Summit Financial Group, Inc. v. Brian Elkin / Summit National Bank
Claim Number: FA1704001728951
Complainant is Summit Financial Group, Inc. (“Complainant”), represented by Sheldon Klein of Gray, Plant, Mooty, Mooty & Bennett, P.A., United States. Respondent is Brian Elkin / Summit National Bank (“Respondent”), represented by Robert C. Griffin of Crowley Fleck PLLP, Montana, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mysummit.bank>, registered with EnCirca, Inc.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 26, 2017; the Forum received payment on April 26, 2017.
On April 26, 2017, EnCirca, Inc. confirmed by e-mail to the Forum that the <mysummit.bank> domain name is registered with EnCirca, Inc. and that Respondent is the current registrant of the name. EnCirca, Inc. has verified that Respondent is bound by the EnCirca, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mysummit.bank. Also on May 2, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 22, 2017.
Complainant submitted a timely additional submission on May 27, 2017.
On May 31, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant engages in banking operations in the states of Virginia and West Virginia and has offered these services since 2000. Complainant registered the SUMMIT COMMUNITY BANK, and design mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,342,766, registered May 28, 2013). See Compl., at Attached Ex. B. Respondent’s <mysummit.bank> is confusingly similar as it contains the dominant portion of Complainant’s mark, adds the word “my” at the beginning, deletes the word “community” and the spaces from the mark, and turns the word “bank” from the mark into a descriptive generic top-level domain (“gTLD”). Further, Complainant uses the MYSUMMIT common law mark in connection with its mobile deposit services, <mysummit.com>, and its social media Twitter account name. See Compl., at Attached Ex. F.
Complainant claims Respondent has no rights or legitimate interests in <mysummit.bank>. Respondent is not commonly known by Complainant’s mark, nor has Complainant authorized or given Respondent permission to use the SUMMIT COMMUNITY BANK or MYSUMMIT marks. Respondent also does not use the disputed domain name for any bona fide offering of goods or services, or legitimate noncommercial or fair use. The resolving webpage, since inception, has continuously displayed the message “THE FUTURE HOME OF MYSUMMIT.BANK” on the resolving webpage. See Compl., at Attached Ex. H.
Respondent registered and uses the <mysummit.bank> domain name in bad faith. Respondent has failed to make any efforts to actualize the disputed domain name to date, as it resolves to an inactive webpage under construction. See Compl., at Attached Ex. H. Further, Respondent must have had actual knowledge of Complainant’s mark because Respondent attempted to register the mark SUMMIT NATIONAL BANK with the USPTO on July 28, 2005, however the application was suspended based on Complainant’s use of the SUMMIT COMMUNITY BANK mark in commerce since 2001 and numerous other pending applications. See Compl., at Attached Ex. I & J.
B. Respondent
Respondent engages in banking operations in the states of Wyoming, Montana, and Idaho, and has offered these services since 2004. Respondent filed for registration of the SUMMIT NATIONAL BANK mark with the USPTO on July 28, 2005, and the mark was published for opposition on April 25, 2017. See Resp., at Attached Ex. 5. Further, Respondent contends while Complainant may be the senior user of the mark under common law, Complainant has no right to prevent the Respondent, the junior user, from using the mark unless the senior user enters or is likely to enter the junior user’s trade territory. See Resp., at Attached Ex. 12-14. Additionally, the <mysummit.bank> domain name is not confusingly similar to Complainant’s mark because when the two are compared side-by-side, they look nothing alike. Moreover, Complainant cannot claim exclusive rights to the word “bank” in domain names; Respondent also engages in business under the SUMMIT name; and Complainant has not established common law rights or a secondary meaning in the MYSUMMIT mark it claims to use on social media.
Respondent is commonly known by the <mysummit.bank> domain name because Respondent has been known by the dominant portion of the domain name, SUMMIT BANK, since 2004, and the addition of the generic word “my” does not alter that. Respondent has been using the SUMMIT NATIONAL BANK mark to offer banking services for over twelve years in Montana, Idaho, and Wyoming, which are hundreds of miles away from where Complainant engages in business. Respondent currently has thousands of account holders and over $72 million in assets. See Resp., at Attached Ex. 1. Respondent plans to use the <mysummit.bank> domain name to make a bona fide offering of goods or services by using the domain name as a second platform to its existing, longstanding domain name <summitnb.com>. Thus, Respondent will provide banking services, which the disputed domain name would suggest to a consumer seeking Respondent’s legitimate services.
Complainant does not provide any evidence of bad faith under Policy ¶ 4(b). Further, Complainant cannot prove that Respondent registered the <mysummit.bank> domain name in bad faith because Respondent intends to use the disputed domain name in connection with a bona fide offering of goods or services.
The Panel notes that Respondent first registered the <mysummit.bank> domain name on July 9, 2015.
C. Additional Submissions
Complainant, contrary to Respondent’s assertions, operates nationwide and advertises to all states, including the three states where Respondent engages in business. See Compl. Add. Sub., at Attached Ex. L & I. Respondent’s <mysummit.bank> domain name is confusingly similar to Complainant’s mark because it incorporates the dominant portion of the mark. Further, it is identical, save the gTLD, to Complainant’s <mysummit.com> domain name.
