FloridaFirst Bank v. William Carlson, Jr.
Claim Number: FA0301000143677
PARTIES
Complainant
is FloridaFirst Bank, Lakeland, FL
(“Complainant”) represented by Rudy
Markham, of FloridaFirst Bank. Respondent is William Carlson, Sebring, FL (“Respondent”) represented by Todd G. Kocourek, of Bartolus PL.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <floridafirst.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that they have acted independently and impartially and,
to the best of their knowledge, have no known conflict in serving as Panelist
in this proceeding.
The
Honorable Robert T. Pfeuffer (Ret.), the Honorable John J. Upchurch (Ret.), and
the Honorable Charles K. McCotter, Jr. (Ret.), as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 27, 2003; the Forum received a hard copy of the
Complaint on January 30, 2003.
On
January 29, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <floridafirst.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
February 7, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 27, 2003
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@floridafirst.com
by e-mail.
A
timely Response was received and determined to be complete on March 13, 2003.
Complainant
filed a timely Additional Submission on March 17, 2003.
On March 27, 2003, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed the
Honorable Robert T. Pfeuffer (Ret.), the Honorable John J. Upchurch (Ret.), and
the Honorable Charles K. McCotter, Jr., as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s domain name <floridafirst.com> is identical
to Complainant’s registered and common law mark FLORIDAFIRST BANK.
2. Respondent does not have any rights or
legitimate interests in respect of the <floridafirst.com>
domain name.
3. Respondent registered the domain name <floridafirst.com> in bad faith.
Complainant,
FloridaFirst Bank, asserts that Respondent registered the domain name shortly
after Complainant made public notices in 1998 regarding its initial public
offering of stock. Complainant states, “Respondent has made no attempt to use
the domain name for any legitimate purpose.” Complainant asserts that it is
commonly known by FLORIDAFIRST BANK and routinely conducts business operations
under the mark.
B.
Respondent
Respondent,
William Carlson, Jr., asserts that he has donated and transferred all ownership
rights in the <floridafirst.com> domain name to Florida First
Capital Finance Corporation (“FFCFC”), a non-profit, small business loan
assistance company founded by the State of Florida in 1983.
C.
Additional Submissions
Complainant
contends that Respondent’s transfer to FFCFC is ineffective for the purposes of
ICANN since there has not been a transfer of the domain name with the
Registrar. See Policy 8(a). The Panel concludes that since Respondent
Carlson is still the holder of the domain name that he is the proper
Respondent.
FINDINGS
First
Federal Florida, a federally-chartered savings and loan association, commenced
its conversion to a stockholder-owned company in 1998, and full conversion was
completed in 2000. FloridaFirst
Bancorp, Inc., and its wholly-owned subsidiary, FloridaFirst Bank, are the
successor organizations to First Federal Florida. In conjunction with conversion from a mutual- to a stock-owned
organization, the name “FloridaFirst Bank” and “Bancorp” were adopted as
official names of the Bank and its holding company. Complainant contends that “FloridaFirst” is a commonly used
abbreviation for FloridaFirst Bank and FloridaFirst Bancorp, Inc. in Central
Florida.
On
October 27, 1998, First Federal Savings & Loan Association of Florida (predecessor
to FloridaFirst Bank), applied for registration with the United States Patent
and Trademark Office, as ITU (Intent to Use), for the service mark FLORIDAFIRST
BANK. The USPTO’s Trademark Electronic Search System (“TESS”) indicates
registration of the service mark for banking services on the Supplemental
Register on June 27, 2000. (Reg. No. 2388849) (Registration Date is also shown
as September 19, 2000). TESS shows the
following disclaimer: “No claim is made to the exclusive right to use “BANK”
apart from the mark as shown.” TESS
shows first use as October 11, 1999.
On
December 22 and 23, 1998, legal notices were published in the Bradenton Herald
and Lakeland Ledger, respectively, announcing FloridaFirst Bancorp’s intent to
acquire control of First Federal Savings and Loan Association of Florida. Since the registration of the service mark
FloridaFirst Bancorp has used the names “FloridaFirst Bancorp,” “FloridaFirst
Bank” and “FloridaFirst.”
On
January 14, 1999, Respondent registered the domain name <floridafirst.com>
(and subsequently renewed the registration for two-year periods effective
January 14, 2001 and 2003). Since the
original registration, the domain name has remained “Under Construction” and
has never been used.
On May
18, 2002, Respondent made an unsolicited offer to sell <floridafirst.com>
to FloridaFirst Bank. On that same date
the Respondent refused a counteroffer of $1,000 as inadequate, and declared his
intent to use the domain name for other business purposes.
