The Canandaigua National
Bank and Trust Company v.
Claim Number: FA0904001260209
PARTIES
Complainant is The Canandaigua National Bank and Trust Company (“Complainant”), represented by Kristen
M. Walsh, of Nixon Peabody LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <canandaiguanational.com>, registered
with Compana,
Llc.
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.
James Bridgeman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 29, 2009; the
National Arbitration Forum received a hard copy of the Complaint on April 30, 2009.
On May 2, 2009, Compana, Llc confirmed by e-mail to the
National Arbitration Forum that the <canandaiguanational.com> domain name
is registered with Compana, Llc and that
the Respondent is the current registrant of the name. Compana, Llc
has verified that Respondent is bound by the Compana,
Llc 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 May 6, 2009, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 26, 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 postmaster@canandaiguanational.com by e-mail.
A timely Response was received and determined to be complete on May 26, 2009.
On 29 May 2009, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed James Bridgeman as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant was incorporated in 1887, and has used the Canandaigua National Bank name and brand in connection with its banking and financial services for over 120 years.
Complainant submits that by virtue of its long, continuous, and exclusive use of the service mark CANANDAIGUA NATIONAL BANK in connection with banking and financial services, the mark has acquired secondary meaning, and, as a result, Complainant has acquired strong common law rights in the mark CANANDAIGUA NATIONAL BANK. Information about the Complainant’s banking services is available on the website, <cnbank.com>.
Complainant owns common law rights in the mark CANANDAIGUA NATIONAL
BANK. See Pritzker v. E
Registration c/o DNS Administration, FA 506761 (Nat. Arb. Forum Aug. 15, 2005) (Complainant can satisfy ICANN
Policy ¶ 4(a)(i) by establishing common law rights in the mark; federal
registration of the mark is not required).
The <canandaiguanational.com> domain name is confusingly
similar to the Complainant’s service mark, CANANDAIGUA NATIONAL BANK, because
it is identical but for the deletion of the descriptive word BANK.
Respondent does not meet the criteria in ¶ 4(c) of the ICANN Uniform
Domain Name Dispute Resolution Policy for demonstrating rights or legitimate
interests in the <canandaiguanational.com> domain name.
On and prior to April 8, 2009, Respondent was using the <canandaiguanational.com
domain name > to direct consumers to a commercial website featuring the
banner “Welcome to canandaiguanational.com” and the following statement: “For resources and information on Canandaigua
National Bank and Canandaigua National” in which the underlined
phrases are links. The left side of the
website features a list of “Related Searches” for various Canandaigua terms
including the following: Canandaigua
National Bank and Canandaigua National.
A printout of the home page at <canandaiguanational.com> has been
filed as an annex to the Complaint.
On and prior to April 8, 2009, Internet users clicking through the
either of the Canandaigua National Bank links, or either of the Canandaigua
National links, were directed to a page with “Sponsored Listings” with links to
commercial sites, some of which appear to relate to mortgage-related service
providers who could be in competition with Complainant. None of the “Sponsored
Listings” link to Complainant’s website or refer to services offered by
Complainant. For example, the first
“Sponsored Listing” is displayed as follows:
Canandaigua National Bank
$200,000 Mortgage for $699/month.
See Lower Payment Now – No SSN Reqd.
Mortgage.LoanOffers.com
Internet users clicking on this Canandaigua National Bank link were
redirected to the website <loanoffers.com>. Complainant does not operate
or have any other connection with such website, and neither Complainant nor its
services are described on such website.
On and prior to April 8, 2009, when consumers initially arrived at
Respondent’s website at the <canandaiguanational.com> address,
pop-up advertisements appeared. For
example, on April 8, 2009, Internet users arriving at the site were exposed to
a pop-up advertisement relating to screen savers.
