U.S. Bancorp Licensing, Inc. v. Unused
Domains
Claim Number: FA0208000123905
PARTIES
Complainant is U.S. Bancorp Licensing, Inc., Minneapolis, MN (“Complainant”)
represented by Michael L. Gannon, of Fish & Richardson. Respondent is Unused Domains, New Orleans, LA (“Respondent”) represented by Sigmund J. Solares.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <usbank.us>,
registered with Intercosmos Media Group.
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.
Judge Irving H. Perluss (Retired) is the
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on August 28, 2002; the
Forum received a hard copy of the Complaint on August 29, 2002.
On August 29, 2002, Intercosmos Media
Group confirmed by e-mail to the Forum that the domain name <usbank.us>
is registered with Intercosmos Media Group and that the Respondent is the
current registrant of the name. Intercosmos
Media Group has verified that Respondent is bound by the Intercosmos Media
Group 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 August 30, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of September 19, 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 usTLD Dispute Resolution Policy
(the “Rules”).
A timely Response was received and
determined to be complete on September 16, 2002.
Complainant filed a timely Additional
Submission on September 20, 2002.
On October 3, 2002,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
Complainant
U.S. Bancorp Licensing, Inc., a wholly-owned subsidiary of U.S. Bancorp, is the
owner of a large number of federal service mark registrations for marks
consisting of and/or incorporating the wording “U.S. BANK” in connection with
various banking and related financial services including, inter alia, the following:
Reg.
No. Mark Goods/Services
1,481,868 U
S BANK Banking services.
2,445,731 USBANK Banking and related financial services.
2,445,732 USBANK.COM Banking
and related financial services
provided
by means of a global computer
network.
2,493,878 WWW.USBANK.COM Banking and related financial
services
provided
by means of a global computer
network.
2.
Complainant
uses its various US BANK marks through its related companies and licensees,
including, inter alia, U.S. Bancorp
and U.S. Bank National Association, (hereinafter referred to as “Complainant”)
in connection with a broad range of financial services provided to retail,
institutional, and commercial customers across the country.
3.
The
disputed domain name is identical to the Complainant’s services marks.
4.
The first
of Complainant’s US BANK registrations, Reg. No. 1,481,868, was issued more
than fourteen years prior to Respondent’s registration of the <usbank.us>
domain name, and had been incontestable for nearly nine years at the time of
Respondent’s registration of the <usbank.us> domain name.
5.
Section
4(a)(i) of the usTLD dispute Resolution Policy (hereinafter “Policy”),
requiring that the disputed domain name be “identical to a trademark or service
mark in which the Complainant has rights” clearly is satisfied.
6.
Respondent
has no rights or legitimate interests in the disputed domain name <usbank.us>
because (1) Respondent is not the owner or beneficiary of any trademark or
service mark that is identical to the <usbank.us> domain name, (2)
Respondent has neither used nor made any demonstrable preparations to use the <usbank.us>
domain name or a name corresponding to the domain name in connection with a
bona fide offering of goods or services, (3) Respondent has never been commonly
known by the <usbank.us> domain name, and (4) Respondent is making
no legitimate noncommercial or fair use of the <usbank.us> domain
name. These are the criteria set forth
in Section 4(c) of the Policy for the establishment of rights and legitimate interests
in a domain name.
7.
A worldwide
search does not disclose that any of Respondent’s entities own any trademark or
service mark that is identical to the disputed domain name.
8.
Respondent
has made no use of, or demonstrable preparations to use, the <usbank.us>
domain name in connection with a bona fide offering of goods or services, the
only use that is being made, or has been made, of the <usbank.us>
domain name is to point to a website advertising the domain name “for sale.”
9.
The Whois
record and the website associated with the <usbank.us> domain name
indicate that the domain name was registered in the name of “Unused Domains,”
an “entity” apparently related to DirectNIC and Intercosmos Media Group. Nothing in the Whois record for <usbank.us>,
or any publicly available information about Respondent, indicates that
Respondent (or any of these other entities) has ever been commonly known by the
<usbank.us> domain name.
10.
Advertising
of a trademarked domain name does not constitute a noncommercial fair use of
the <usbank.us> domain name.
11.
