First Mariner Bank v.
Claim Number: FA0901001243651
Complainant is First Mariner Bank (“Complainant”), represented by James
B. Astrachan, of Astrachan Gunst Thomas, PC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <1stmarinerbank.info>, registered with GoDaddy.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
A timely Response was received and determined to be complete on
The Complainant submitted an Additional Submission on February 18, 2009. This Additional Submission complied with Supplemental Rule 7.
The Respondent submitted an Additional Submission on February 24, 2009. This Additional Submission complied with Supplemental Rule 7.
On February 27, 2009 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.
The Complainant alleges that it is
According to the Complainant, the Respondent registered the disputed domain name in December 2008, using a privacy protection service. In January 2009, the disputed domain name was used for a web site providing click-through advertising revenue, via GoDaddy’s “CashParking” website.
The Complainant states that, in reply to a letter from itself, the Respondent offered to sell the disputed domain name at its “fair market value”, and that the Respondent further stated that “almost all of my domain names are for sale at fair market value”.
According to the Complainant, the disputed domain name is identical or confusingly similar to its marks.
Further, says the Complainant, the Respondent does not have any rights or legitimate interests in the disputed domain name. He has never used the disputed domain name for any legitimate purpose. The domain name has been used to generate click-through revenue.
The Complainant states that, when approached by itself, the Respondent immediately offered to sell the disputed domain name, stating that the Complainant should buy it “just to protect it from someone else buying it from me and doing whatever with it.” According to the Complainant, these factors indicate that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant.
Further, says the Complainant, by parking the disputed domain with GoDaddy, the Respondent sought to obtain click-through advertising revenue by benefitting from the goodwill associated with the Complainant’s marks. Thus he attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks.
The Respondent alleges that he purchased the disputed domain name because it refers to the first bench of rowers in a boat. The importance of “1st” is like in “1st Mate;” the first bank is the “lead” bank that all other rowing banks take their oar position and speed from. This is because the first bank is visible to all other banks and the first bank can not see any of the other rowers.
The Respondent notes that the component words of the disputed domain name are generic terms and cites UDRP case law finding that genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration.
The Respondent requests that the Panel disregard certain evidence submitted by the Complainant, in particular certain E-Mails, arguing that the Complainant did not prove that the said E-Mails were sent by him.
The Respondent states that the Complainant has not proven that the disputed domain name was used for “cash parking” and states he has never received and has never been due any money for “cash parking” or any other reason related to the disputed domain name.
The Respondent states that his offer to sell the disputed domain name was made as part of settlement negotiations, and thus should not be considered by the Panel as evidence of bad faith registration and use.
According to the Respondent, he has no domain names which are registered trademarks. All his domain names consist of common expressions.
The Respondent states that his intent is to use the disputed domain name for non-commercial purposes, and he is willing to place a disclaimer on the web state stating that the site is not associated with First Mariner Bank.
The Respondent states:
In closing I would like to say without any specific admission of wrong doing that it is possible that I have made unknown mistakes in my use of this site. However, I do not know of any. I purchased my first domain name in late December 2008 and the issue of this dispute was sent only 10 days later. It has been a learning experience for me.
C. Additional Submissions
In its Additional Submission, the Complainant provides additional details regarding the correspondence between the parties, alleging that the Respondent requested a specific price ($800) for the disputed domain name, which price is above out-of-pocket costs.
The Complainant reiterates that it holds valid marks and that the disputed domain name is identical or confusingly similar to those marks.
According to the Complainant, the Panel should not accept the Respondent’s allegation that he registered the disputed domain name for the legitimate purpose of referring to the “first bench of rowers” in a boat, and this because that motivation was first raised in the Response and it appears to contradict the Respondent’s offers to sell the disputed domain name to the Complainant.
According to the Complainant, the Respondent has explicitly admitted that he used the disputed domain name to generate revenue, because, in an E-Mail of January 5, 2009, he stated that he put the domain name in “cash parking” and went on to provide the following description of that service:
CashParking: CashParking helps users to monetize their parked domains. Once you have associated your domains with your CashParking account, our advertising partner will place context-relevant advertisements on your parked page(s). Each time a page visitor clicks on a displayed advertisement you will receive a share of the generated click-through revenue based on your CashParking plan. CashParking is a service that enables you to earn money on your parked domains.