At some point between April 8, 2009 and April 28, 2009, Respondent
modified the layout of the commercial website appearing at the address of the
domain name at issue. A screenshot from <canandaiguanational.com> website printed
on April 28, 2009 has been exhibited as an annex to the Complaint. While the banner “Welcome to
canandaiguanational.com” and the statement “For resources and information on Canandaigua
National Bank and Canandaigua National” no longer appear, the
website continues to have links to Canandaigua National and Canandaigua
National Bank, along with a new link for Canandaigua National Bank Trust,
appearing in both the “Top Searches” section and the “Also Try” section of the
website.
On April 28, 2009, Internet users clicking through either of the
Canandaigua National links are directed to a page of “Sponsored Results” with
links to commercial sites, some of which appear to relate to mortgage-related
service providers who could be in competition with Complainant. For example, as shown in Exhibit I, the first
“Sponsored Result” is displayed as follows:
Mortgage Refinance Rate at 4.55% APR
Get $200k mortgage loan for $817/mo.
Lower your payment – Save $1000s.
Refinance.MortgageSavingZone.com
Complainant
does not operate or have any other connection with the website
Refinance.MortgageSavingsZone.com, and neither Complainant nor its services are
described on such website.
On April 29, 2009, Internet users clicking through either of the two
Canandaigua National Bank links or either of the two Canandaigua National Bank
Trust links are directed to a page of “Sponsored Results” with links to commercial
sites, some of which appear to relate to mortgage-related service providers who
could be in competition with Complainant.
Thus, it
appears that Respondent is using Complainant’s CANANDAIGUA NATIONAL BANK mark
to lure Internet users to its site so that it may generate income from the
resulting display of pop-up advertisements, “Sponsored Listings,” “Sponsored
Results,” and/or links to other websites.
Such use of the Complainant’s CANANDAIGUA NATIONAL BANK mark is not a
use in connection with a bona fide offering of goods or services pursuant to
ICANN Policy 4(c)(ii), or a legitimate noncommercial or fair use of the domain
pursuant to ICANN Policy 4(c)(iv). See Bausch
& Lomb Inc. v. Tsung, FA 247973 (Nat.
Arb. Forum May 5, 2004) (using a domain name confusingly similar to
complainant’s mark to direct Internet users to, inter alia, advertisements and pop-up banners is not a use in
connection with a bona fide offering of goods or services nor a legitimate
non-commercial or fair use of the domain name); State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The
unauthorized providing of information and services under a mark owned by a
third party cannot be said to be the bona fide offering of goods or
services.”); America Online, Inc. v.
Tencent Commc’n Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that
use of the complainant’s well known mark “as a portal to suck surfers into a
site sponsored by [the respondent] hardly seems legitimate”).
There is no
evidence that Respondent has been commonly known by the <canandaiguanational.com>
domain name.
Respondent
is in no way connected with Complainant, and has no authority, license,
permission, or other arrangement from Complainant to use CANANDAIGUA NATIONAL
to identify Respondent’s domain name, website, or any products or services
provided by Respondent.
Complainant submits that the domain name in dispute was registered and is
being used in bad faith.
Complainant
submits that Respondent is diverting Internet users seeking information on the
Complainant’s banking and financial services to a commercial website through
the use of a domain name confusingly similar to the Complainant’s brand and
name, and is thereby disrupting a portion of Complainant’s business. Such disruption and diversion, for commercial
gain, evidences registration and use in bad faith pursuant to ICANN Policy
¶ 4(b)(iv). See Bausch & Lomb Inc. v.
Tsung, Nat. Arb. Forum Claim Number
FA247973 (May 5, 2004) (using a domain name that is confusingly similar to
complainant’s mark to divert Internet users to Respondent’s commercial website
constitutes diversion, motivated by commercial gain, and is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and
use under Policy ¶ 4(b)(iv) where a respondent was diverting Internet users
searching for a complainant to its own website and likely profiting from
click-through fees).
Complainant’s mark, CANANDAIGUA NATIONAL BANK, is unique. “Canandaigua” the English translation of the
Seneca Indian word meaning “Chosen Spot.” Other than in connection with the
city and lake of that name in the Finger Lakes region of
Complainant
sent a letter to Respondent by e-mail and U.S. Mail on January 26, 2009
regarding this dispute over the domain name in dispute.