Respondent
registered the <usbank.us> domain name in bad faith. Bad faith registration occurs when a
respondent constructively or actually knew or should have known of a
complainant’s rights in a mark prior to registering the offending domain name,
and this is the case here.
12.
Respondent
and its affiliates have more than 27,000 domain names offered for sale. This demonstrates that Respondent registered
the <usbank.us> domain name solely for the purpose of selling it
to Complainant or a competitor of Complainant for valuable consideration in
excess of its documented out-of-pocket costs directly related to the domain
name. This also is bad faith.
13.
Respondent’s
registration of <usbank.us> also has the apparently intentional
effect of preventing Complainant from reflecting its US BANK mark in the <usbank.us>
domain name, which, moreover, has the tendency to disrupt the business of
Complainant. This, too, is evidence of
bad faith.
B. Respondent
1.
The dispute
domain name is not identical or confusingly similar to a trademark or service
mark in which Complainant has rights.
2.
Respondent
does have rights or legitimate interests in the disputed domain name. It is using the name as a search engine and
directory, and this is use and demonstrable preparations to use the name in
connection with a bona fide offering of goods and services.
3.
Complainant
has a history of violating its service agreement with Verisign, its registrar.
4.
The
disputed domain name was not registered or used in bad faith. Breaking down the disputed domain name
indicates it can have various meanings and acronyms. Offers to purchase a
domain name do not reflect bad faith by the registrant of the name.
5.
Respondent
is willing to sell the disputed domain name for the $30 cost of the two-year
registration.
6.
Respondent
neither registered or acquired the domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to
Complainant, for valuable consideration in excess of Respondent’s documented
out-of-pocket costs directly related to the domain name. There is no evidence that Respondent has
registered or has acquired the domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to
Complainant, or to a competitor of Complainant, for valuable consideration in
excess of Respondent’s documented out-of-pocket costs directly related to the
domain name.
7.
There is no
evidence that Respondent has registered the domain name in order to prevent the
owner of the trademark or service mark from reflecting the mark in a
corresponding domain name.
8.
There is no
evidence that by using the domain name, Respondent has intentionally attempted
to attract, for commercial gain, Internet users to Respondent’s website or
other on-line location, by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s website or location or of a product or service on Respondent’s
website or location. The website at <usbank.us>
is not at all similar to the website at the location <usbank.com>. Complainant is not a competitor of
Respondent.
C. Complainant’s Additional Submission
1.
Complainant
has longstanding rights in a variety of service marks consisting of and/or
incorporating the mark US BANK®. These
rights have been established by Complainant’s long and continuous use of its US
BANK marks, and are evidenced by Complainant’s various federal service mark
registrations for its US BANK marks.
Respondent’s infringing domain name, <usbank.us>, merely
adds a generic top level domain (“.us”) to Complainant’s well-known, famous,
and incontestably registered US BANK® mark.
2.
Paragraph
4(a)(ii) of the usTLD Dispute Resolution Policy requires Complainant to
establish that Respondent has “no legitimate interest in respect of the domain
name” at issue. This is the case here
because Respondent’s only use of the <usbank.us> domain name has
been in connection with a website advertising the <usbank.us> domain
name for sale. While Respondent asserts
that the “main thrust” of the website accessible via <usbank.us>
is to be a search engine, Respondent’s argument is patently absurd.
3.
Respondent
has not rebutted the evidence submitted with Complainant’s Complaint
demonstrating that Respondent is neither the owner, nor a beneficiary, of a
trademark or service mark identical to the <usbank.us> domain
name. Respondent’s operation of a
website offering the <usbank.us> domain name for sale does not
constitute a bona fide offering of goods or services, notwithstanding
Respondent’s incorporation of a “search engine.” Respondent does not assert that “Unused Domains” or “Intercosmos
Media Group” has ever been commonly known by the domain name <usbank.us>. Finally, Respondent is not making a
legitimate noncommercial or fair use of the <usbank.us> domain
name without intent for commercial gain, or to misleadingly divert
consumers. Thus, Respondent has failed
to demonstrate that it has any legitimate interest in the <usbank.us>
domain name as defined in Sections 4(c)(i) – (iv) of the usTLD Dispute
Resolution Policy. As such, Complainant
has satisfied its burden under ¶ 4(a)(ii) of the Policy.
4.
