World Savings Bank, FSB and Golden West Financial Corporaton v. Netcorp
Claim Number: FA0502000414921
PARTIES
Complainants are World Savings Bank, FSB and Golden West Financial Corporation
(“Complainants”), represented by Ian K.
Boyd Esq., of Harvey Siskind Jacobs LLP, Four Embarcadero Center, 39th
Floor, San Francisco, CA 94111.
Respondent is Netcorp (“Respondent”), represented by Ari Goldberger Esq., of ESQwire.com Law Firm, 35
Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <worldsaving.com>, registered
with Address Creation.
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.
Alan L. Limbury as Panelist.
PROCEDURAL
HISTORY
Complainants submitted a Complaint to the
National Arbitration Forum electronically on February 3, 2005 and in hard copy
on February 7, 2005.
On February 14, 2005, Address Creation
confirmed by e-mail to the National Arbitration Forum that the domain name <worldsaving.com> is registered
with Address Creation and that Respondent is the current registrant of the
name. Address Creation has verified
that Respondent is bound by the Address Creation 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 14, 2005, a Notification of
Complaint and Commencement of Administrative Proceeding, setting a deadline of
March 7, 2005 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@worldsaving.com by e-mail.
A timely Response was received and
determined to be complete on March 7, 2005.
On March 11, 2005,
pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
Alan L. Limbury as Panelist.
RELIEF SOUGHT
Complainants request that the domain name be transferred
from Respondent to “Complainants,” without distinguishing between them.
PARTIES’
CONTENTIONS
A. Complainants
Complainants have used the WORLD SAVINGS
service mark for their savings and loan business, including mortgages and
banking, since 1912 and in interstate commerce for financial services
continuously and substantially for over 40 years. They own the registered service mark, WORLD SAVINGS, as well as
numerous domain names incorporating that mark, the principal and most
frequently used of which is <worldsavings.com>, registered in 1996, which
received nearly 3 million visits over the past 12 months.
The disputed domain name,
<worldsaving.com>, is confusingly similar to Complainants’ WORLD SAVINGS
mark. See State Farm Mut. Auto. Ins. Co. v. Commercial Real Estates, FA 94728
(Nat. Arb. Forum June 6, 2000) (finding the addition of the plural “s” to the
word “farm” is not significant in determining similarity).
There can be no question that Respondent,
located in California where Complainants are ubiquitous, was aware of
Complainants’ rights in the WORLD SAVINGS mark when it registered the <worldsaving.com>
domain name in March 2002.
Respondent has no rights or legitimate
interests in the disputed domain name, which Respondent registered after
Complainants’ mark had become well known.
Respondent does not offer any legitimate service under the mark, which
is not Respondent’s trade name. No
relationship exists between the parties, nor have Complainants authorized use
of their mark, yet Respondent’s website offers the same type of services for
which Complainants are so well known.
Respondent registered and is using the
disputed domain name in bad faith, having taken the singular form of
Complainants’ mark and used it in a confusingly similar way so as to usurp
Complainants’ goodwill.
B. Respondent
[The Response proceeds as if there were
only one Complainant].
Complainant’s mark and the disputed
domain are not identical or confusingly similar. The word “saving” is used in the disputed domain name as part of
the common expression “world saving” which describes coming to the aid of the
world, as in “during the 1940s the Allies were engaged in a ‘world saving’
mission to end the tyranny of Nazi Germany.”
The descriptive term ‘world saving’ is in common third party use. Users seeing the domain name would more likely
understand it as incorporating the common descriptive term as opposed to
Complainant’s mark.
Because ‘world saving’ is a descriptive
term to which Complainant does not have exclusive rights, Respondent, ipso facto, has rights and a legitimate
interest in the disputed domain name. Also, prior to the initiation of this
dispute, Respondent has used the disputed domain name in connection with
pay-per-click advertising, a use that has been recognized as legitimate under
the Policy.
Complainant has failed to establish bad
faith registration and use. Respondent had no knowledge of Complainant or its
mark at the time of registration. Where a complainant’s mark is descriptive, as
here, the complainant must proffer evidence that the respondent specifically
intended to confuse consumers seeking out the complainant. There is no such proof here.
Respondent’s President, Armen Kuryan
declares that he registered the disputed domain name because it was a
descriptive term available for anyone to register; that he then had no
knowledge of Complainant or its mark; that he uses the domain name in
connection with an advertising program operated by DomainSponsor.com, which
posts generic paid advertising links; that Respondent receives a share of the
advertising revenue earned by DomainSponsor.com; that the web site design and
the links appearing on the web site are automatically designated by
DomainSponsor.com’s software; that he did not select the links on the web site
and no effort was made by him or DomainSponsor.com to target links related to
Complainant’s business.
Armen Kuryan also denied registering the
domain name for the purpose of selling it to Complainant; nor with intent to
disrupt Complainant’s business; nor to confuse consumers seeking to find
Complainant’s website; nor to prevent Complainant from owning a domain name
incorporating its alleged trademark.
FINDINGS
Complainant, World Savings Bank, FSB, is
the United States’ second largest thrift with over one hundred billion dollars
of assets, 276 savings branches in ten states and lending operations in 38
states. It is a wholly owned subsidiary
of Complainant, Golden West Financial Corporation, a Fortune 500 company and
one of the largest financial institutions in the United States. Both companies are headquartered in
California where they have over 100 savings branches and loan offices
throughout the state.
Although Complainants, in asserting
trademark rights and domain name registrations, do not distinguish between
their separate corporate entities, it appears from the trademark certificates
in evidence that Complainant Golden West Financial Corporation is the sole
registrant with the United States Patent and Trademark Office of the WORLD
SAVINGS mark (Reg. No. 1,541,875 issued May 30, 1989) citing first use in
commerce in 1960. It has other
registrations for the WORLD SAVINGS mark that postdate the disputed domain name
registration on March 17, 2002, namely Reg. No. 2,604,651 (issued August 6,
2002) and Reg. No. 2,876,514 (issued August 24, 2004).
Complainant Golden West Financial
Corporation is also the sole U.S. registrant of the WORLD SAVINGS AND LOAN
ASSOCIATION mark (Reg. No. 1,188,909 issued February 2, 1982) and other WORLD
marks.
The Panel’s
own WHOIS enquiry reveals that Complainant, World Savings Bank, is the sole
registrant of the <worldsavings.com>, <worldsavings.biz>,
<worldsavings.info> and <worldsavings.org> domain names. [As precedent for such enquiry, see Koninklijke Philips Elecs. N.V. v. Relson
Ltd., DWS2001-0003 (WIPO Nov. 26, 2001) (finding that a Panel can use the
Internet itself as a common source for evidence which is open for everybody,
particularly the publicly accessible Internet website associated with disputed
domain names); see also Terabeam Corp. v. Goldman, D2001-0697
(WIPO Aug. 24, 2001); see also Kur-
und Verkehrsverein St. Moritz v. StMoritz.com, D2000-0617 (WIPO Aug. 23,
2000). The same may be done for other
publicly available information. See Tough Traveler Ltd. v. Kelty Pack Inc.,
D2000-0783 (WIPO Sept. 29, 2000) (news articles and advertisements are readily
available to panelists)].
Respondent is using the domain name in
connection with an advertising program operated by DomainSponsor.com, which
posts generic paid advertising links to various products and services, including
those of Complainants and those in competition with Complainants. In return,
DomainSponsor.com pays referral fees to Respondent based on revenue generated.
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 a 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.
Although
some of the WORLD SAVINGS registered marks postdate the domain name
registration, this panelist adopts the prevailing view that paragraph 4(a)(i)
of the Policy embodies no requirement that the complainant’s trademark rights
must have arisen before the disputed domain name was registered. See Valve Corp. v. ValveNET, Inc., D2005-0038 (WIPO Mar. 9, 2005) and the cases
there cited.
Complainant Golden West Financial
Corporation has established that it has rights in the WORLD SAVINGS mark
through registration with the United States Patent and Trademark Office and
through continuous use of that mark in commerce since 1960.
The evidence is insufficient to establish
that Complainant World Savings Bank, FSB has any rights in the WORLD SAVINGS
mark, either through registration or at common law. Further, the mere assertion of a parent and subsidiary
relationship is insufficient to establish that the subsidiary is licensed by
the parent to use the parent’s marks: See Danfoss A/S v Coldwell Banker Burnet, DBIZ2001-00020 (WIPO Mar. 27, 2002).
The <worldsaving.com>
domain name registered by Respondent differs from the WORLD SAVINGS mark by the
absence of a second letter “s” and the presence of the generic top-level domain
(gTLD) “.com.” The latter is irrelevant
to determining this element of the Policy.
See Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the gTLD “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar).
Many cases have established that
"essential" or "virtual" identity is sufficient for
the purposes of the Policy. See Stanley Works v. Camp Creek Co., Inc., D2000-0113 (WIPO Apr. 13, 2000); see also Nokia Corp. v. Nokiagirls.com,
D2000-0102 (WIPO Apr. 20, 2000); see
also Am. Online, Inc. v. Chan, D2001-0004 (WIPO Feb. 22, 2001); see
also Disney Enters., Inc. v.
Zuccarini, D2001-0489 (WIPO July 3, 2001); see also Komatsu Ltd. y v. RKWeb Ltd., D2000-0995
(WIPO Nov. 23, 2000); see also Am.
Online, Inc. v. Hind, D2001-0642 (WIPO July 1, 2001); see also Toronto-Dominion Bank v. Karpachev,
D2000-1571 (WIPO Jan. 17, 2001).
The test of
confusing similarity under the Policy is confined to a comparison of the
disputed domain name and the trademark alone, independent of the other marketing
and use factors, such as the "Sleekcraft factors" established in AMF Inc. v. Sleekcraft Boats, 599 F.2d
341,346 (9th Cir. 1979), usually considered in trademark
infringement or unfair competition cases.
See BWT Brands, Inc. v. NABR, D2001-1480 (WIPO Mar. 26, 2002); see
also Britannia Bldg. Soc’y v.
Britannia Fraud Prevention, D2001‑0505 (WIPO July 6, 2001); see
also Wal-Mart Stores, Inc. v. MacLeod,
D2000-0662 (WIPO Sept. 19, 2000); see also Koninklijke Philips Elecs. N.V. v. In Seo Kim, D2001‑1195 (WIPO
Nov. 12, 2001); see also Energy
Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19,
2001); see also Vivendi Universal
v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) and the cases there cited. See also the similar approach adopted by the
U.S. Federal court in N. Light Tech.,
Inc. v. N. Lights Club, 2000 U.S. Dist. LEXIS 4732 (D. Mass.
March 31, 2000).
Applying these tests, which ignore the
use of the word ‘savings’ in the mark as a noun and the possible use of the
word ’saving’ in the domain name as a verb, the Panel finds the disputed domain
name to be virtually identical and confusingly similar to the WORLD SAVINGS
mark of Complainant Golden West Financial Corporation.
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Complainant Golden West Financial
Corporation has established that it has rights in the WORLD SAVINGS mark. There is no evidence that Respondent is
commonly known by the <worldsaving.com>
domain name. No relationship has been
shown to exist between Complainants and Respondent. Complainant Golden West Financial Corporation asserts, without
contradiction, that it has not authorized Respondent to use its WORLD SAVINGS
mark or any mark virtually identical or confusingly similar thereto. Respondent has not disputed Complainants’
assertions as to the history of use of the WORLD SAVINGS mark nor of their
ubiquity in California, where Respondent has its address.