Respondent
replied via e-mail on January 27, 2009, indicating that Complainant’s “request
has been forwarded to our legal representative and you should hear from them
within 15-21days of the date of this email.”
Having received no further response from, or on behalf of, Respondent,
on February 25, 2009, Complainant sent a follow-up e-mail to Respondent again
objecting to Respondent’s use and registration of the domain name in dispute. Copies of the correspondence have been filed
as an annex to the Complaint. Respondent has not replied. Respondent’s apparently untruthful statement
that Complainant would be contacted by Respondent’s legal representative and failure
to respond to Complainant’s February 25th e-mail further demonstrate
that Respondent registered the domain name in dispute in bad faith, and has no
legitimate rights to the domain name.
The Complainant requests that the Panel issue a decision that the
domain name registration be transferred pursuant to Rule 3(b)(x) and Policy ¶
4(i).
B. Respondent
Respondent herein agrees
to the relief requested by the Complainant and states that it will, upon order
of the Panel, transfer the domain name at issue <canandaiguanational.com> to the Complainant. The Respondent
states however that it is not thereby making an admission of the three elements
of Policy ¶ 4(a) but rather is making an offer of a “unliteral consent to
transfer,” as prior Panels have deemed it.
Respondent cites The Cartoon Network LP, LLLP v. Mike Morgan,
D2005- 1132 (WIPO Jan. 5, 2006) wherein the Panel noted that where a respondent
makes an offer to transfer there were numerous ways the Panel can proceed:
i.
to grant the relief requested by the Complainant
on the basis of the Respondent’s consent without reviewing the facts supporting
the claims (see Williams-Sonoma Inc. v. EZ-Port, D2000-0207 (WIPO May 8, 2000); Slumberland France v. Chadia Acohuri,
D2000-0195 (WIPO June 14, 2000);
ii.
to find that consent to transfer means that the
three elements of paragraph 4(a) are
deemed to be satisfied, and so transfer should be ordered on this basis (see Qosina
Corporation v. Qosmedix Group, D2003-0620 (WIPO Nov. 10, 2003); Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Jan.
19, 2001); or
iii.
to proceed to consider whether on the evidence
the three elements of 4(a) are satisfied
because the Respondent’s offer to transfer is not an admission of the
Complainant’s right (Koninklijke Philips
Electronics N.V. v. Mangeware, D2001-0796 (WIPO Oct. 25, 2001) or because
there is some reason to doubt the genuineness of the Respondent’s consent (Societe Francaise du Radiotelephone-SFR v.
Karen, D2004-0386 (WIPO July 22, 2004; Eurobet
UK Limited v. Grand Slam Co., D2003 -0745(WIPO Dec. 17, 2003).
Respondent submits that
being conscious of the caution for due expedition in Rule 10(c), the best and
most expeditious course is for the Panel to hold that “a genuine unilateral
consent to transfer by the Respondent provides a basis for an immediate order
for transfer without consideration of the
Policy ¶ 4(a) elements.
Where the Complainant has sought transfer of disputed domain names, and the
Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the
Panel can proceed immediately to make an order for transfer. This is clearly
the most expeditious course.” Williams-Sonoma,
Inc. v. EZ-Port, D2000-0207 (WIPO May 5, 2009).
The panel in Citigroup Inc. v. Texas International
Property Associates – NA NA, FA 1210904 (Nat. Arb. Forum Aug. 5, 2008) noted
that judicial economy dictates that the panel should simply proceed to its
decision since there is no dispute between the parties and commented: “Thus,
this Panel disagrees with the proposition that even though a respondent
consents to transferring an at-issue domain name, a substantive review may be
required. See Graebel Van Lines, Inc. v.
The remedies available
to a complainant pursuant to any proceeding before an Administrative Panel
shall be limited to requiring the cancellation of [the] domain name or the
transfer of [the] domain name registration of the complainant (emphasis added).
See Policy ¶ 4(i).
A panel’s only purpose
in rendering substantive Paragraph 4(a) findings is relegated to that end, and
that end alone. What amounts to advisory opinions are not authorized by the
Policy, Rules, or otherwise. Therefore, when a respondent consents to a
complainant’s requested relief and that complainant has rights in the at-issue
domain name(s), then only under particular circumstances that call into
question the validity of the respondent’s consent, or for similar other good
cause, might a panel need to proceed to consider the merits of the complaint
via further analysis under Policy ¶ 4(a). Such circumstances are not present in
the instant dispute, and so the requested relief must be granted.
If the Panel decides
that further analysis is required, Respondent respectfully requests that
Respondent be given the opportunity to prepare a more formal response.
For the foregoing
reasons, Respondent requests that the Panel order the immediate transfer of the
disputed domain name.
C. Additional Submissions
No additional submissions were received.
FINDINGS
The Panel finds that by virtue of Complainant’s long, continuous, and exclusive use of the service mark CANANDAIGUA NATIONAL BANK in connection with banking and financial services for over 120 years since it was incorporated in 1887, the mark has acquired secondary meaning, and, as a result, Complainant has acquired common law rights in the mark CANANDAIGUA NATIONAL BANK as claimed.
Complainant’s said rights accrued prior to the registration of the domain name at issue on June 21, 2005.
There is little
information available about Respondent.
DISCUSSION
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.”
Policy ¶ 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 has requested in the
Complaint that the
Panel issue a decision that the domain name registration be transferred
pursuant to ICANN Rule 3(b)(x) and ICANN Policy ¶ 4(i).
Respondent responded, agreeing to transfer the domain name to Complainant, but making no admission in relation to the elements of Policy ¶ 4(a) and requesting this Panel to direct that the domain name at issue be transferred to Complainant without making a finding on the substantive issues.
Complainant has not made any further
submissions on this or any other point.
This Panel has considered the submissions of
Respondent including the submissions based on the alternatives advocated by the
panel in The Cartoon Network LP, LLLP v. Mike Morgan, D2005- 1132 (WIPO Jan. 5, 2006).
In the very early case under the Policy the
panellist in Williams-Sonoma, Inc. v.
EZ-Port, D2000-0207 (WIPO May
5, 2000) made such an order on consent without considering the substantive
merits of the Complaint.
This approach has been followed by other panels in similar
circumstances, such as the recent decision of the panel in Valero Energy Corporation ,
Valero Refining and Marketing Company v. RareNames, WebReg, D2006-1336 (WIPO Dec. 22, 2006), following The
Cartoon Network LP, LLLP v. Mike Morgan, D2005-1132 (WIPO Jan. 5, 2006) and Williams-Sonoma,
Inc. v. EZ-Port, D2000-0207
(WIPO May 8, 2000).
However, the principles set out in The Cartoon Network have not been
universally accepted without qualification. In another recent decision, the panel in Sassybax, L.L.C. v.
While the decisions of previous panels are helpful this
Panel must look to the Policy, the Rules and the Supplemental Rules to
ascertain his jurisdiction to
make a consent order in such circumstances. The following provisions in
particular appear to be relevant:
Policy ¶ 4 expressly imposes on a Complainant
to prove that each of the three elements in Policy ¶ 4(a) are present.
Policy ¶ 8 states that a Respondent may not
transfer the domain name inter alia “during a pending administrative proceeding
brought pursuant to Policy ¶ 4
or for a period of fifteen (15) business days (as observed in the location of
our principal place of business) after such proceeding is concluded.
Rule 1 defines “panel” as “an administrative panel appointed by a
Provider to decide a complaint concerning a domain-name registration.”
Rule 10 sets out the “General
Powers” of a panel inter alia
follows:
“The Panel shall conduct the administrative proceeding in such manner
as it considers appropriate in accordance with the Policy and these Rules…”
“The Panel shall ensure that the administrative proceeding takes place
with due expedition. It may, at the request of a Party or on its own motion,
extend, in exceptional cases, a period of time fixed by these Rules or by the
Panel.”
