First Mariner Bank v.
Claim Number: FA0901001243651
PARTIES
Complainant is First Mariner Bank (“Complainant”), represented by James
B. Astrachan, of Astrachan Gunst Thomas, PC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <1stmarinerbank.info>, registered
with GoDaddy.com,
Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On
A timely Response was received and determined to be complete on
The Complainant submitted an Additional Submission on February 18,
2009. This Additional Submission complied
with Supplemental Rule 7.
The Respondent submitted an Additional Submission on February 24, 2009. This Additional Submission complied with
Supplemental Rule 7.
On February 27, 2009 pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges that it is
According to the Complainant, the Respondent registered the disputed
domain name in December 2008, using a privacy protection service. In January 2009, the disputed domain name was
used for a web site providing click-through advertising revenue, via GoDaddy’s
“CashParking” website.
The Complainant states that, in reply to a letter from itself, the
Respondent offered to sell the disputed domain name at its “fair market value”,
and that the Respondent further stated that “almost all of my domain names are
for sale at fair market value”.
According to the Complainant, the disputed domain name is identical or
confusingly similar to its marks.
Further, says the Complainant, the Respondent does not have any rights
or legitimate interests in the disputed domain name. He has never used the disputed domain name
for any legitimate purpose. The domain
name has been used to generate click-through revenue.
The Complainant states that, when approached by itself, the Respondent
immediately offered to sell the disputed domain name, stating that the
Complainant should buy it “just to protect it from someone else buying it from
me and doing whatever with it.”
According to the Complainant, these factors indicate that the Respondent
registered the disputed domain name primarily for the purpose of selling it to
the Complainant.
Further, says the Complainant, by parking the disputed domain with
GoDaddy, the Respondent sought to obtain click-through advertising revenue by
benefitting from the goodwill associated with the Complainant’s marks. Thus he attempted to attract, for commercial
gain, Internet users by creating a likelihood of confusion with the
Complainant’s marks.
B. Respondent
The Respondent alleges that he purchased the disputed domain name because it refers to the first bench of rowers in a boat. The importance of “1st” is like in “1st Mate;” the first bank is the “lead” bank that all other rowing banks take their oar position and speed from. This is because the first bank is visible to all other banks and the first bank can not see any of the other rowers.
The Respondent notes that the component words of the disputed domain name are generic terms and cites UDRP case law finding that genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration.
The Respondent requests that the Panel disregard certain evidence submitted by the Complainant, in particular certain E-Mails, arguing that the Complainant did not prove that the said E-Mails were sent by him.
The Respondent states that the Complainant has not proven that the disputed domain name was used for “cash parking” and states he has never received and has never been due any money for “cash parking” or any other reason related to the disputed domain name.
The Respondent states that his offer to sell the disputed domain name was made as part of settlement negotiations, and thus should not be considered by the Panel as evidence of bad faith registration and use.
According to the Respondent, he has no domain names which are registered trademarks. All his domain names consist of common expressions.
The Respondent states that his intent is to use the disputed domain name for non-commercial purposes, and he is willing to place a disclaimer on the web state stating that the site is not associated with First Mariner Bank.
The Respondent states:
In closing I
would like to say without any specific admission of wrong doing that it is
possible that I have made unknown mistakes in my use of this site. However, I
do not know of any. I purchased my first domain name in late December 2008 and
the issue of this dispute was sent only 10 days later. It has been a learning
experience for me.
C. Additional Submissions
Complainant
In its Additional Submission, the Complainant provides additional
details regarding the correspondence between the parties, alleging that the
Respondent requested a specific price ($800) for the disputed domain name,
which price is above out-of-pocket costs.
The Complainant reiterates that it holds valid marks and that the
disputed domain name is identical or confusingly similar to those marks.
According to the Complainant, the Panel should not accept the
Respondent’s allegation that he registered the disputed domain name for the
legitimate purpose of referring to the “first bench of rowers” in a boat, and
this because that motivation was first raised in the Response and it appears to
contradict the Respondent’s offers to sell the disputed domain name to the Complainant.
According to the Complainant, the Respondent has explicitly admitted
that he used the disputed domain name to generate revenue, because, in an
E-Mail of January 5, 2009, he stated that he put the domain name in “cash
parking” and went on to provide the following description of that service:
CashParking: CashParking helps users to
monetize their parked domains. Once you
have associated your domains with your CashParking account, our advertising
partner will place context-relevant advertisements on your parked page(s). Each time a page visitor clicks on a
displayed advertisement you will receive a share of the generated click-through
revenue based on your CashParking plan.
CashParking is a service that enables you to earn money on your parked
domains.
The Complainant reiterates that, in its opinion, the Respondent
registered and used the domain name in bad faith, in particular because he
never offered to relinquish the disputed domain name but instead attempted to
sell it for a price in excess of out-of-pocket costs.
The Complainant notes that the Respondent asserts that he had little or
no experience in registering domain name and thus could have made an “honest
mistake”. But the Complainant also notes
that the Respondent registered some 90 domain names at the same time and parked
them to obtain click-through revenues, which would not appear to be typical
behavior for an inexperienced person.
And the Complainant states that the Respondent did not relinquish the
domain name when asked, which presumably would have been the action taken by
someone who had made an “honest mistake”.
Respondent
In his Additional Submission, the Respondent alleges that the
Complainant has not provided sufficient evidence to prove its claims, and, in
particular, states that the Complainant has not proven that the Respondent sent
certain E-Mails, and that the Complainant has not proven that the disputed
domain name was used to generate click-through revenue.
Further, the Respondent reiterates the arguments that he made in the
Response. The Respondent states:
My interest in the ocean and mariners goes back to the fact that I grew up next to it and spent 11 years posted to what Americans would call a “Naval Air Station” while I was in the Canadian Forces. You can not be in the military for 17 years without loving their customs and traditions. In 1996 I took the early retirement package as an officer. I truly miss those traditions and the bonds between members, which would have been part of my website.
…
I grew up in western
…
Since 1st Mariner Bank did not ask
me what my out-of-pocket expenses were related to this domain name they can not
show that I wanted to settle for more than that. My expenses are high and
include but not limited to, research, travel for research, software, equipment,
legal, hired help, etc and are well in excess of what I wanted to settle. As
they stated, I even informed them that my costs related to that site were going
up as I researched and developed it. They can not show that I purchased it to
sell to them as they contacted me, I asked for a settlement that would allow me
to keep it, I did not try selling it to them and only offered it as part of a
settlement.
FINDINGS
The Complainant owns marks, including 1ST
MARINER BANK.
The disputed domain name is identical to the
Complainant’s marks.
The Respondent used the disputed domain name
to generate click-through revenue, through a web site that has no obvious
association with the generic terms that comprise the disputed domain name.
The Respondent offered to sell the disputed
domain name for a price in excess of out-of-pocket-costs.
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.
The Complainant has submitted evidence of the
registration of its 1ST MARINER BANK mark with the United States Patent and
Trademark Office (“USPTO”). The Panel holds
that registration of a mark is sufficient to establish Complainant’s rights
pursuant to Policy ¶ 4(a)(i). See Miller Brewing
The disputed
domain name is obviously identical to the Complainant’s mark.
The fact that the
mark and the disputed domain name consist of generic terms is not relevant for
this element of the Policy and will be addressed later. See Vance Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum
Thus the Panel
holds that the Complainant has satisfied its burden of proving that the
disputed domain name is identical to its mark.
Contrary to what
the Respondent asserts, the Panel finds that the Complainant provides sufficient
evidence to show that the Respondent is using the disputed domain name to generate click-through revenue.
This use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Fox News Network, LLC v.
Reid, D2002-1085 (WIPO
WIPO provides an overview of domain name cases. The part of that overview that is relevant for the present case is found at: http://www.wipo.int/amc/en/domains/search/overview/index.html#22.
According to that overview, if a respondent is using a
generic word to describe his product/business or to profit from the generic
value of the word without intending to take advantage of complainant’s rights
in that word, then it has a legitimate interest.
However, if the complainant makes a
prima facie case that the respondent has no rights or legitimate interests, and
the respondent fails to show one of the three circumstances under Paragraph
4(c) of the Policy, then the respondent may lack a legitimate interest in the
domain name, even if it is a domain name comprised of generic words. Factors a panel should look for when
determining legitimate use would include the status and fame of the mark,
whether the respondent has registered other generic names, and what the domain
name is used for (a respondent is likely to have a right to a domain name
"apple" if it uses it for a site for apples but not if the site is
aimed at selling computers or pornography).
In the present case, the Panel holds
that the Respondent has failed to show that he is likely to use the disputed
domain name for a legitimate purpose that would not conflict with the
Complainant’s marks. Indeed, the
Respondent’s use of the mark to generate click-through revenue from a website
that had no relation to boating or rowing (the alleged purpose for registering
the disputed domain name) indicates that the Respondent intended to derive
revenue by misleading Internet users.
