Regions Asset Company v.
ONBFS
Claim Number: FA1007001333303
PARTIES
Complainant is Regions Asset Company (“Complainant”), represented by Michael
J. Allen, of Steptoe & Johnson, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amsouthfinancial.com>, registered
with GoDaddy.com,
Inc.
PANEL
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.
Honorable Daniel B. Banks, Jr., Honorable Nelson A. Diaz, and Tyrus R.
Atkinson, Jr., Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 1, 2010.
On July 2, 2010, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <amsouthfinancial.com> domain name is
registered with GoDaddy.com, Inc. and
that the Respondent is the current registrant of the name. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.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 July 14, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of August 3,
2010 by which Respondent could file a Response to the Complaint, via e-mail to
all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to
postmaster@amsouthfinancial.com. Also on
July 14, 2010, the Written Notice of the Complaint, notifying Respondent of the
email addresses served and the deadline for a Response,
was transmitted to Respondent via post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts.
A timely Response was received and determined to be complete on August 3, 2010.
Complainant’s Additional Submission was received on August 9, 2010.
On August 12, 2010, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Honorable Daniel B. Banks, Jr., Honorable Nelson A.
Diaz, and Tyrus R. Atkinson, Jr., as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant owns and maintains all intellectual property, including
the AMSOUTH name and mark, for Regions Financial Corporation, one of the
largest financial institutions in the
The Complaint is based upon the Complainant’s service mark, AMSOUTH,
which has been continually used in commerce since at least as early as 1981.
In April 1981, Alabama Bancorporation, a large bank in
In 1987, AmSouth expanded into
Since becoming AmSouth Bank in 1981, significant sums of money have
been spent advertising the AmSouth name and mark in connection with financial
and banking services on television, radio, billboard, print and point of sale
advertising.
In November 2006, Complainant’s parent company, Regions Financial
Corporation and AmSouth merged to create one of the largest financial
institutions in the
Complainant owns several
The domain name, <amsouth.com>, currently registered to
Complainant and used in Complainant’s business, was originally registered on
July 29, 1995, and has been associated with Complainant’s business or that of
its predecessor, since that time.
Respondent Rance Kay was the President of Ocala National Bank of
After the bank closing, on February 17, 2009, Respondent registered the
Disputed Domain Name under the name Rance Kay/Amsouth Financial Affiliate,
LLC. As of March 31, 2010, the Disputed
Domain Name resolved to a website that offers financial, lending, and credit
services under the AMSOUTH FINANCIAL and AMERICAN SOUTH FINANCIAL marks.
Rance Kay is not affiliated with Complainant or otherwise authorized to
use the AMSOUTH name and mark.
Commencing on June 17, 2009, beginning with a cease and desist letter
from Complainant to Respondent, a series of communications were exchanged
between the parties resulting in Respondent’s agreement to cease using the
AMSOUTH mark as its corporate name, and agreed to use AMERICAN SOUTH FINANCIAL
as its corporate name. Respondent
offered to transfer the domain name for the sum of $1,500.00. Complainant responded with an offer of
$750.00. Respondent communicated with
Complainant on September 30, 2009, indicating that Respondent had ceased all
use of AMSOUTH on its website but would not agree to transfer the Disputed
Domain Name.
B. Respondent
The Respondent denies that the domain name is in dispute or that it
should be subject to transfer.
Amsouth has not existed as an individual entity since May 25, 2006 when
it was determined that Amsouth would merge with Regions Financial Corp. and
operate under the name Regions Financial Corp.
Notwithstanding that Respondent denies the allegations, Respondent has
changed its name to American South Financial which has resolved the dispute but
upon discovering this effort on the part of Respondent, the Complainant
deliberately and in an effort to frustrate Respondent purchased the domain name
of American South Financial.
The Amsouth name is no longer being actively used by the Respondent.
The Respondent agreed to transfer the name if the Complainant would
simply pay the reasonable cost of setting up a new domain. The Complainant refused to make such payment
in the very nominal amount of $1,500 and then some eight months later elected
to file this complaint.
The domain name is not identical or confusingly similar to any
trademark or service mark that Complainant is actually using at this time.
Respondent has a legitimate business interest in the Domain Name.
The Domain Name is justifiably registered to Respondent and is being
used in good faith.
The Respondent does not wish to engage in a long process of dispute
and, again, has therefore canceled its use of the domain name although it still
owns and has valid rights to the registration rights.
C. Additional Submissions
Complainant’s Additional Submission contends that Respondent’s
statement that it has canceled all use of the Disputed Domain Name and changed
its business name is an admission that Respondent has no rights to or
legitimate interests in the domain name at issue. Complainant contends that Respondent’s bad
faith is evidenced by its demand that Complainant pay it $1,500 for the
Disputed Domain Name which is well in excess of the registration cost. Complainant further contends that if the
domain name is not transferred, nothing prevents the Respondent from reposting
infringing content at the Disputed Domain Name upon termination of this
proceeding.
FINDINGS
1.
Complainant
is a major banking and financial company with rights in the AMSOUTH mark.
2.
Respondent
is a financial company which knew or should have known of Complainant’s rights
in the AMSOUTH mark.
3.
The
domain name, <amsouthfinancial.com>
is confusingly similar to Complainant’s AMSOUTH mark.
4.
Respondent
has no rights to or legitimate interests in the <amsouthfinancial.com> domain name.
5.
The <amsouthfinancial.com> domain
name was registered and used in bad faith.
