San Diego Private Bank v. PB Holdings LLC
Claim Number: FA0903001250495
Complainant is San Diego Private Bank (“Complainant”), represented by Maria Johnson, of De Novo Legal PC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sandiegoprivatebank.com>, registered with Register.com, 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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 16, 2009.
On March 20, 2009, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sandiegoprivatebank.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 April 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 21, 2009 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on April 21, 2009.
On April 24, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant San Diego Private Bank (“Complainant”) seeks transfer of the domain name <sandiegoprivatebank.com> from Respondent PB Holdings LLC (“Respondent”). Complainant contends that it has trademark rights to the mark SAN DIEGO PRIVATE BANK through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) on the Supplemental Register, Reg. No. 3,214,392 issued February 27, 2007, filed June 24, 2006, with a claimed date of first use of September 5, 2005. Complainant contends that Respondent has not attempted to use the domain name in the course of ordinary business, the domain name is confusingly similar to Complainant’s registered trademark SAN DIEGO PRIVATE BANK and would tend to cause confusion in the market place. Complainant further contends that the Respondent’s use of the domain name is not in connection with any bona fide offering of goods or services, Respondent is not commonly known by the domain name, is not making any legitimate non-commercial or fair use of the domain name, and has the intent to use for commercial gain by misleadingly diverting consumers. Complainant further contends that Respondent’s registration should be considered as having been “registered or used in bad faith” because Respondent has provided deliberately false and misleading contact information and acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant, and other similarly situated private bank owners. Complainant further contends that Respondent is the registrant for eleven private bank dot-com domains, none of which are currently in use within the banking industry.
Respondent contends that Complainant has failed to provide sufficient evidence to establish valid trademark rights in the mark SAN DIEGO PRIVATE BANK by relying solely on evidence of registration of the mark on the Supplemental Register. Complainant also fails to establish that Respondent has no rights or legitimate interests in the domain name, and has failed to present sufficient evidence of Respondent’s bad faith since Respondent registered the domain name before the date on which Complainant claims to have first used the mark. Respondent contends that Complainant materially misrepresents the UDRP Rule regarding bad faith as having been “registered or used in bad faith” when Complainant must prove that the domain name was “registered and used in bad faith.” Bad faith registration and use are cumulative requirements. Respondent contends that it registered the domain name on December 13, 2004, nearly a year before Complainant claims to have first used the mark. Respondent contends that it had a bona fide intention to use the mark in connection with banking services, and submitted an intent-to-use application with the USPTO on March 30, 2005.
Respondent contends that Complainant’s submission relying solely on rights on the Supplemental Register is not sufficient to establish trademark rights in the UDRP proceeding and contends that a registration of a mark on the Supplemental Register constitutes an admission that a mark is merely descriptive. In order to establish protected rights in a trademark registered on the Supplemental Register, a Complainant must submit evidence showing the mark has acquired distinctiveness, which Complainant has not done.
Respondent further contends that it has legitimate interests in providing private banking services to customers and has taken steps prior to Complainant’s asserted operations to provide private banking services in various geographic areas. Respondent further contests that its registration was not in bad faith and contends that its e-mail address is active and it has not provided false contact information as part of the registration. Respondent contends that Complainant has committed reverse domain name hijacking because the domain name was registered prior to the date Complainant claims first use of the mark for which it has not established acquired distinctiveness.
Complainant has established that it has some trademark rights to the mark SAN DIEGO PRIVATE BANK and that the domain name is identical or confusingly similar to its mark; Complainant has established that Respondent lacks rights or a legitimate interest to the mark; however, Complainant has failed to establish bad faith registration and use of the domain name by Respondent, and thus, Complainant has failed to establish at least one element required under the Policy, and the relief requested is denied.
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.
Complainant asserts its rights in the SAN DIEGO PRIVATE BANK mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) on the Supplemental Register (Reg. No. 3,214,392 issued February 27, 2007; filed June 24, 2006). Complainant has some rights in the mark dating back to the filing date under Policy ¶ 4(a)(i). See Action Sports Videos v. Reynolds, D2001-1239 (WIPO Dec. 13, 2001) (holding that, although the complainant's registration on the Supplemental Register denotes a descriptive mark without secondary meaning, the complainant nevertheless had standing to initiate a UDRP claim because the Policy at paragraph 4a(i) requires only that the complainant have trademark or service mark “rights” in the disputed domain name, strong or weak though they be); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007).
Complainant does not claim common law rights, but Complainant’s attached evidence of its trademark registration under the Supplemental Register, claims a date of first use in commerce of September 5, 2005. A finding of secondary meaning in the mark is not sought by Complainant.
argues that the <sandiegoprivatebank.com> domain name is identical to the SAN DIEGO PRIVATE BANK mark. The omission of spaces in a mark and the
addition of the generic top-level domain “.com” are irrelevant under Policy ¶
4(a)(i), and the disputed domain name is identical or
confusingly similar to the mark under Policy ¶ 4(a)(i). See
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
Complainant argues that Respondent is not commonly known by the disputed domain name, and has not acquired any trademark or service mark rights in the disputed domain name. The WHOIS information lists Respondent as “PB Holdings LLC.” Complainant alleges that Respondent has registered the disputed domain name solely in order to sell it to Complainant, and that Respondent has registered other similar “private bank” domain names in the context of other “similarly situated Private Bank owners.” Complainant has set forth a prima facie case that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent disputes Respondent’s contentions but fails to show sufficient proof of its rights or legitimate interests in the name, contending generally that some of its “plans have not yet materialized.” Thus, Complainant has satisfied this element regarding rights and legitimate interests under Policy ¶ 4(a)(ii).
Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent argues that it could not have had the required bad faith intent since Complainant’s marks did not exist at the time of registration, and that there is no evidence of any communications between the parties. Respondent further contends that Complainant’s assertions of Respondent’s intent to sell the disputed domain name to Complainant are false and unsupported. Respondent’s registration of the disputed domain name predated any of Complainant’s implied or asserted allegations of rights in the mark. Thus, Respondent did not engage in bad faith registration under Policy ¶ 4(a)(iii). See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration); see also Sanitech Corp. v. Paton, FA 935273 (Nat. Arb. Forum Apr. 30, 2007) (holding that Policy ¶ 4(a)(iii) requires bad faith registration and use, so where a respondent initially registered the disputed domain name in good faith, the panel should deny the transfer of the disputed domain name to the complainant).
Even though Complainant has failed to satisfy its
burden under the Policy, this does not necessarily require a finding of reverse
domain name hijacking against Complainant.
does not submit proof of bad faith necessary to satisfy its burden to establish
the serious claim of reverse domain name hijacking.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sandiegoprivatebank.com> domain name not be TRANSFERRED.
David P. Miranda, Esq., Panelist
Dated: May 4, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum