Guaranty Bank v. Brian Yu c/o iContents,
Inc. Guaranty Bank Team
Claim Number: FA0506000493004
Complainant
is Guaranty
Bank (“Complainant”), represented by Sherri L. Eastley of Wong Cabello, L.L.P., P.O. Box 685108, Austin, TX 78768-5108.
Respondent is Brian Yu c/o iContents, Inc. Guaranty Bank Team (“Respondent”), SoAm B/D 2F, 699-20
YeokSam-Dong, GangNam-Gu, Seoul, Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <guarantybank.com>, registered with Hangang Systems, Inc.
d/b/a Doregi.com.
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.
Hong Oo Baak as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration
Forum (the “Forum”) electronically on June 8, 2005; the Forum received a hard
copy of the Complaint on June 10, 2005. The
Complaint was submitted in both Korean and English.
On June
20, 2005, Hangang Systems,
Inc. d/b/a Doregi.com confirmed by e-mail to the
Forum that the domain name <guarantybank.com> is registered with Hangang Systems, Inc. d/b/a Doregi.com and that the Respondent is the current registrant of the
name. Hangang Systems, Inc. d/b/a Doregi.com
has verified that Respondent is bound by the Hangang Systems, Inc. d/b/a
Doregi.com 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”).
Complainant submitted a revised Complaint to the National
Arbitration Forum (hereinafter referred to as the “Forum”) electronically on
June 23, 2005. the Forum received a hard copy of the revised Complaint on June 27, 2005. The revised
Complaint was submitted in both Korean and English.
On June 8, 2005, a Korean language Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of July 18, 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@guarantybank.com by e-mail.
A timely Response was received and determined to be complete on July 18, 2005.
On July 22, 2005 pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Hong Oo Baak as
Panelist.
An Additional Submission by Complainant was received on July 25, 2005, which complied
with Supplemental Rule 7.
In response to Complainant’s Additional Submission,
Respondent submitted a timely additional submission, which the Forum received
on July 29, 2005.
RELIEF SOUGHT
Complainant requests that the domain name be transferred
from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant is in the business of banking and financial
services in Texas, USA. Complainant and its predecessors have used the word
"Guaranty" in its name since 1921 for banking and financial services.
Complainant changed its name to Guaranty Federal Savings Bank in 1988, and to
Guaranty Federal Bank, FSB in the early 1990s. By late 1998, Complainant had
systematically implemented use of GUARANTY BANK for its lending services in
connection with all of its banking services.
Complainant obtained registration with the USPTO of the GUARANTY mark
(hereinafter referred to as the Mark) on August 20, 1991 as Registration Number
1,654,486 in connection with its banking services. Complainant filed for the registration of the GUARANTY BANK mark
with the USPTO on October 27, 2000 (Ser. No. 76/155,200). Complainant asserts that the primary portion
of the Disputed Domain Name, “guarantybank,” is identical to Complainant’s
marks, GUARANTY and GUARANTY BANK.
Complainant
also asserts that because the Disputed Domain Name combines Complainant’s
registered GUARANTY mark with the generic word “bank,” the primary portion of
the Disputed Domain Name, “guarantybank,” is legally indistinguishable from
Complainant’s registered mark.
Complainant also asserts that Respondent has no rights or
legitimate interests in the Disputed Domain Name. Complainant contends that
Respondent’s conduct purporting to sell the Disputed Domain Name suggests that
it has no legitimate interests. Complainant also asserts that Respondent
maintained a website at the Disputed Domain Name, offering both sponsored and
unsponsored links to banking and financial institutions and that Respondent is
not commonly known by the name “guarantybank.”
Complainant asserts that Respondent was actually or constructively
aware of Complainant’s GUARANTY mark when it registered the Disputed Domain
Name because the GUARANTY mark was registered and is well-known. Complainant
also asserts that Respondent’s use of the Disputed Domain Name to divert web
users indicates that Respondent registered the Disputed Domain Name with bad
faith as defined by the Policy, to attract for commercial gain, internet users
to its web site or on-line location.
Complainant also contends that Respondent has established a
pattern of conduct of registering and using domain names in bad faith,
referring to the case Internet Billing Co. LLC v. Yu, FA 146944 (Nat. Arb.
