First Hawaiian Bank v. Allen Frenzel
Claim Number: FA0204000110851
Complainant is First Hawaiian Bank, Honolulu, HI, USA (“Complainant”) represented by Martin Hsia, of Cades Schutte Fleming & Wright. Respondent is Allen Frenzel, Carlisle, PA, USA (“Respondent”).
The domain name at issue is <firsthawaiianbank.biz>, registered with Network Solutions, 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.
Bruce E. Meyerson as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 25, 2002; the Forum received a hard copy of the Complaint on the same day.
On May 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 29, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on May 28, 2002.
Complainant submitted a timely additional submission pursuant to Forum Supplemental Rule 7 on June 3, 2002. Respondent also submitted a timely additional submission on June 9, 2002.
On June 21, 2002, pursuant to STOP Rule 6(b), the Forum appointed Bruce E. Meyerson as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant First Hawaiian Bank is a Hawaii corporation that has provided banking and related serves under this name since 1969. The mark “First Hawaiian Bank” has been registered with the United States Patent and Trademark Office since 1970. Complainant contends that Respondent has no legal interest in the disputed domain name and does not operate a bank. According to Complainant, by using the disputed domain name, “Respondent is depriving First Hawaiian Bank of the opportunity to conduct online business under its federally registered name.”
Respondent Allen Frenzel asserts that the domain name “has application to the historic nature, significance and heritage of early Hawaiian banking.” Respondent contends that Complainant already has a web presence under the domain name <fhb.com>. Respondent claims to have an interest in multiple domain names that can lead customers to its primary business of selling Hawaiian art, antiques, artifacts, memorabilia and collectibles.
C. Additional Submissions
The parties timely filed additional submissions. In its additional submission, Complainant asserts that Respondent knew of the existence of the First Hawaiian Bank and of its registered mark prior to registering the disputed domain name. Complainant further argues that Hawaii law precludes Respondent from using the disputed domain name because, according to Complainant, under Hawaii law, no person may use the word “bank” in a manner to cause others to falsely believe that person is, indeed, a financial institution when it is not. Citing the federal Anticybersquatting Consumer Protection Act, Complaint further contends that Respondent has acted in bad faith through its registration of the domain name.
In its additional response, Respondent restated that the domain name was purchased for use in Respondent’s business to “promote historic and cultural awareness related to early Hawaiian banking.”
Given that Respondent’s business activities have nothing whatsoever to do with the operation of a bank, there can be no other inference drawn from Respondent’s registration of the disputed domain name except that Respondent’s actions were done to prevent Complainant from registering a domain name containing its mark. Respondent’s contention that it has registered the domain name—the exact name of Complainant—for the purpose of promoting awareness of Hawaiian banking history is simply not credible. Confusion by Internet users with regard to the disputed domain name would be true in this case if Respondent were permitted to use a domain containing the full name of Complainant, particularly where Respondent has no affiliation whatsoever to Complainant.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(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.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
The disputed domain name is identical to the service mark for “First Hawaiian Bank” held by Complainant since 1970.
Under STOP Policy ¶ 4(c), the Respondent may demonstrate its rights or interests by proving:
i. The Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; or
ii. Before any notice to the Respondent of the dispute, its 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
iii. The Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has acquired no trademark or service mark rights.
According to the foregoing, Respondent has not demonstrated its rights or interests in the domain name. First, Respondent does not own a trade or service mark identical to the domain name. Second, Respondent has not, prior to this dispute, used a name corresponding to the domain name in a bona fide offering of goods for services. Finally, in connection with Respondent’s antique and collectible business, Respondent has not been commonly known by the domain name. See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002).
STOP Policy ¶ 4(b) provides four examples of circumstances that, if proven, will satisfy the bad faith requirement of STOP Policy ¶ 4(a)(iii). Paragraph 4(b) makes clear that these are not the exclusive determinants of bad faith. To prove bad faith under the STOP Policy, a Complainant only need prove either registration or use of the domain name in bad faith, not both as the UDRP requires.
Respondent’s actions demonstrate bad faith in at least two respects. First, under STOP Policy ¶ 4(b)(ii), the Complainant may prove bad faith by showing the Respondent registered the domain name for the purpose of preventing Complainant from registering domain names reflecting its mark. Given that Respondent’s business activities have nothing whatsoever to do with the operation of a bank, there can be no other inference drawn from its registration of the disputed domain name. Respondent’s contention that it has registered the domain name—the exact name of Complainant—for the purpose of promoting awareness of Hawaiian banking history is simply not credible.
Second, Respondent’s actions also violate STOP Policy ¶ 4(b)(iv) that states bad faith is established when a Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its 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 website or location or of a product or service on the website or location. See Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding that, where the respondent’s <fluor.biz> domain name was identical to the complainant’s FLUOR mark, Internet users would likely believe an affiliation between the respondent and complainant); see also Pillsbury Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain name identical to complainant’s mark to be in bad faith when use of the domain name would likely cause confusion as to the affiliation between respondent and complainant). Such confusion would be present in this case if Respondent were permitted to use a domain containing the full name of Complainant, particularly where Respondent has no affiliation whatsoever to Complainant.
The domain name <firsthawaiianbank.biz> is hereby transferred to Complainant. Further challenges against this domain name under the STOP Policy shall not be permitted.
Bruce E. Meyerson, Panelist
Dated: July 3, 2002
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