Bank of America Corporation v. [Registrant]
Claim Number: FA0809001226147
Complainant is Bank of America Corporation (“Complainant”), represented by Melissa
G. Ferrario, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uscapitaltrust.com>, registered with Wild West Domains, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 24, 2008.
On September 25, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <uscapitaltrust.com> domain name is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 1, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 21, 2008 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 21, 2008.
A timely Additional Submission from Complainant was received on October 24, 2008. A timely Additional Submission from Respondent was received on November 3, 2008. Both Additional Submissions comply with Supplemental Rule 7.
On October 27, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
According to the Complainant it, or its predecessors, have been using the mark UNITED STATES TRUST COMPANY since 1853 in connection with banking, fiduciary, and investment management services. The mark UNITED STATES TRUST has been used since 1964, and U.S. TRUST since 1976. The Complainant owns various registered trademarks for those marks and their variations.
Further, says the Complainant, it owns the domain name <ustrust.com> and uses it to promote its services.
The Respondent registered the disputed domain name in August 2005. The Complainant alleges that, in late 2007, the disputed domain name was used by the Respondent in connection with a website that offered private equity and venture capital services. The website was subsequently changed and now points to a web page that simply states “US Capital Trust is a holding Company for various corporate entities owned by the “US CAPITAL GROUP”. That website does not contain links to any other web pages.
According to the Complainant, the disputed domain name is confusingly
similar to its
Further, says the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name because it is not known by the name “U.S. Capital Trust”. Nor is it affiliated with the Complainant, nor does it have any license to use the Complainant’s marks.
The Complainant alleges that the Respondent has registered and is using the disputed domain name in bad faith to attract users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark. Indeed, the Complainant’s mark U.S. TRUST combined with the word “capital” results in a domain name that has an obvious relationship to the Complainant’s business of providing wealth management solutions. And the services provided by the Respondent at its 2007 website compete with the Complainant’s services. The Complainant cites UDRP precedents to support its position.
The Respondent states that a complete citation from its 2007 website is:
US Capital Trust is a leading private equity and venture capital firm
committed to empowering entrepreneurs to build innovative and industry leading
According to the Respondent, it does not provide any services in relation to the private wealth management services provided by Complainant. The Complainant has not provided any proof that it uses any of its marks listed in this Complaint to provide services that are even remotely similar to the Respondent’s services of providing financing to businesses looking for financing or entrepreneurs looking to start or grow their business. These are completely distinct and different and separate businesses and markets and customers. If someone searching for the Complainant’s business, U.S. Trust, mistakenly found itself at Respondent’s business, U.S. Capital Trust, they immediately would realize the mistake and re-direct their search. A person looking for private wealth management services provided by the Complainant who mistakenly found itself at the Respondent’s website would have no reason to think that the Respondent was the same as the Complainant; and there is no risk of the Complainant losing a customer to someone who mistakenly found itself at the Respondent’s website.
Further, says the Respondent, the disputed domain name is not confusingly similar to the Complainant’s mark, because the addition of the word "capital" to the U.S. TRUST mark does create a domain name that is distinct from Complainant's marks. The Merriam Webster Dictionary actually defines capital as follows: “accumulated wealth esp. as used to produce more wealth”. Another [sic] words, capital can mean the accumulated wealth of one used by them or another to finance a business or other venture to make more money. This is the common understanding of the word capital in the business world. Based on this, the use of the word “capital” does distinguish the Respondent’s domain from the domain and marks of the Complainant. This is especially true in light of the different natures of their businesses, markets and customers-high net worth individuals looking for private wealth management versus businesses looking for financing or entrepreneurs looking to start or grow their business.
The Respondent alleges that its services do not compete with those offered by the Complainant, that it is not attempting to create confusion or benefit off the Complainant’s goodwill, and that the Complainant’s mark is not so well known as to make it unlikely that Respondent was aware of the mark at the time it registered its domain.
The Respondent alleges that it has been using the disputed domain name in connection with a bona fide offering of services, and this since its registration in 2005. The Respondent mainly provides financing to businesses in connection to these businesses’ purchases of buses (motor vehicles). The Respondent finances the purchase of such vehicles, and takes title to them as security for the loans.
The Respondent has 20 employees. All of these employees have an e-mail address that is as follows: “employee name”@uscapitaltrust.com. A majority of the solicitations along with the processing and servicing of these loans is done through e-mail communications between the borrow [sic] and the Respondent. These 20 employees all use their uscapitaltrust.com e-mail to communicate with its customers and the Respondent’s customers all contact the Respondent and an employee of the Respondent through their uscapitaltrust.com e-mail.