Forum Apr. 14, 2003).
B.
Respondent
Respondent is operating a website at <motorshop.com>, for
used car sale services.
Respondent contends that the Mark is generic and also contends
that the GUARANTY BANK mark is generic since it is a combination of generic
terms “guaranty” and “bank.” Thus it asserts that these are not entitled to
trademark protection. Respondent also contends that more than ten other
companies are using the generic word “guaranty bank” within their domain names.
Respondent contends that he has legitimate interests in the
Disputed Domain Name.
Respondent asserts that he had registered the Disputed Domain Name
before Complainant applied for the registration of trademark. The Disputed
Domain Name, <guarantybank.com> was registered on April 15, 2000
whereas Complainant applied for the registration of GUARANTY BANK on October
27, 2000.
Respondent asserts that he registered
<guarantybank.co.kr> on May 7, 2005, one month before Complainant filed
the Complaint. Respondent preliminarily opened a website at the Disputed Domain
Name, offering escrow services in connection with the sale of the used cars on
its website at <motorshop.com>.
Respondent also contends that he did not register the Disputed
Domain Name in bad faith.
Respondent maintains that he was not aware of Complainant’s mark
and corporate name, GUARANTY BANK, when it registered the Disputed Domain Name,
because Complainant’s mark is not well known in Korea and Asia.
C.
Additional
Submissions
1)
Complainant
Complainant contends that Complainant has superior rights in the
GUARANTY BANK mark. Complainant contends that it began using the mark GUARANTY
BANK mark as early as 1998, two years before Respondent’s registration, and
that its GUARANTY BANK mark has become a designation acting to identify and
distinguish the goods and services it provides from those of others.
Complainant also contends that Respondent has owned the Disputed
Domain Name for a period of five years without any legitimate use of the domain
name.
Complainant contends that Respondent operated the websites at the
Disputed Domain Name containing links to competitors or offering the sale of
the domain name before the filing of the Complaint, which is evidence that
Respondent is not making a legitimate noncommercial or fair use of the domain
name.
Complainant also asserts that the fact that Respondent, on August
17, 2001, offered to sell the Disputed Domain Name for $45,000 is evidence of
Respondent’s bad faith in the registration and use of the Disputed Domain Name.
2)
Respondent
Respondent maintains that Complainant’s GUARANTY BANK mark is a
combination of generic words and is not well known in Korea.
Respondent asserts that rights in a mark consisting of generic
words should be determined by a race to register a domain name.
Respondent also contends that since Respondent planned to use the
Disputed Domain Name, he has been disregarding the requests by others to sell
the Disputed Domain Name.
FINDINGS
1.
Complainant
and its predecessors have used the word "Guaranty" in its name since
1921 for banking and financial services. In 1988, Complainant changed its name
to Guaranty Federal Savings Bank, and in the early 1990s, its name was changed
to Guaranty Federal Bank, FSB. By late 1998, Complainant had systematically
implemented use of GUARANTY BANK for its lending services in connection with
all of its banking services.
2.
Complainant
obtained registration with the USPTO of the GUARANTY
mark on August 20, 1991 as registration Number 1,654,486 in connection with its
banking services.
3.
Complainant
filed for the registration of the GUANRANTY BANK mark with the USPTO on
October, 27, 2000 (Ser. No. 76/155,200)
4.
On
April 15, 2000, Respondent
obtained the registration of the Disputed Domain Name, <guarantybank.com>.
5.
Respondent offered to sell the Disputed Domain Name to Complainant
for $45,000 on August 17, 2001.
6.
Respondent
has not used the Disputed Domain Name for any purposes until recently.
7.
The
website at the Disputed Domain Name contained either sponsored or unsponsored
links to competitors of Complainant as of June 6, 2005.
8.
Respondent
operates a website using the domain name of <motorshop.com>. Recently
it displayed a banner which, when
clicked, connects to a website at the Disputed Domain Name. The website at the
Disputed Domain Name explains that it offers escrow services for transactions
made on the internet.
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.
For a trademark to be valid,
a trademark must be distinctive, that is, capable of identifying one firm’s
goods or services and distinguishing them from those of another.
The
GUARANTY mark was registered on August 20, 1991 as registration Number
1,654,486 by Complainant in the field of banking services.