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.”
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 has provided evidence of its
registrations of the AMSOUTH mark with the United States Patent and Trademark
Office (“USPTO”). Complainant’s
registration of the AMSOUTH mark with the USPTO is sufficient evidence of its
rights in the mark pursuant to Policy ¶ (a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June
29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the]
complainant has met the requirements of Policy ¶ 4(a)(i); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr.
17, 2006) (“Complainant has established rights in the MICROSOFT mark through
registration of the mark with the USPTO.”).
Complainant argues that Respondent’s <amsouthfinancial.com> domain
name is confusingly similar to Complainant’s AMSOUTH mark. Complainant asserts that Respondent’s
disputed domain name incorporates Complainant’s entire AMSOUTH mark and merely
adds the descriptive term “financial” and the generic top-level domain (“gTLD”)
“com.” The addition of term to a Complainant’s
mark which merely describes the product or service produced by Complainant does
not distinguish a domain name from the mark.
See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005). See
also Esperian Info. Solutions, Inc. v. Credit Research, Inc. D2002-0095
(WIPO May 7, 2002). It is beyond dispute
that the mere addition of a generic top-level domain (“gTLD”) does not serve to
distinguish the domain name from the mark. See Damson, Inc. v.
Complainant prevails under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶ (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 has established that it is not
affiliated with Respondent and has not given Respondent authority to use the
AMSOUTH mark. It is clear that
Respondent is not commonly known by the disputed domain name pursuant
to Policy ¶ 4(c)(ii). The WHOIS
information indicates that the registrant of the <amsouthfinancial.com> domain name is “ONBFS.” See 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 “coopertown.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.
Complainant contends that the Respondent’s
disputed domain name resolved to a website that offered financial, lending, and
credit services that compete with Complainant and its position within the
banking industry. Such activities have
not been found to be either a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use pursuant to Policy ¶(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA
157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of
[Complainant’s] SAFLOK mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services.”); see also 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).
Complainant contends that Respondent’s
agreement, in response to communications between the parties, not to use the
AMSOUTH name and to do business under the name, American South Financial, to
“cancel its use of the domain name”, and an offer to transfer the domain name
for the sum of $1,500, is evidence of Respondent’s lack of rights to and
legitimate interests in the disputed domain name. The Panel finds these contentions to be
accurate. See Williams-Sonoma, Inc. v. Fees, FA
937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s
willingness to sell a domain name to the complainant suggests that a respondent
has no rights or legitimate interests in that domain name under Policy ¶
4(a)(ii))); see also Mothers Against
Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003)
(holding that under the circumstances, the respondent’s apparent willingness to
dispose of its rights in the disputed name suggested that it lacked rights or
legitimate interests in the domain name).
Complainant prevails under the requirements
of Policy ¶ 4(a)(ii).
The Uniform Domain Dispute Resolution Policy,
in Paragraph 2, states that by applying to register a domain name one represents
and warrants that to the knowledge of the registrant, the registration of the
domain name will not infringe upon or otherwise violate the rights of any third
party. A violation of this provision is
evidence of bad faith. See Slep-Tone Ent. Corp. v. Christopher C. Dremann FA 093636 (Nat. Arb. Forum Mar. 13,
2000). Respondent does not contend that
it was not aware of Complainant’s mark, when the disputed domain name was
registered and used. Respondent’s sole
contention on this issue is that AMSOUTH has not existed as an individual
identity since the merger with Regions Financial Corporation.
It is impossible not to infer that
Registrant, who was a banking officer in the State of
Complainant alleges that Respondent’s
disputed domain name offers financial, lending and credit services that
directly compete with Complainant.
Complainant further alleges that Respondent’s use of the confusingly
similar domain name is likely to confuse Internet users as to Complainant’s
sponsorship of or affiliation with the disputed domain name. The Panel finds that Respondent’s registration
and use of the confusingly similar <amsouthfinancial.com>
domain name is Respondent’s attempt to intentionally attract, for commercial
gain, Internet users to its website and is thus evidence of Respondent’s bad
faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v.
Perot.net, FA 95312 (Nat. Arb.
Forum Aug. 29, 2000) (finding bad faith where the domain name in question is
obviously connected with the complainant’s well known marks, thus creating a
likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 111, 2000)
(finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the
complainant’s mark on its website and offering identical services as those
offered by the complainant); see also
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Am. Online, Inc., v. Miles, FA
105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using
the domain name at issue to resolve to a website at which Complainant’s
trademarks and logos are prominently displayed. The Panel finds that
this conduct is that which is prohibited by Paragraph 4 (b)(iv)
of the Policy”).
The true dispute existing between these
parties is not that the disputed domain name should not be transferred to
Complainant, but a dispute regarding Complainant’s alleged registration of
American South Financial, which is the name under which Respondent informed
Complainant that it planned to use as its business name after Respondent ceased
using the AMSOUTH mark. The further
dispute was in regard to the fair cost of Respondent’s costs in setting up a
new domain. These issues are not before
the Panel and cannot be decided. It is
unnecessary to address the issue of whether Respondent registered the domain
name in violation of Policy ¶ 4 (b)(i).
Complainant prevails under Policy ¶ 4(a)(iii).
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 <amsouthfinancial.com> domain name be
TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr.
Chairman
Honorable Daniel B. Banks, Honorable Nelson
A. Diaz and Tyrus R. Atkinson, Jr., Panelists.
Dated: August 24, 2010
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