Complainants contend that the inference
should be drawn that Respondent knew of the WORLD SAVINGS mark when it
registered the disputed domain name. In the absence of evidence to rebut this,
the Panel would be persuaded to draw that inference. Accordingly, Complainants have made out a prima facie case in support of their allegations. The burden therefore shifts to Respondent to
show that it does have such rights or legitimate interests pursuant to Policy ¶
4(a)(ii). See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Paragraph 4(c) of the Policy sets out,
without limitation, circumstances which, if proved, establish the registrant’s
rights or legitimate interests to the disputed domain name. Respondent relies on the circumstances
specified in sub-paragraph 4(c)(i):
“(i) before any notice to you of the
dispute, your use of, or demonstrable preparations to use, the domain name or a
name corresponding to the domain name in connection with a bona fide
offering of goods or services;”
Since prior to the commencement of this dispute,
Respondent has used the disputed domain name to generate pay-per-click revenue
from advertisements to which Internet users are led, via a search engine with
numerous links to assorted goods and services, including those of Complainants
and their competitors. Such activity is
not necessarily illegitimate. All depends on whether Respondent
intended to siphon potential trade away from Complainants, since use which
intentionally trades on the fame of another cannot constitute a ‘bona fide’
offering of goods or services. See Ciccone v. Parisi, D2000-0847 (WIPO Oct.
12, 2000).
Although the
expression ‘world saving’ is descriptive of the idea of coming to the aid of
the world, it can hardy be regarded as an everyday expression which large
numbers of Internet users are likely to enter into their web browsers in order
to access a website about saving the world.
As a
descriptive expression, it is unlikely to generate anything like the volume of
Internet traffic and hence anything like the revenue to Respondent as would a
mistyping of the mark WORLD SAVINGS by Internet users seeking the services of
one or other of Complainants through the <worldsavings.com> website.
In choosing a
domain name to be used for the purpose of generating pay-per-click traffic,
Respondent’s President could have been expected to have turned his mind to the
prospect that the chosen name would generate as much Internet traffic as
possible.
On balance,
having regard to (a) Respondent’s failure to put in issue Complainants’ claims
as to the use over many years of the WORLD SAVINGS mark and as to Complainants’ ubiquity in California, where
Respondent has its address; (b) the consequential likelihood that Respondent
was aware when he chose the disputed domain name of the existence of that mark
and of the <worldsavings.com> domain name, and (c) the fact that
Respondent is not using the disputed domain name in accordance with the
descriptive meaning of coming to the aid of the world, the Panel is not
prepared to accept the declaration of Respondent’s President that he was
unaware of Complainants or the WORLD SAVINGS mark when he registered the
disputed domain name and concludes that he did so in order to derive benefit
from the goodwill attaching to the WORLD SAVINGS mark.
The Panel therefore finds that
Respondent, without authorization, has used a domain name virtually identical
and confusingly similar to Complainant Golden West Financial Corporation’s
registered WORLD SAVINGS mark to divert Internet users seeking Complainants’
products and services to another website. That website is designed to offer,
among other things, Complainants’ products and services and products and
services in competition with those of Complainants. Such use is not use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v.
Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003); see also Nat’l Collegiate Athletic Ass’n v. Halpern,
D2000-0700 (WIPO Dec. 10, 2000); see also Ameritrade Holdings Corp. v.
Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) see also Clinton v. Dinoia, FA 414641 (Nat. Arb.
Forum Mar. 18, 2005).
Respondent cannot escape responsibility
under the Policy for the layout and content of that website by leaving those
important matters for others or to some automated software program to
determine. It is the knowing diversion,
for commercial gain, of traffic intended for the trademark holder that deprives
Respondent’s use of the domain name of any rightful or legitimate character.
Therefore, the Panel concludes that
Respondent has not established that it has rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Thus, the Panel finds that Policy ¶
4(a)(ii) has been satisfied.
The knowing diversion, for commercial
gain, of traffic intended for the trademark holder is also evidence of both bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) see also World Savings
Bank, FSB v. IWN, FA 376423 (Nat. Arb. Forum Jan. 27, 2005).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
to Complainant Golden West
Financial Corporation as registrant of the mark.
Accordingly, it
is Ordered that the <worldsaving.com> domain name be TRANSFERRED
from Respondent to Complainant Golden West Financial Corporation.
Alan L.
Limbury, Panelist
Dated: March 24, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum