registered a fictitious business name statement for
the business name Capital Bankcard, but again, no evidence is provided showing
that Complainant actually did business under that business name prior to
Respondent’s registration of the Disputed Domain Name. Evidence is provided that Complainant did do
business under this business name starting in 2002, but that is after the date
of registration.
Complainant
does show evidence that it registered the domain name <capitalbankcard.com> prior to Respondent’s registration of
the Disputed Domain Name (being one and the same), but there is no evidence
that this domain name was used, and this Panel does not accept assertions to
this effect contained in the complaint as evidence of this essential fact.
Complainant has filed a trademark application for the CAPITAL BANKCARD trademark, but an application confers no rights. However, even if this registration had issued, this Panel would still require evidence of use prior to the date on which Respondent registered the Disputed Domain Name. Whereas a trademark registration does include a claimed “date of first use,” this Panel is not bound thereby, as the purposes of the examiner and this Panel differs on this point.
As such, Complainant has failed to satisfy its
burden under ¶ 4(a)(i).
Complainant having failed in its burden on
the threshold element of ¶ 4(a)(i), further analysis
of the remaining two elements is not necessary.
DECISION
Having failed to establish one of three elements required under the
ICANN Policy, the Panel concludes that relief shall be DENIED.
Kendall C. Reed, Panelist
Dated: November 27, 2007
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