Rule 15 (a) A Panel shall decide a complaint on the basis of the
statements and documents submitted and in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable.
Supplemental Rule 13 states inter
alia: “Panel decisions will meet the
requirements set forth in Paragraph 15 of the Rules…”
Supplemental Rule16 states inter
alia: “Once the Panel’s decision is
issued, the case is closed with the Forum.”
There is no express jurisdiction to make an Order in circumstances
where the Complainant has not succeeded in establishing each of the three
elements in Policy ¶4.
This Panel prefers to take the more cautious approach. It is clear from
the Policy that this Panel has jurisdiction to decide on the case on the
merits. It is less clear whether a panel has jurisdiction to direct a transfer
on consent without considering the merits. There is no good reason in the
present case to deviate from the clear imperative in the Policy and in the
circumstances this Panel will proceed to consider whether the Complainant has
satisfied the requirements of Policy ¶ 4.
In reaching this decision this
Panel is conscious that there is no delay caused by considering the case on its
merits, and from the beginning of cases under the Policy, in non contested
cases, Panels have refused to give default orders and have proceeded with full
consideration of the merits and furthermore in the present case a dispute
remains between the parties since Respondent has denied and therefore left in
issue the three elements in Policy ¶4.
This Panel is satisfied that the Complainant is the owner of common law rights in the service mark CANANDAIGUA NATIONAL BANK in connection with banking and financial services and these rights have accrued over the past 120 years.
The domain name contains two elements of Complainant’s mark although the non-dominant element BANK is not present. Given the distinctive combination of the CANANDAIGUA and NATIONAL elements, the removal of the non-dominant, descriptive element fails to create a meaningful distinction. See, e.g., Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK).
This Panel is satisfied that the domain name is confusingly similar to the Complainant’s mark. While the dominant element of the mark is a geographical place name, it is a unique place name.
In the
circumstances this Panel is satisfied that the domain name is confusingly
similar to Complainant’s mark and the Complainant has satisfied the first
element of the test in Policy ¶ 4.
Claimant has made out a prima
facie case that Respondent has no rights or legitimate interest in the
domain name. In the circumstances the burden of proof shifts to Respondent.
Respondent has made no admission on this element of the test but neither has it
provided any proof of rights or legitimate interest in the domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to
show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does
not have rights or legitimate interest in the subject domain names, which
burden is light. If Complainant
satisfies its burden, then the burden shifts to Respondent to show that it does
have rights or legitimate interests in the subject domain names.”).
In the circumstances Respondent has failed to
discharge the burden of proof and Complainant is entitled to succeed in the
second element of the test also.
Given the unusual character of the word Canandaigua, being the dominant element of
Complainant’s mark and the dominant element of the domain name, and given the
unusual combination of the geographical place name with the word NATIONAL in
the Complainant’s mark, it would seem to follow that Respondent chose the
domain name in order to establish an association between the domain name and Complainant’s
mark to confuse Internet users.
Respondent has been using the domain name in
an opportunistic manner to take predatory advantage of Complainant’s goodwill
in its mark and brand by causing the domain name at issue that is confusingly
similar to Complainant’s service mark, to resolve to a website with links to
businesses competing with Complainant. In
the circumstances of this case this Panel is satisfied that such use is prima facie evidence that Respondent
registered and is using the domain name in bad faith. See
Respondent, has had an opportunity to refute
the prima facie case made out by
Complainant but has chosen not to address this element of Complaint other than
to state that in offering to transfer the domain name to Complainant it is not
making any admissions.
Complainant has therefore also satisfied the
third and final element of the tests in Policy ¶ 4 and is entitled to succeed
in the Complaint.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <canandaiguanational.com> domain name
be TRANSFERRED from Respondent to Complainant.
James Bridgeman, Panelist
Dated: June 15, 2009
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