The present case can be
distinguished from Modern Beauty Supplies Inc. v. MDNH, Inc. c/o Jay Bean, FA0705000975334 (Nat’l
Arb. Forum, June 25, 2007). In that
case, the Panel stated:
The Respondent freely admits that it is using
the disputed domain name for a landing page to generate click-through advertising
revenue. In the present case, such a use
is a legitimate interest for the purposes of the Policy because the links and
advertisements posted on the web page are directly related to the generic
meaning of the domain name. See The Knot, Inc. v. In Knot We Trust LTD, Case No. D2006-0340 (WIPO Jun. 16, 2006)
(landing page was not legitimate where the domain name, knot.com, was being
used for links related to wedding planning; that use was not directly linked to
the generic meaning of the word “knot” but rather appeared designed to take
advantage of the trademark meaning of the mark THE KNOT, which is used as a
mark for a well-known wedding planning website).
In Advanced Drivers Educ. Prods.
& Training, Inc. v. MDNH, Inc., FA 567039 (Nat. Arb. Forum Nov. 10, 2005), the Panel found that the disputed
domain name was not used in the trademark sense, but was “a descriptor of the
site’s intended content or theme.”
Therefore, the Panel found that the Complainant had failed to prove that
Respondent lacked any rights or legitimate interests in the disputed domain
name. Similarly, in Multicast Media Networks, LLC v. MDNH, Inc.,
FA 434268 (Nat. Arb. Forum Apr. 28, 2005), the Respondent operated a
pay-per-click search engine from which the Respondent derived revenue to post
advertisements to various goods and services.
The panel in that case found that “[t]his was a bona fide use within the meaning of ¶ 4(c)(i), particularly in
light of the extended period of such use.”
In the present case, the web
site pointed to by the disputed domain name contains links that are directly relevant
to the descriptive meaning of the domain name, namely “modern beauty.”
Therefore, the Panel agrees with the Respondent’s arguments and the cited cases
and holds that the Respondent does have a legitimate interest, for purposes of
the Policy, in the disputed domain name.
The facts in the present case are quite
different. The Respondent’s web site did
not contain any links that were directly related to the descriptive meaning of
the disputed domain name.
The Panel notes that Respondent claims that he
has plans to develop a website, relating to boating. But the envisaged use appears to be an implausible
use of the disputed domain name, in that it is not obvious that an average
Internet user would think of typing the disputed domain name when searching for
information on rowing or stroke oarsmen (those that sit on the most forward
bench of a rowboat). Nor it is clear how
such a use would be associated with the Respondent’s past military career,
since the use of rowed military craft (galleys and such) ceased some 200 years
ago.
The Panel holds that the Respondent has not
submitted any evidence of his plans other than unsubstantiated and somewhat implausible
assertions. Thus the Panel finds that the
Respondent has not shown demonstrable preparations to use the disputed domain
name in connection with this alleged noncommercial or legitimate fair use, and the
Panel finds that this constitutes additional evidence that Respondent has not
established any rights or legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii). See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb.
Forum
The Panel holds that the Complainant has
satisfied its burden of proof for this element of the Policy.
Contrary to what
the Respondent asserts, the Panel finds that the Complainant provides evidence
that the Respondent received pay-per-click fees from the disputed domain name,
and that he deliberately took actions to receive those fees. Thus the Panel finds that the Respondent took
advantage of the inherent confusion between the disputed domain name and the Complainant’s
mark for the Respondent’s own financial gain.
The Panel concludes that the Respondent registered and used the disputed
domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum
The Respondent
correctly notes that the disputed domain name consists of generic terms. This could be a defense against bad faith
registration and use. See Target Brands, Inc. v. Eastwind
Group, FA 267475 (Nat. Arb. Forum
However, that defense requires a finding that the Respondent has rights or legitimate interests in the disputed domain name and is using the disputed domain name in connection with the generic terms. As noted above, the Panel finds that, in the present case, the Respondent does not have rights or legitimate interest in the disputed domain name and was not using the disputed domain name in connection with the generic terms.
Therefore, the
Panel holds that the Complainant has satisfied its burden of proof for this
element of the Policy.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <1stmarinerbank.info> domain name be TRANSFERRED
from Respondent to Complainant.
Richard Hill, Panelist
Dated: March 6, 2009
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