Bank United Corp. and Bank United v BuildPro Communications

DECISION

Bank United Corp. and Bank United v. BuildPro Communications

Claim Number: FA0007000095158

PARTIES

The Complainant is Bank United Corp. and Bank United, Houston, TX, USA ("Complainant" or "Bank United"). The Respondent is BuildPro Communications, Houston, TX, USA ("Respondent" or "Build Pro").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "BANKU.COM", registered with Internet Domain Registrars.

PANELIST(s)

Each Panelist certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

The Honorable Charles K. McCotter, Jr., the Honorable James A. Carmody, and the Honorable Theodore R. Kupferman as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/10/2000; The Forum received a hard copy of the Complaint on 07/10/2000.

On 07/11/2000, Internet Domain Registrars confirmed by e-mail to The Forum that the domain name "BANKU.COM" is registered with Internet Domain Registrars and that the Respondent is the current registrant of the name.

On 07/18/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/07/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail.

On September 8, 2000, pursuant to Complainant’s request to have the dispute decided by a three member panel, The Forum appointed the Honorable Charles K. McCotter, the Honorable James A. Carmody, and the Honorable Theodore R. Kupferman as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that:

1. Bank United has rights in the registered service mark "Bank United" with U-shaped logo and the service mark "Thank you, Bank U".

2. Bank United uses the service mark "Bank U" as a separate mark and is pursuing federal registration of this mark.

3. The domain name "BANKU.COM" is identical to the "Bank U" mark and is confusingly similar to the "Thank you, Bank U" and the "Bank United" marks.

4. Respondent is not a bank, is not in the business of providing banking services, and has not made use of the domain name in connection with a bona fide offering of goods or services. Respondent has never been known by the name "banku" or any similar name. Respondent is not making a legitimate noncommercial or fair use of the domain name.

5. Respondent registered the domain name "banku.com" primarily for the purpose of selling, renting, or otherwise transferring the registration to a competitor of Bank United. Respondent, under applicable state and federal banking statutes, is prohibited from using the work "bank" in the name of any business entity it may form unless that entity is actually licensed as a bank. The only thing that respondent may legally do with the domain name is sell it to a bank, and the only reasonable conclusion to draw is that respondent registered the mark solely for this purpose.

6. Respondent is a "cybersquatter".

B. Respondent

Respondent contends that:

1. Buildpro is in the business of website design, management, and creation of internet solutions.

2. A part of Buildpro’s business model is the registration of generic domain names to create a web portal.

3. Complainant does not hold trademark protection for the name "banku" or "Bank U".

4. "Banku" is a term in many languages, means "bank" in Polish and Hungarian, and "money in Czech. "Banku" is a generic term, and as such Bank United cannot claim a superior or exclusive right to the term by virtue of the word appearing in their corporate name.

5. Buidpro has a legitimate interest in the domain name "BANKU.COM". Buildpro is in the business of website design, management, and creation of internet solutions.

FINDINGS

1. Bank United Corp., a Delaware corporation, is a unitary thrift holding company. Bank United Corp. owns, through BNKU Holdings, Inc., all of the common stock of Bank United, a federal savings bank. Bank United serves over 300,000 Texas households and small businesses through a 152 branch network.

2. Bank United is the owner of the registered service mark "Bank United" with U-shaped logo, registration number 2144797, registered on the Principal Register of the U.S. Patent and Trademark Office on March 17, 1998. Bank United is also the owner of a variant of the foregoing mark, registration number 2143779, also registered on the Principal Register of the U.S. Patent and Trademark Office on March 17, 1998. Bank United Corp. is the owner of the service mark "Thank you, Bank U", registration number 2212145, registered on the Principal Register of the U.S. Patent and Trademark Office on December 22, 1998. Bank United licenses the "Thank you, Bank U" mark from Bank United Corp. Bank United's date of first use of the "Bank U" family of service marks is August 15, 1992.

3. Bank United uses the service mark "Bank U" as a separate mark and is pursuing federal registration of this mark.

4. The marks "Thank you, Bank U" and "Bank U" form the central theme of Bank United's current advertising campaign.

5. Respondent Buildpro is a Texas Corporation with its principal place of business in Houston, Texas. Buildpro is in the business of website design, management, and creation of internet solutions.