Respondent
has registered the <usbank.us> domain name in bad faith. Each of the bad faith elements enumerated in
¶¶ 4(b)(i) – (iv) of the Policy is here present. In addition, Respondent’s offering of the <usbank.us>
domain name for sale, among thousands of other domain names, is more than
enough, exclusive of the other bad faith factors, for a finding of bad
faith. A finding of bad faith is all
the more appropriate in light of the fact that Respondent in this dispute,
“Unused Domains,” is merely an alias being used by ICANN accredited registrar,
Intercosmos Media Group. Complainant
has demonstrated that through its “Unused Domains” alias, Intercosmos Media
Group has tied up literally thousands of Internet domain names, some of which
correspond to famous personal names and trademarks.
FINDINGS AND CONCLUSIONS
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
There can be no doubt but that the
disputed domain name is confusingly similar and, indeed, identical to
Complainant’s registered marks and the Panelist so finds. The generic top-level domain (“gTLD”)
customarily is disregarded in UDRP cases involving gTLDs such as “<.com>”
and “<.net>.” See Princeton
Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc., FA 102811 (Nat.
Arb. Forum Feb. 8, 2001) (finding that the “<.biz>” gTLD in a disputed
domain name is not a factor, and hence to be ignored, when determining whether
the domain name is identical to a mark in which Complainant has asserted rights).
And, of particular interest, in this
proceeding with respect to this issue is the direct precedent of U.S.
Bancorp Licensing, Inc. v. No Kwan-Ho, FA 112606 (Nat. Arb. Forum June 18,
2002) (finding domain name <usbank.biz> identical to Complainant’s US
BANK family of marks).
Rights or Legitimate Interests
Under Policy paragraph 4(c), a Respondent
may be found to have rights or legitimate interests in the disputed domain name
by demonstrating, without limitation, any of the following factors:
i.
It is the
owner or beneficiary of a trade or service mark that is identical to the domain
name;
ii.
Before any
notice to it 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;
iii.
It (as an
individual, business, or other organization) have been commonly known by the
domain name, even if it has acquired no trademark or service mark rights; or
iv.
It is
making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue.
Clearly, Policy ¶¶ 4(c)(i), (iii), and
(iv), are not applicable here.
However, Respondent apparently claims it falls with Policy ¶ 4(c)(ii),
because it is using the disputed domain name as a “search engine.”
The Panelist finds and concludes that
Respondent’s claim or purported use of the disputed domain name as a search
engine must be rejected. This is because
the evidence demonstrates that Respondent’s essential purpose is to sell the
disputed domain name as well as thousands of other domain names including such
names as <citibank-asia.com>
<americanexpressmallbusinessexchange.com>, and <ameritech-international.com>.
A legitimate interest cannot be created
by such a “search engine” device.
Registration and Use in Bad Faith
Paragraph 4(b)(i) of the Policy provides
that circumstances demonstrating bad faith registration or use may be:
i.
Circumstances
indicating that you have registered or you have acquired the domain name
primarily for the purpose of selling, renting, or otherwise transferring the
domain name registration to the Complainant who is the owner of the trademark
or service mark or to a competitor of that Complainant, for valuable
consideration in excess of your documented out-of-pocket costs directly related
to the domain name.
While it is true that Respondent, in its
submissions, has offered to sell the disputed domain name to Complainant for
$30 (Respondent’s costs of registration), the Panelist believes and finds that
the offer comes too late.
This is because Panels have found bad
faith where no offer for sale is made, but where it is clear that the
Respondent’s only interest in the name is to sell it. See Euromarket Designs, Inc. v. Domain For Sale
VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding that, by identifying
itself as “Domain For Sale VMI” in its registration information, Respondent
made clear its intent to sell the domain name for consideration in excess of
its out-of-pocket costs); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9. 2000) (finding bad faith where Respondent’s WHOIS
registration information contained the words, “This domain name is for sale.”).
The Panelist, accordingly, has concluded
that the disputed domain name was registered and is being used in bad faith.
DECISION
Based on the above findings and
conclusions and pursuant to Rule 4(i), it is decided that the domain name <usbank.us>
registered by Respondent, Unused Domains, be and the same is ordered TRANSFERRED
to Complainant, U.S. Bancorp Licensing, Inc.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: October 17, 2002
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