The Complainant reiterates that, in its opinion, the Respondent registered and used the domain name in bad faith, in particular because he never offered to relinquish the disputed domain name but instead attempted to sell it for a price in excess of out-of-pocket costs.
The Complainant notes that the Respondent asserts that he had little or no experience in registering domain name and thus could have made an “honest mistake”. But the Complainant also notes that the Respondent registered some 90 domain names at the same time and parked them to obtain click-through revenues, which would not appear to be typical behavior for an inexperienced person. And the Complainant states that the Respondent did not relinquish the domain name when asked, which presumably would have been the action taken by someone who had made an “honest mistake”.
In his Additional Submission, the Respondent alleges that the Complainant has not provided sufficient evidence to prove its claims, and, in particular, states that the Complainant has not proven that the Respondent sent certain E-Mails, and that the Complainant has not proven that the disputed domain name was used to generate click-through revenue.
Further, the Respondent reiterates the arguments that he made in the Response. The Respondent states:
My interest in the ocean and mariners goes back to the fact that I grew up next to it and spent 11 years posted to what Americans would call a “Naval Air Station” while I was in the Canadian Forces. You can not be in the military for 17 years without loving their customs and traditions. In 1996 I took the early retirement package as an officer. I truly miss those traditions and the bonds between members, which would have been part of my website.
I grew up in western
Since 1st Mariner Bank did not ask me what my out-of-pocket expenses were related to this domain name they can not show that I wanted to settle for more than that. My expenses are high and include but not limited to, research, travel for research, software, equipment, legal, hired help, etc and are well in excess of what I wanted to settle. As they stated, I even informed them that my costs related to that site were going up as I researched and developed it. They can not show that I purchased it to sell to them as they contacted me, I asked for a settlement that would allow me to keep it, I did not try selling it to them and only offered it as part of a settlement.
The Complainant owns marks, including 1ST MARINER BANK.
The disputed domain name is identical to the Complainant’s marks.
The Respondent used the disputed domain name to generate click-through revenue, through a web site that has no obvious association with the generic terms that comprise the disputed domain name.
The Respondent offered to sell the disputed domain name for a price in excess of out-of-pocket-costs.
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 Complainant has submitted evidence of the
registration of its 1ST MARINER BANK mark with the United States Patent and
Trademark Office (“USPTO”). The Panel holds
that registration of a mark is sufficient to establish Complainant’s rights
pursuant to Policy ¶ 4(a)(i). See Miller Brewing
The disputed domain name is obviously identical to the Complainant’s mark.
The fact that the
mark and the disputed domain name consist of generic terms is not relevant for
this element of the Policy and will be addressed later. See Vance Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum
Thus the Panel holds that the Complainant has satisfied its burden of proving that the disputed domain name is identical to its mark.
Contrary to what the Respondent asserts, the Panel finds that the Complainant provides sufficient evidence to show that the Respondent is using the disputed domain name to generate click-through revenue.
This use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Fox News Network, LLC v.
Reid, D2002-1085 (WIPO
WIPO provides an overview of domain name cases. The part of that overview that is relevant for the present case is found at: http://www.wipo.int/amc/en/domains/search/overview/index.html#22.
According to that overview, if a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.
However, if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of generic words. Factors a panel should look for when determining legitimate use would include the status and fame of the mark, whether the respondent has registered other generic names, and what the domain name is used for (a respondent is likely to have a right to a domain name "apple" if it uses it for a site for apples but not if the site is aimed at selling computers or pornography).
In the present case, the Panel holds that the Respondent has failed to show that he is likely to use the disputed domain name for a legitimate purpose that would not conflict with the Complainant’s marks. Indeed, the Respondent’s use of the mark to generate click-through revenue from a website that had no relation to boating or rowing (the alleged purpose for registering the disputed domain name) indicates that the Respondent intended to derive revenue by misleading Internet users.