Respondent fails to establish that it has rights or legitimate interest in the <mysummit.bank> domain name because it operates under the SUMMIT NATIONAL BANK mark, which does not expand to the legitimacy of using the MYSUMMIT mark. Respondent creates a likelihood for confusion as to the source of the <mysummit.bank> domain name because Complainant does have a positive nationwide presence and Respondent’s domain name simply differs from Complainant’s <mysummit.com> domain name by substituting the “.com” portion with the descriptive gTLD “.bank” instead. Further, while Respondent claims it has plans for the disputed domain name, it has thus far failed to do after two years of ownership in the rights to the domain name. See Compl., at Attached Ex. H.
Complainant reiterates that Respondent must have had actual knowledge of Complainant’s mark since 2006 when it was informed that its registration application for SUMMIT NATIONAL BANK was suspended due to a conflict with other marks, including Complainants. See Compl., at Attached Ex. J. Further, Respondent, in two years, has failed to actualize the disputed domain name and has simply passively held it. See Compl., at Attached Ex. H.
Complainant, having established trademark rights to the mark SUMMIT COMMUNITY BANK and design, has failed to establish that Respondent has no rights or legitimate interest with respect to the domain, or that said domain was registered and is being used in bad faith by the Respondent, and thus has failed to establish all necessary elements of its Complaint under the UDRP Policy.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 claims it registered the SUMMIT COMMUNITY BANK mark with the USPTO (Reg. No. 4,342,766, registered May 28, 2013). See Compl., at Attached Ex. B. Registration of a mark with the USPTO sufficiently recognizes a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Therefore, Complainant has established rights in that mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mysummit.bank> is confusingly similar as it merely deletes a word and a space from Complainant’s mark, adds a generic term, and turns a word in the mark into a descriptive gTLD. Similar changes in marks have not previously sufficiently distinguished domain names from marks. See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).); see also Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Similarly, the addition of a descriptive gTLD bears little weight in a confusingly similar analysis. See DD IP Holder LLC v. Manpreet Badhwar, FA 1562029 (Forum July 14, 2014) (holding that the addition of the new “.menu” gTLD combined with the “dunkin” element adds to the confusing character of the domain at issue.). Complainant claims the disputed domain name is confusingly similar as it contains the significant portion of Complainant’s mark, SUMMIT, and adds the word “my” at the beginning, deletes the word “community” and the spaces from the mark, and turns the word “bank” from the mark into a descriptive gTLD. Further, Complainant claims it uses the MYSUMMIT mark in connection with its mobile deposit services and its social media Twitter account name, in which case the disputed domain name only adds the descriptive gTLD “.bank.” See Compl., at Attached Ex. F.
Respondent does not contest that Complainant holds rights in the SUMMIT COMMUNITY BANK mark. However, Respondent refutes Complainant’s claim that it holds rights in the MYSUMMIT mark based on its use over social media and as a separate domain name. UDRP proceedings intend to protect trademarks with established registrations or based on common law rights, not for trade names. See Diversified Mortgage, Inc. v. World Fin. Partners, FA 118308 (Forum Oct. 30, 2002) (finding that the UDRP makes clear that its “rules are intended only to protect trademarks, registered or common law, and not mere trade names, due to the fact that trade names are not universally protected as are trademarks”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the <mysummit.bank> domain name. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the SUMMIT COMMUNITY BANK mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
However, Respondent’s use of the <mysummit.bank> domain name is based on Respondent engaging in business under the SUMMIT NATIONAL BANK mark, and Respondent’s use is similar to Complainant’s use of mysummit.com based upon its SUMMIT COMMUNITY BANK and design mark.
Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent argues that it does have rights and legitimate interests in the disputed domain name because it has engaged in the banking business under the SUMMIT mark since 2004, and the addition of the generic term “my” does not eliminate Respondent’s rights in the domain name. A finding that respondent is commonly known by a mark can help demonstrate that the respondent does have rights and legitimate interests in a disputed domain name under Policy ¶ 4(c)(ii). See Kryton Mktg. Div., Inc. v. Patton Gen. Contracting, FA 123868 (Forum Oct. 21, 2002) (holding that the respondent had rights and legitimate interests in the disputed domain name as it had been commonly known by the domain name and has been using the name "liquid siding" in marketing its goods and services since the 1990s). Respondent claims it has continuously used the SUMMIT NATIONAL BANK mark to offer banking services for over twelve years in Montana, Idaho, and Wyoming, which are hundreds of miles away from where Complainant engages in business. Respondent also claims that it currently has thousands of account holders and over $72 million in assets. See Resp., at Attached Ex. 1. Respondent does engage in legitimate business under the SUMMIT NATIONAL BANK mark.
Respondent provides banking services, which the disputed domain name would suggest to a consumer seeking Respondent’s legitimate services. Using a disputed domain name to provide legitimate services one would expect from the domain name is a bona fide offering of good or services. See iLeads.com LLC v. Elec. Mktg. Sys., Inc., FA 187636 (Forum Oct. 13, 2003) (finding that the respondent had rights and legitimate interests in the <aleads.com> domain name because it used the term “leads” in the generic sense to refer to the sale of leads over the Internet).
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004).
Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Complainant has failed to establish that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <mysummit.bank> domain name REMAIN WITH Respondent.
__________________________________________________________________
David P. Miranda, Esq., Panelist
Dated: June 8, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page