National Arbitration Forum

 

DECISION

 

High Point Bank and Trust Company v. High Point Bank & Trust

Claim Number: FA0601000632711

 

PARTIES

Complainant is High Point Bank and Trust Company (“Complainant”), represented by Michael Tobin, Esquire of Kennedy, Covington, Lobdell and Hickman, LLP, 214 North Tryon Street, Hearst Tower, 47th Floor, Charlotte, NC 28202.  Respondent is High Point Bank & Trust (“Respondent”), represented by Michael Tobin, Esquire of Kennedy, Covington, Lobdell and Hickman, LLP, 214 North Tryon Street; Hearst Tower, 47th Floor, Charlotte, NC 28202.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <highpointbankandtrust.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.

 

M. KELLY TILLERY, ESQUIRE as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 20, 2006.

 

On January 25, 2006, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <highpointbankandtrust.com> domain name is registered with Compana, Llc and that 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 January 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 15, 2006
 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@highpointbankandtrust.com by e-mail.

 

A timely Response was received and determined to be complete on January 31, 2006.

 

On February 7, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M. KELLY TILLERY, ESQUIRE as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant contends that:

 

1)         It is a banking corporation organized and existing under the laws of North Carolina, with its main office and various branch banking locations in the city of High Point, North Carolina, and

 

2)         Complainant owns the HIGH POINT BANK AND TRUST COMPANY common law service mark, having used it in association with its quality financial services, including banking, insurance, credit card, mortgages, investment and trust services.

 

B. Respondent

 

Respondent contends that:

 

1)         the original Complaint was filed against Manila Industries, Inc., the then-Registrant, on January 19, 2004;

 

2)         the current proceeding commenced with High Point Bank and Trust Company being both Complainant and Respondent;

 

3)         both Complainant and Respondent request that this Panel render a decision ordering transfer of the disputed domain name to  Complainant;

 

4)         despite the fact that High Point Bank and Trust is now Complainant and Respondent, it is nonetheless important for the Panel to render a decision ordering the <highpointbankandtrust.com> domain name to be transferred to Complainant because the domain name is still being controlled by Manila Industries and the domain name still points to Manila Industries’ pay-per-click advertising website.  Only by receiving a decision by the Panel ordering transfer of the domain name can High Point Bank and Trust Company obtain control over this domain name.

 

FINDINGS

Since Complainant and Respondent are the same and agree that the Domain Name should be transferred to Complainant, there is no need for this Panel to make findings under UDRP ¶ 4(a).  However, the Panel finds that (1) Complainant and Respondent are one and the same entity, and (2) that both request that the Domain Name be transferred to Complainant.

 

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.

 

On January 19, 2006, Complainant, Highpoint Bank and Trust Company, filed a Complaint against Respondent, Manila Industries, Inc., the then-indicated holder of the registration for the Domain Name in question.

 

On or about January 26, 2006, after receiving notice of the Complaint filed against it, Manila Industries, Inc. and/or the Registrar, Compana, LLC d/b/a budgetnames.com, changed the “WHOIS” information to list Complainant as the holder of the Domain Name with the email address of Complainant’s Counsel, as the Registrant’s email address. 

 

Thereafter, the Registrar, Compana, responded to the National Arbitration Forum’s “WHOIS” Verification Request asserting that the Complaint named an incorrect Respondent because the new Registrant of the disputed Domain Name was Complainant itself.  The Forum then requested that the Complaint be amended to reflect the then-current Registrant of the Domain Name, Complainant.  Complainant complied with the request and filed an Amended Complaint on January 26, 2006 against itself. 

 

Thus, the current strange posture is that Highpoint Bank and Trust Company is both Complainant and Respondent.  It would seem that if Highpoint Bank and Trust Company, Complainant and Respondent, is the current Registrant of the Domain Name in question, that Complainant’s Complaint is moot, there is no case or controversy and there is nothing that this Panel can or should do to change those circumstances. 

 

However, Highpoint Bank and Trust Company, in its position as Respondent, points out that this is not a unique situation.  In fact, the prior Registrant of the Domain Name in question, Manila Industries, Inc., has twice before changed the “WHOIS” registration data for a disputed name from itself to a complainant after a UDRP Complaint was filed.  See, e.g., Landry’s Rests., Inc. v. Landrys Rests., Inc., FA 506524 (Nat. Arb. Forum Aug. 11, 2005); PSC Mgmt. Ltd. P’ship v. PSC Mgmt. Ltd. P’ship, FA 467747 (Nat. Arb. Forum June 6, 2005).  As Respondent points out, in both of those proceedings, the Panels proceeded to order the transfer of the disputed domain names from the respondent to the complainant. 

 

This Panel is tempted to dismiss this Complaint as moot but Highpoint Bank and Trust, in its position as Respondent, argues that the Domain Name is “…still being controlled by Manila Industries, Inc. and the Domain Name still points to Manila Industries’ pay-per-click advertising website.”  Only by receiving a Decision by the Panel ordering transfer of the Domain Name, Respondent argues, can Highpoint Bank and Trust Company obtain “control” of this Domain Name. 

 

Highpoint Bank and Trust makes no representation regarding any efforts it made to instruct the Registrar to permit it to “control” this Domain Name but, it is in fact now the Registrant, and there is no other entity as a party to respond to its claim of ‘lack of control’ of the Domain Name. 

 

The two decisions aforementioned, rightfully point out that a Panel may forego the usual UDRP analysis and transfer a domain name where there is an agreement between the parties to do so.  See also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”).[1]

 

            This Panel is troubled, however, by the circumstance represented by this dispute, that is, while Complainant and Respondent appear to be the same entity and is in fact the Registrant of the Domain Name in question, it claims not to be “in control” of the Domain Name.  If one goes to the address of the Domain Name in question, it does in fact still point to what appears to be a pay-per-click advertising website, not of the making of Highpoint Bank and Trust Company.  Whether it is in fact controlled by Manila Industries, this Panel cannot tell.

 

            Although this dispute seems moot, the apparent inability of Highpoint Bank and Trust Company to actually control the Domain Name is of concern.  Under those circumstances and in light of the agreement between the parties, this Arbitrator believes it necessary for it to be ordered that the Domain Name be transferred and trusts that the Registrar will comply and enable Highpoint Bank and Trust Company to actually control the Domain Name which it owns, the disputed name here,<highpointbankandtrustcompany.com>.

 

 

DECISION

The Parties having agreed under the ICANN Policy to have the domain name transferred, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <highpointbankandtrust.com> domain name be TRANSFERRED from Respondent to Complainant.

 

                 

 

 

M. KELLY TILLERY, ESQUIRE, Panelist
Dated: February 22, 2006