The Respondent states that Lease Acceptance Corp. actually is the owner of the disputed domain name and the US Capital Trust business. The registrant of the domain name is aware of this ownership of the domain name; but lists the ownership as unregistered at the request of the owner. The owner made this request in order to prevent unilateral and unwanted solicitations.
Further, the Respondent reiterates that it did not register or use the disputed domain name in bad faith. In particular, it did not register or use the disputed domain name in bad faith to attract users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark.
C. Additional Submissions
In its Additional Submission, the Respondent states that the question of whether or not the Respondent is using the disputed domain name for a line of business that is or is not related to that of the Complainant is irrelevant with respect to the confusing similarity element of the Policy. It cites UDRP precedents to support this view. Similarly, says the Complainant, the existence or not of any actual confusion is not relevant for this element of the Policy.
Further, says the Complainant, the Respondent’s assertion that there is no obvious relationship between the word “capital” and the Complainant’s wealth management services is disingenuous. A standard dictionary states that one of the meanings of the word “capital” is “wealth”. And the Complainant’s website states: “Helping families and businesses manage their wealth has been our focus for more than 150 years”. Thus, says the Complainant, there is a clear relationship between the word “capital” and the Complainant’s business.
The Complainant alleges that the Respondent’s actual use of the disputed domain name is not bona fide. Both the 2007 version of the website and the current version are inconsistent with the Respondent’s claim that it mainly provides financing for the purchase of buses. Furthermore, the fact that the Respondent registered the domain name anonymously is unusual and questionable for someone conducting a legitimate business.
According to the Complainant, it is undisputable that the Respondent intended to attract Internet users to its website for the purpose of commercial gain. And, in 2007, the disputed domain name was used in connection with a website that advertised private equity and venture capital services. The Respondent stresses that its services are offered to businesses, not individuals. But so are those of the Complainant. Indeed, as stated on its website, the Complainant has assisted both individuals and businesses to manage their wealth (capital) for more than 150 years. Further, the corporation that owns the Complainant (Bank of America) also offers private equity and vehicle financing services.
In its Additional Submission, the Respondent alleges that the dispute domain name is not confusingly similar to the Complainant’s marks because the insertion of a word into the middle of another’s mark sufficiently breaks up the mark, creating a distinction between the domain name and the mark.
Further, says the Respondent, the Complainant is wrong in its assertion regarding the relation of the word “capital” to its business. As expressly stated in its promotional materials, the complainant’s U.S. TRUST mark is used in relation to its “private wealth management” services. Although the word “capital” can have a connection to the word “wealth” and wealth can be used in business to produce more wealth, this is not the common understanding or use of the words “capital” and “wealth”. The common understanding and use of these two words creates a distinction between them. The common understanding of “capital” is money used to finance a business or other venture to make more money. Although “wealth” can be used as “capital”, the word “wealth” is commonly understood to mean a particular amount of accumulated money, i.e. a wealthy person. The common understanding of the business of “private wealth management” is the preservation and growth of a person or business’ “wealth” through investment. This is distinct from the business of providing “capital” to grow or start a business. While there can be an overlap between the meaning of “capital” and the Complainant’s business, there certainly is no obvious relationship between “capital’ to the Complainant’s business. It is quite the opposite.
The Respondent reiterates that it used the disputed domain name well before any notice of the dispute, and this to offer what it considers to be bona fide services. Even if the Respondent had constructive notice of the Complainant’s mark, a person has a right to create a name that it does not believe is confusingly similar; and if they then use the name in a bona fide manner for a substantial period of time prior to notification of a dispute, they should be considered as having legitimate rights notwithstanding the legal concept of constructive notice.
The Respondent being in the financial services industry alone does not amount to proof of actual notice of the Complainant’s mark. The financial services industry encompasses many different types of businesses that do not necessarily intersect. With the different types of customers served by the Complainant and the Respondent, it is completely plausible that the Respondent had no actual knowledge of the Complainant’s mark.
The Respondent concedes that the mark of the Complainant’s mother company (Bank of America) is famous, but states that the mark U.S. TRUST is not famous.
The anonymous registration and continuous anonymous holding of the domain name is irrelevant to the Respondent’s bona fide use of the domain name. The Respondent uses a web developer to register its domains and maintain its various websites. The web developer actually chooses the manner of listing the domain. The web developer uses private listings to avoid unwanted solicitations of his customer. The use of these private listings is a common and acceptable and legitimate method of registering and maintaining the registration of a domain name. A person can have an unpublished phone number without being a criminal. There is no reason to apply a different standard to a business.