The present case can be distinguished from Modern Beauty Supplies Inc. v. MDNH, Inc. c/o Jay Bean, FA0705000975334 (Nat’l Arb. Forum, June 25, 2007). In that case, the Panel stated:
The Respondent freely admits that it is using the disputed domain name for a landing page to generate click-through advertising revenue. In the present case, such a use is a legitimate interest for the purposes of the Policy because the links and advertisements posted on the web page are directly related to the generic meaning of the domain name. See The Knot, Inc. v. In Knot We Trust LTD, Case No. D2006-0340 (WIPO Jun. 16, 2006) (landing page was not legitimate where the domain name, knot.com, was being used for links related to wedding planning; that use was not directly linked to the generic meaning of the word “knot” but rather appeared designed to take advantage of the trademark meaning of the mark THE KNOT, which is used as a mark for a well-known wedding planning website).
In Advanced Drivers Educ. Prods. & Training, Inc. v. MDNH, Inc., FA 567039 (Nat. Arb. Forum Nov. 10, 2005), the Panel found that the disputed domain name was not used in the trademark sense, but was “a descriptor of the site’s intended content or theme.” Therefore, the Panel found that the Complainant had failed to prove that Respondent lacked any rights or legitimate interests in the disputed domain name. Similarly, in Multicast Media Networks, LLC v. MDNH, Inc., FA 434268 (Nat. Arb. Forum Apr. 28, 2005), the Respondent operated a pay-per-click search engine from which the Respondent derived revenue to post advertisements to various goods and services. The panel in that case found that “[t]his was a bona fide use within the meaning of ¶ 4(c)(i), particularly in light of the extended period of such use.”
In the present case, the web site pointed to by the disputed domain name contains links that are directly relevant to the descriptive meaning of the domain name, namely “modern beauty.” Therefore, the Panel agrees with the Respondent’s arguments and the cited cases and holds that the Respondent does have a legitimate interest, for purposes of the Policy, in the disputed domain name.
The facts in the present case are quite different. The Respondent’s web site did not contain any links that were directly related to the descriptive meaning of the disputed domain name.
The Panel notes that Respondent claims that he has plans to develop a website, relating to boating. But the envisaged use appears to be an implausible use of the disputed domain name, in that it is not obvious that an average Internet user would think of typing the disputed domain name when searching for information on rowing or stroke oarsmen (those that sit on the most forward bench of a rowboat). Nor it is clear how such a use would be associated with the Respondent’s past military career, since the use of rowed military craft (galleys and such) ceased some 200 years ago.
The Panel holds that the Respondent has not
submitted any evidence of his plans other than unsubstantiated and somewhat implausible
assertions. Thus the Panel finds that the
Respondent has not shown demonstrable preparations to use the disputed domain
name in connection with this alleged noncommercial or legitimate fair use, and the
Panel finds that this constitutes additional evidence that Respondent has not
established any rights or legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii). See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb.
The Panel holds that the Complainant has satisfied its burden of proof for this element of the Policy.
Contrary to what
the Respondent asserts, the Panel finds that the Complainant provides evidence
that the Respondent received pay-per-click fees from the disputed domain name,
and that he deliberately took actions to receive those fees. Thus the Panel finds that the Respondent took
advantage of the inherent confusion between the disputed domain name and the Complainant’s
mark for the Respondent’s own financial gain.
The Panel concludes that the Respondent registered and used the disputed
domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum
correctly notes that the disputed domain name consists of generic terms. This could be a defense against bad faith
registration and use. See Target Brands, Inc. v. Eastwind
Group, FA 267475 (Nat. Arb. Forum
However, that defense requires a finding that the Respondent has rights or legitimate interests in the disputed domain name and is using the disputed domain name in connection with the generic terms. As noted above, the Panel finds that, in the present case, the Respondent does not have rights or legitimate interest in the disputed domain name and was not using the disputed domain name in connection with the generic terms.
Therefore, the Panel holds that the Complainant has satisfied its burden of proof for this element 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 <1stmarinerbank.info> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: March 6, 2009
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