The
word “guaranty” is originally descriptive.
However, it appears that Complainant has proved that the Mark has been adopted
and used in commerce by Complainant in connection with banking services and
thus has achieved secondary meaning. In
addition, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning in the relevant market place. See Men’s
Warehouse, Inc. v Wick, FA 117681(Nat. Arb. Forum Sept. 16, 2002).
The fact that more than ten other companies are using the generic words
“guaranty bank” within their domain names does not affect the right of the
holder of the GUARANTY trademark.
Thus, the Mark is entitled to protection.
Identical
and/or Confusingly Similar
The Disputed Domain Name, <guarantybank.com>,
consists of two parts, “guaranty” and “bank.” The word “guaranty” is identical
to the Mark. The word “bank” attached to “guaranty” just describes the type of
service. Since banking is the designated services of the Mark, it does not add
a special meaning to the GUARANTY word mark.
The addition of a top level
domain designation (such as ".com") does not defeat a claim that a
domain name is identical to a Complainant's mark. See, e.g., Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO
Apr. 27, 2000).
Accordingly, the Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Paragraph 4(c) of the Policy sets out circumstances, without
limitation, which can establish the holder’s rights to or legitimate interests
in the domain name. These circumstances are as follows.
(i)
before any notice to the domain name holder of the dispute, the holder's 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; or
(ii)
the domain name holder (as an individual, business, or other organization) has
been commonly known by the domain name, even if the holder has acquired no
trademark or service mark rights; or
(iii) the domain name holder is making
a legitimate noncommercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or
service mark at issue.
Although Respondent asserts that he prepared for using the
Disputed Domain Name by registering <guarantybank.co.kr> and planning to
link it to <motorshop.com> operated by him, the registration of
<guarantybank.co.kr> and the plan to use the Disputed Domain Name are not
sufficient to prove use or demonstrable preparations to use the Disputed Domain
Name.
In
addition, Respondent failed to show that it has been commonly known by the
Disputed Domain Name.
Respondent operated a website at the Disputed Domain Name for the
purpose of selling sponsored links and redirecting Internet users to
Complainant’s competitors. Respondent has not made any rebuttal against it.
It is hardly recognized as
legitimate to use the word "bank" for escrow services; that is
different from banking. In addition, as to the escrow services the website of
the Disputed Domain Name describes, Respondent has not established or
demonstrated that such services have been actually offered or prepared before
the notice to Respondent of the present domain dispute.
While the overall burden of proof for Policy ¶ 4(a)(ii) rests on Complainant,
the failure by Respondent to demonstrate that he comes within Paragraph 4(c)
can assist the Panel in deciding whether Complainant has discharged the onus of
proof. See Wal-Mart Stores, Inc. v. Stock, D2000-0628 (WIPO Aug.11,
2000).
Considering all the
statements made and evidence submitted, the Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad
Faith
Policy ¶ 4(b)(i) provides that, for the purposes of Paragraph 4(a)(iii), if a person who registered a domain name has registered
or has acquired the domain name primarily for the purpose of selling, renting,
or otherwise transferring the domain name registration to the complainant who
is the owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of documented out-of-pocket
costs directly related to the domain name, it shall be evidence of the
registration and use of a domain name in bad faith.
It is found, by the admission of Respondent and proof, that
it offered to sell the Disputed Domain Name to Complainant for $45,000 on
August 17, 2001, and it has not made a substantial use of the Disputed Domain
Name for the first five years of ownership of the Disputed Domain Name. This
proves that Respondent has registered the Disputed Domain Name primarily for
the purpose of selling it to Complainant.
Even if Respondent was not aware of the Mark and corporate name
GUARANTY BANK when it registered the Disputed Domain Name, it does not exclude
the application of Policy ¶ 4(b)(i) which provides that any of the above
enumerated situations "shall be evidence" of the registration and use
of the domain name in bad faith
Accordingly, the Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
For the reasons set forth above, Complainant, having satisfied all
three elements stated in 4(a) of the Policy, has established its prima facie
case sufficient to warrant transfer of the contested domain name.
Therefore, the Panel concludes that the requested
relief should be GRANTED.
Accordingly, it is Ordered that the <guarantybank.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hong Oo Baak, Panelist
Dated: August 5, 2005
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