6. A part of Buildpro’s business model is the registration of generic domain names to create a web portal, whereby businesses and individuals with a common interest in the generic name can expand their exposure through links to the portal.

7. Buildpro registered the domain name "BANKU.COM" on February 20, 1997.

8. Respondent is not a bank, is not in the business of providing banking services. Respondent has never been known by the name "banku" or any similar name. Respondent’s use of the domain name has been to arrange a link that results in browser software returning a sub-page of the Go To search engine when www.banku.com is entered in the address line.

9. Respondent registered the domain name "BANKU.COM" primarily for the purpose of selling, renting, or otherwise transferring the registration to Bank United or to a competitor of Bank United. Respondent, under applicable state and federal banking statutes, is prohibited from using the work "bank" in the name of a business entity unless that entity is actually licensed as a bank.

10. Respondent has registered a large number of domain names which are either identical to or confusingly similar to service marks owned by residential housing developments, publications, restaurants, radio stations, automobile dealers, and banks. Respondent is not engaged in any of the those businesses. Respondent's intent is to sell the registrations to the owner or competitors of the service marks.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.

Identical and/or Confusingly Similar

The domain name "BANKU.COM", excluding the ".COM", is confusingly similar to the "Bank U", "Thank you, Bank U" and the "Bank United" marks in which the Complainant has rights. Because of the strong association in the marketplace between the "Bank U" mark and Bank United, consumers would expect that the URL, www.banku.com, would return a web site that is produced or sponsored by Bank United.

Rights or Legitimate Interests

Respondent has no rights or legitimate interests in respect of the domain name. Respondent has not made use of the domain name in connection with a bona fide offering of goods or services.

Registration and Use in Bad Faith

The domain name has been registered and is being used in bad faith. Respondent registered the domain name primarily for the purpose of transferring the domain name to Complainant or a competitor of Complainant for consideration in excess of out-of-pocket expenses.

DECISION

Based upon the above findings and conclusions, the Panel Majority finds in favor of the Complainant. Therefore, the relief requested by the Complainant pursuant to Paragraph 4(i) of the Policy is Granted. The Respondent shall be required to transfer the domain name "BANKU.COM" to the Complainant.

Hon. Charles K. McCotter, Jr.

Hon. Theodore R. Kupferman

Majority Panelists

Dated: September 19, 2000

DISSENTING OPINION OF THE HON. JAMES A. CARMODY, ARBITRATOR

I respectfully dissent from the Decision of the majority of the Panel for several reasons. First of all, the Respondent registered the domain "BANKU.COM" on February 20, 1997, nearly three and one half years prior to the commencement of this proceeding. ICANN UDRP proceedings are, within the structure of specific Policy provisions, essentially equitable in nature due to the types of relief available. I would hold that Complainant sat on its rights for too long to be entitled to relief from this Panel. Such a delay of claim assertion constitutes the equivalent of laches in the fast moving world of the Internet.

Secondly, I would hold that "BANKU" is a generic term not entitled to protection. The Northern Lights search engine shows 35,110 hits for "BANKU". Note that Complainant does not claim a service mark for "BANKU" but for the "BANK U" family of marks. That space between the "K" and the "U" is a difference creating distinction. Northern Lights only finds 37 hits searching for "BANKU" + "BANK UNITED". Thus, it is obvious that the generic use of "BANKU" dominates any protectable service mark use by Complainant by a factor of nearly one thousand to one. Accordingly, Complainant has no rights in "BANKU" as a service mark which are in any way superior to Respondent or many of the thousands of others who use that generic term as a part of a name. Policy paragraph 4.a.(i) is not satisfied by Complainant.

Respondent’s claim that its use of the www.banku.com site is a legitimate pursuit is at least colorable for the proposition that it is demonstrating a portal for European banking institutions. The institutions linked on the web site are listed among the 35,110 hits for "BANKU" at Northern Lights. Accordingly, Respondent has demonstrated "legitimate interests" within the meaning of Policy paragraph 4.a.(ii).

The fact that Respondent has registered as domains many radio or television station call letters, the names of well known Houston restaurants and other business names leaves little doubt that, in an appropriate case, it will be found to be a bad faith "cybersquatter." This is not that case.

Hon. James A. Carmody

Dissenting Opinion

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