Success Bank v. ZootGraphics c/o Ira Zoot
Claim Number: FA0904001259918
Complainant is Success Bank (“Complainant”), represented by David
Nelmark, of Belin Law Firm,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <successbank.com>, registered with Fabulous.com Pty Ltd.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 28, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 30, 2009.
On April 29, 2009, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <successbank.com> domain name is registered with Fabulous.com Pty Ltd. and that the Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 May 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 26, 2009 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on May 26, 2009.
On May 31, 2009, Complainant timely filed an Additional Submission.
On June 8, 2009, Respondent timely filed a Reply to Complainant’s Additional Submission.
On June 3, 2009, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed
Complainant requests that the domain name be transferred from Respondent to Complainant.
The second level domain name in <successbank.com> is identical to Complainant’s federally registered trademark in
ZootGraphics has no rights or legitimate interest in <successbank.com>. ZootGraphics does not own any state or federal trademarks including the term “success bank.” Further, ZootGraphics has not conducted any business using the name “success bank.”
ZootGraphics is currently profiting by its passive holding of the domain and by Internet
users seeking Success Bank by featuring “pay-per-click” ads by Google on the website.
The domain was registered in bad faith and/or is being used in bad faith for the following reasons, inter alia: The domain was originally registered by Success National Bank in 1996. After Success National Bank merged with another financial institution and took on the latter’s name, the domain registration was allowed to lapse.
Mr. Zoot does not operate legitimate businesses at any of these sites. The only content on
these websites is advertising for third parties. Respondent profits from advertisements on
successbank.com by attracting users who are seeking Complainant’s domain name.
This Proceeding concerns a domain name which was registered and has been used by the Respondent since 2003. In December 2007, more than four years after registration of the domain name, the Complainant, formerly known as Davis County Savings Bank, changed its name to “Success Bank”. In January 2008, the Complainant obtained federal registration of that term in connection with banking services. The Complainant believes its recent activities have retroactive effect, entitling it to transfer of a domain name which was registered for the purpose of developing a referral service for graphic artists, on the basis of a page and a half of conclusory statements.
The first criterion required to be proven by the Complainant is that
the domain name is identical or confusingly similar to a trade or service mark
in which the Complainant has rights. In
August 2007, Davis County Savings Bank of
The Respondent has not used the domain name for banking services, even prior to the Complainant’s recent adoption of its new corporate name. The Respondent, Zootgraphics Inc., is owned by Mr. Ira Zoot. Mr. Zoot began his career as a graphic artist, and continues to provide graphic art services. With the explosion of the internet, Mr. Zoot became increasingly engaged to design graphic material for use on the internet, and also took an interest in conducting several internet ventures. Mr. Zoot pursues his various ventures as time permits.
It is clear from the Internet Archive Record, and the representative print-out of the web page as it appeared in March 2007 – well prior to the Complainant’s adoption of the name – that Mr. Zoot was planning to provide a site “directed to marketing those seasoned pros. People who can get the jobs done to the highest creative standards, under budget and ontime!” Neither the Policy nor common sense require a domain registrant to complete and launch a project within a stated time frame.
Having obtained the domain name in 2003, not having conducted banking services, and having provided clear notice of the purpose for which Respondent obtained and intended to develop the domain name, the Respondent is entitled to proceed with its plans. Nothing has been presented by the Complainant which bars the current use of the domain name, nor the Respondent’s intended use.
The Complainant’s proposition here
is that the Respondent has such powerful psychic ability as to be able to
predict, in October 2003, that the Davis County Savings Bank of
There are exceptions relating to inside knowledge, which of course are not present here. Clearly, the Complainant adopted a name in 2007 knowing full well that the domain name under dispute had already been registered in 2003, and knowing full well that the content at the relevant site indicated planned development as a job resource for graphic artists. The fact that the Respondent has other domain names, and is willing to entertain discussions for acquiring them, is of no consequence in determining the Respondent’s intention with respect to the domain name here at issue.
The fact that a former owner of the domain name discontinued use of its name and the corresponding domain name is meaningless in terms of bad faith directed to the Complainant. The domain name here is composed of two common words of general applicability to a variety of purposes, and one here selected by the Respondent for a purpose having nothing to do with banking.
C. Additional Submission By Complainant
Respondent has not disputed that Complainant has a federal trademark registration for “Success Bank,” that the domain name at issue is identical to Complainant’s trademark, nor that Complainant possessed its trademark registration before filing its Complaint. Thus, all requirements of section 4(a)(i) have been met. Any argument that the terms “success” and “bank” are generic is without merit because Complainant’s federal registration creates a presumption that the combination of terms is a valid trademark
Complainant has made out a prima facie case that Respondent does not have any legitimate rights or interests in the domain name at issue by asserting that, among other things, Respondent has no state or federal trademark rights in the term “success bank” and has never conducted any business of any kind under the name “success bank.” Accordingly, the burden shifts to Respondent to prove that it does have such legitimate interests.
Respondent does not contend that it is “commonly known by the domain name” as in 4(c)(ii) nor that it is “making a legitimate noncommercial or fair use of the domain name” as in 4(c)(iii). (Indeed, the latter argument would be precluded by Respondent’s use of “click through” advertisements on the website.) Thus, the only issue on this element of the Complaint is whether Respondent can establish “demonstrable preparations to use, the domain name or a name corresponding to the domain name in connections with a bona fide offering of goods or services” as required to show legitimate interests in the domain under 4(c)(i).
The only evidence offered by Respondent in this regard is the single webpage at the domain which announces plans to develop a “Premier Job Bank” at the site. This is insufficient.
Despite the claimed interest in
developing a “Premier Job Bank” for “some of the
Respondent has not claimed to have engaged in any commerce using the domain <successbank.com>. Rather, Respondent has, at different times, used the domain name to refer visitors to other sites or to entice visitors to “click-through” to ads, resulting in profits to Respondent. Using a “disputed domain name [to] generate income to the Respondent by inducing Internet users to click through to sponsored links . . . establishes the “bad faith” practice which the Policy expressly prohibits.”
D. Additional Submission By Respondent
The Complainant confirms in its Supplement the fundamental misunderstanding that a domain name registered in October 2003 must be surrendered to a party that admittedly did not use any term remotely similar to the domain name until December 2007. The fact pattern here is a common one, and it is rendered all too common by the unduly charitable treatment afforded the “misguided complainant” in so many UDRP decisions.
The Complainant knows full well that CDG resulted in denial of the complaint and a rare finding of reverse domain hi-jacking on the basis of a fundamentally flawed chronology. Given the large number of UDRP cases, one might not fault a party for failure to cite adverse authority. But here, the author of the CDG reverse-domain-hijacking decision is a panelist in the present case, and selected by the Complainant.
Both parties made further Additional Submissions to which the Panel gave appropriate consideration.
(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 rights or legitimate interests in respect of the domain name; and
(3) The domain name has been registered and is not being used in bad faith.
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.
Respondent’s <successbank.com> domain name is identical to Complainant’s SUCCESS BANK mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains Complainant’s mark in its entirety, omits spacing between the words, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that both spacing and the addition of a gTLD are irrelevant when distinguising a disputed domain name from an established mark. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds Respondent’s <successbank.com> domain name to be identical to Complainant’s SUCCESS BANK mark.
While Complainant’s rights in SUCCESS BANK do not predate the disputed domain’s registration date, and while at least one panel has held that Policy 4(a)(i) impliedly requires a complainant to rights at the time of the domain name’s registration, we make no such finding here. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001). Rather, even where rights in a disputed domain name predate any inkling of the Complainant’s trademark rights, such as here, a complainant may nevertheless demonstrate the Policy’s threshold requirement of having rights in an at-issue mark pursuant to 4(a)(i) by demonstrating rights in the such mark without reference to when such rights were acquired. The plain meaning of paragraph 4(a)(i) expresses no temporal limitation as to when Complainant’s rights were acquired. The lack of rights at registration are thus not necessarily fatal to a complaint on 4(a)i grounds. For example, it is easy to conceive of a case where a respondent may have been aware that a complainant planned on acquiring trademark rights in a particular mark and for such reason was motivated to register a domain name corresponding to that mark to capitalize on the mark’s future value. In this hypothetical the lack of rights at the time of registration should not work to bar relief to a complaining party (assuming that the complainant also demonstrates the Policy’s other requirements). Nevertheless as discussed below the consequence of Complainant having no rights when Respondent registered the disputed domain name is nevertheless fatal to the Complaint, albeit on other grounds.
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 (Nat. Arb. 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 (Nat. Arb. 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 intends to use the <successbank.com> domain name in the business of providing job referral services for graphic artists. The Panel finds that Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
Respondent’s registration of the <successbank.com> domain name on October 24, 2003 predates Complainant’s trademark registration that was filed on August 2, 2007. The Panel finds that Respondent registered the disputed domain name before Complainant established rights in the SUCCESS BANK mark. The Respondent has rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See OCZ Tech. Group, Inc. v. Megazine Publ’ns, FA 244094 (Nat. Arb. Forum Apr. 29, 2004) (“The UDRP has consistently been interpreted as requiring a Complainant to establish rights that predate Respondent’s registration of the disputed domain name.”); see also Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002).
Complainant failed to meet the 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 (Nat. Arb. 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 (Nat. Arb. 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).
Respondent did not register or use 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 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”). Although Complainant’s trademark registration demonstrates it has rights in a mark that is identical to the disputed domain name, since these rights sprang forth subsequent to Respondent’s registration of the domain name and since there is no evidence that Respondent, at the time of registration, had any reason to believe that Complainant would later seek rights in the domain name, there can be no finding of bad faith registration.
The Panel additionally finds that Respondent has not registered or used the <successbank.com> domain name in bad faith because Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001). The Panel finds that there was no bad faith registration since Complainant has not demonstrated rights in the mark at the time of registration.
Respondent’s registration of the disputed domain name predates Complainant’s rights in the SUCCESS BANK mark, and therefore too, the Respondent did not register the disputed domain name in bad faith. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
The Complainant relies on the argument that once a complainant shows good title in a mark, the burden shifts to Respondent to defend use and bad faith. Complainant seeks to stretch that argument to the extreme. While Complainant has some rights in the SUCCESS BANK mark, those rights are years junior to the rights of Respondent due to registration of the domain. To hold for Complainant would be to say that one could peruse the lightly used or parked domains, initiate a trademark registration application years after the a disputed domain name was registered and then claim UDRP rights in the domain under the first element of the UDRP.
The Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
James A. Carmody
Paul M. DeCicco
Dated: June 29, 2009
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