The Respondent states, and provides evidence to prove, that, prior to
the dispute, it filed documents with the State of
Finally, says the Respondent, the Complainant has failed to prove that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s U.S. TRUST marks.
The Complainant owns numerous marks for the string U.S. TRUST. These have been used since 1964 and are very well known, if not famous, at least within the financial services industry.
The Respondent registered the disputed domain name in 2005 and used it in 2007 for a web site offering financial services to entrepreneurs.
The Respondent is not affiliated with the Complainant and does not have any license to use the Complainant’s marks.
The Respondent registered the disputed domain name anonymously.
After notice of the dispute, the Respondent changed its website at the disputed domain name. The website now merely refers to a company name, and does not offer any actual services.
The Respondent states that its main business is to provide financing for the purchase of buses (motor vehicles).
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.
The disputed domain name consists of the Complainant’s mark, plus the word “capital”. The Respondent makes much of the various meanings of that word. But it cannot be denied that the word “capital” is closely related to “wealth” and “money”, and that, in turn, those words are closely related to the word “trust” as used in the Complainant’s mark (that is, a “trust fund”).
Given the common use of the words, the term “capital”, in context, must be considered to be a generic term. Its addition to the mark US TRUST does not create a domain name that is distinctive from the mark.
The Respondent argues that its line of business is not the same as that of the Complainant. But the Complainant correctly points out that this is irrelevant for this element of the policy. The Complainant aptly cites Plan Express Inc. v. Plan Express, D2000-0565 (WIPO July 17, 2000), in which the panel stated:
To determine whether a name is identical or confusingly similar to a mark, the panel merely compares the mark in question to the domain name at issue, regardless of the various lines of business in which each is used, or of the geographic areas in which each party conducts business.
See also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.
The question of whether or not the Respondent has legitimate rights to the disputed domain name depends entirely on whether its offer of services in 2007 at the disputed domain name is or is not bona fide.
As we will see below, the Panel concludes that that offer was not bona fide in the sense of the Policy. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Thus, the Panel holds that the Respondent does not have rights or legitimate interests in the disputed domain name.
As the Complainant correctly points out, the description that the Respondent gives of its business on the 2007 version of its website does not correspond to the description given to the Panel. On the 2007 version of the website, the Respondent claims to provide a broad range of financial services to entrepreneurs. In its Response and in its Additional Submission to this Panel, the Respondent states that its main business is to provide financing for the purchase of buses (motor vehicles).
On the basis of the evidence submitted by the Respondent, the Panel accepts that an accurate description of the Respondent’s business is that it provides financing for the purchase of buses. As a consequence, the Panel finds that the description provided on the 2007 version of the web site is misleading.
Further, the Panel cannot accept the Respondent’s statement that it did not know of the Complainant’s mark U.S. TRUST. That mark may or may not be famous, but it is certainly well known. The Respondent is, by its own admission, a business offering financial services. Therefore, it seems highly unlikely that it was unaware of the services offered by the Complainant under its mark U.S. TRUST.
The Respondent attempts to divide finely the financial services market so as to show that the services it offers do not compete with those of the Complainant. The Panel is not convinced by those arguments. As the Complainant correctly points out, it does offer services to businesses as well as to individuals. Further, financial services are just that, financial services, and most Internet users would, in the Panel’s opinion, consider that the services offered by the Respondent on the 2007 version of its website are similar to, and compete with, the services offered by the Complainant.
Despite the Respondent’s statements to the contrary, the Panel finds that the most likely explanation for the misleading description given in the 2007 version of the website was to attract users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark, in violation of 4(b)(iv) of the Policy. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
The Respondent states: “A person can have an unpublished phone number without being a criminal. There is no reason to apply a different standard to a business.” On the contrary, there is every reason to apply a different standard to a business. A consumer should be able to find easily, through the web, the physical address of a business, so as to be able to complain, if necessary, to the competent regulatory or judicial bodies.
This Panel cannot understand why a legitimate business would wish to hide its address and telephone number. The Panel is not convinced by the explanation provided by the Respondent. The Panel views the anonymous registration of the disputed domain name as an element indicating bad faith intent. Taken alone, that element would not necessarily be sufficient. But, in the particular circumstances of this case, it reinforces the Panel’s belief that the Respondent did indeed register and use the disputed domain name in bad faith in the sense of the Policy.
On the balance of the evidence, the Panel finds that the Complainant has satisfied its burden of proving that the Respondent registered and is using the disputed domain name in bad faith in the sense of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <uscapitaltrust.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 7, 2008
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