Complainant
initiated the administrative proceeding by submission of the Complaint on
January 27, 2003. On February 4, 2003,
Respondent donated his rights to the domain name <floridafirst.com>
to Florida First Capital Finance Corporation (Florida First Capital Finance
Corporation), an economic development corporation founded by the State of
Florida in 1983. Also on February 4,
2003, Respondent initiated a formal transfer of the domain name <floridafirst.com>
with its Registrar, Network Solutions; however, due to these proceedings, a
hold had been placed on the domain name.
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
owns a federal service mark registration for FLORIDAFIRST BANK. Complainant’s predecessor disclaimed the exclusive
right to use “BANK”, apart from the mark.
The effect of the disclaimer is that the applicant claims only the whole
composite mark and not the particular portion(s) disclaimed. See Salem Five
Cents Savings Bank v. Direct Federal Credit Union, FA 103058 (Nat. Arb.
Forum February 15, 2002); see also McCarthy
on Trademarks and Unfair Competition (3d ed. 1992) at § 19.20 1.
The validity of the mark is to be determined by viewing the trademark as
a whole and not just the words “FloridaFirst.” See Lone Star Steakhouse & Saloon, Inc. v.
Longhorn Steaks, Inc., 106
F. 3d 355, 41 USPQ2d 1896, 1902 (11th Cir. 1997) (Registration for
“Lone Star Cafe” mark applies to mark as composite whole and not just the words
“Lone Star”; disclaimer of the word “Cafe” does not remove from the mark the
matter disclaimed), opinion modified on rehearing by Lone Star Steakhouse
& Saloon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379,44 USPQ2d 1217
(11th Cir 1997); cf. Lone Star Steakhouse & Saloon, Inc. v.
Alpha of Virginia, Inc., 43 F.3d 922, 33 USPQ2d 1481 (4th Cir.
1995) (Registration of “Lone Star Cafe” gave exclusive right to use term “Lone
Star” because registration explicitly disclaimed the word “Cafe” from complete
mark).
Hence,
when viewing Complainant’s FLORIDAFIRST BANK mark as a whole, Respondent’s <floridafirst.com>
domain name is not confusingly similar to the registered mark. See Dollar Fin. Group, Inc. v. Oakridge, FA
94977 (Nat. Arb. Forum July 17, 2000) (finding that the domain names,
<tillpaydayloan.com>, <tillpaydayloans.com>,
<untilpaydayloan.com>, and <untilpaydayloans.com> are not identical
or confusingly similar to Complainant’s CASH ‘TIL PAYDAY and CASH ‘TIL PAYDAY
LOANS trademarks and service marks).
Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning. See Pet Warehouse v. Pets.Com, Inc., D2000-0105 (WIPO April 13, 2000). Complainant is entitled to this presumption
as to its service mark FLORIDAFIRST BANK; however, the presumption does not
apply to “FloridaFirst,” which is less than the whole mark. To the extent the Complainant has any rights
pertinent to the disputed domain name, those rights must arise from its common
law rights. As a consequence,
Complainant has the burden of showing secondary meaning for its claimed service
mark. Complainant has failed to establish that the words “FloridaFirst,” apart
from the registered service mark as a whole, have acquired a secondary meaning
such that the relevant public exclusively associates the words with Complainant
as a source of services. Complainant has submitted no evidence directly
probative as to how consumers perceive its “FloridaFirst” mark or whether
consumers perceive the service mark as a source identifier associating its
banking services with only Complainant as their source. See Salem Five Cents Savings Bank v.
Direct Federal Credit Union, supra.
Furthermore, the words “FloridaFirst” are
not exclusively associated with Complainant. See Winchester
Properties, LLC v. DefaultData.com, FA 97114 (Nat. Arb. Forum June 22,
2001) (“Respondent has shown that the word ‘Winchester’ alone is used by
entities other than Complainant.” The
domain name <winchestercc> is not identical or confusingly similar to
Complainant’s mark, Winchester Country Club, nor is it a mark in which
Complainant can claim rights or interests.); see also CRS Technology
Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000)
(“concierge is not so associated with just one source that only that source
could claim a legitimate use of the mark in connection with a website.”).
Complainant
has failed to establish that the domain name <floridafirst.com> is
confusingly similar to its registered service mark, FLORIDAFIRST
BANK. Nor has Complainant shown common
law rights in the name “FloridaFirst.”
Since
Complainant has failed to satisfy Paragraph 4(a)(i) of the Policy, the issues
of rights or legitimate interests and bad faith need not be addressed.
DECISION
Having
failed to establish the first element required under ICANN Policy, the Panel
concludes that relief shall be DENIED.
The Honorable Robert T. Pfeuffer (Ret.),
Panelist Chair
The Honorable John J. Upchurch (Ret.),
Panelist
The Honorable Charles K. McCotter, Jr.,
Panelist
Dated: April 10, 2003
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