U.S. Bancorp Licensing, Inc. v. Z, L
Claim
Number: FA0304000155891
Complainant is
U.S. Bancorp Licensing, Inc., Minneapolis, MN (“Complainant”) represented
by Michael L. Gannon of Fish & Richardson P.C., P.A.. Respondent
is Z, L of Las Vegas, NV (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <usbank.cc>, registered with Network
Solutions, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 25, 2003; the Forum received a hard copy of the
Complaint on April 28, 2003.
On
April 29, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <usbank.cc> is registered with Network Solutions,
Inc. and that Respondent is the current registrant of the name. Network
Solutions, Inc. verified that Respondent is bound by the Network Solutions,
Inc. 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 1, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 21, 2003, 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@usbank.cc by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
June 2, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<usbank.cc>, is identical to Complainant’s USBANK mark.
2. Respondent has no rights or legitimate
interests in the <usbank.cc> domain name.
3. Respondent registered and used the <usbank.cc>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
U.S. Bancorp Licensing, Inc., holds many federal service mark registrations for
marks incorporating the words U.S. BANK, including the USBANK mark (U.S. Reg.
No. 2,445,731, registered on the Principal Register of the U.S. Patent and
Trademark Office on April 24, 2001). Complainant has used its mark through its
related companies and licensees in connection with financial services provided
to retail, institutional, and commercial customers across the U.S. since as
early as 1963.
Respondent, Z,
L, registered the <usbank.cc> domain name on February 6, 2003, but
is not licensed or authorized to use Complainant’s USBANK mark for any purpose.
The website associated with the disputed domain name displays a link to a
website at the <4coc.org> domain name. This website is hosted by the
Church of Change, Inc., a Nevada non-profit corporation which provides
information about its philosophy and invites Internet users to make donations
over the Internet. A link to complaint websites against Complainant is also
displayed, as is a series of links related to Respondent’s dealings with
Complainant, addressed below.
The evidence
before the Panel indicates that Respondent’s real name is Michael John, the
President of the Church of Change, Inc. Mr. John provides his address at the
website associated with the disputed domain name, which is identical to the
address listed for Respondent in the WHOIS contact information for the <usbank.cc>
domain name. The disputed domain name clearly states that “My name is Michael
John and I take full responsibility for this web site,” before proceeding
to display a series of links related to Mr. John’s dealings with Complainant.
Specifically, Mr. John alleges that Complainant committed a criminal act by
filing a falsified Bad Check Complaint against him.
These charges
stemmed from a check that Respondent deposited with Complainant on August 1,
2001, for $125,000., which was returned unpaid due to non-sufficient funds. On
October 18, Complainant closed Respondent’s business account at a loss of
$84,940.88 and subsequently filed a Bad Check Complaint against Respondent.
Respondent was subsequently indicted and charged with four felony counts based
on Complainant’s allegations.
On December 11,
2002, Respondent filed a civil action in Nevada state court against Complainant
for $10,000,000. in damages stemming from the incident. On January 10, 2003,
Complainant moved for a more definite statement, alleging that Respondent’s
complaint failed to state a proper claim for relief. Respondent’s More Definite
Statement was filed on February 14, 2003, eight days after its registration of
the <usbank.cc> domain name. Respondent’s claim against
Complainant was subsequently dismissed with prejudice.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
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
established in this proceeding that it has rights in the USBANK mark through
proof of registration of the mark on the Principal Register of the U.S. Patent
and Trademark Office, as well as by widespread and continuous use of the mark
in commerce.
The domain name
registered by Respondent, <usbank.cc>, is identical to Complainant’s USBANK mark. The disputed domain name
duplicates Complainant’s mark with the exception of the addition of the
top-level domain “.cc,” an inconsequential feature for the purposes of Policy ¶
4(a)(i) analysis. See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002)
(finding that since the addition of the country-code “.us” fails to add any
distinguishing characteristic to the domain name, the <tropar.us> domain
name is identical to Complainant’s TROPAR mark).
Accordingly, the
Panel finds that the <usbank.cc> domain name is identical to Complainant’s USBANK mark under Policy ¶
4(a)(i).
Complainant
established that it has rights to and legitimate interests in the mark
contained in its entirety in the domain name at issue. Complainant met its burden of proving that
Respondent has no rights or legitimate interests in the <usbank.cc> domain name by demonstrating
that Respondent does not qualify for any of the three “safe harbors” provided
for domain name registrants in Policy ¶¶ 4(c)(i)-(iii). Such a showing shifts
Complainant’s burden to Respondent, who must come forward with evidence
rebutting Complainant’s allegations in order to prevail on this element. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding where Complainant has asserted that Respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has
no rights or legitimate interests with respect to the domain, the burden shifts
to Respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name).
Respondent uses the disputed domain name to host what amounts to both a
complaint website against Complainant and a portal to its non-profit
corporation’s website at the <4coc.org> domain name. The website of
Respondent’s corporation openly solicits donations from Internet users to fund
its objectives. Appropriating Complainant’s mark and the goodwill surrounding
it in order to gain financial benefit for Respondent’s corporation is not a
“bona fide” offering of goods or services pursuant to Policy ¶ 4(c)(i), and it
is not a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000)
(finding no legitimate use when Respondent was diverting consumers to its own
website by using Complainant’s trademarks); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that using Complainant’s mark
“as a portal to suck surfers into a site sponsored by Respondent hardly seems
legitimate”).
Respondent, as either Michael John or the name “Z, L” listed in the
disputed domain name’s WHOIS contact information, is not “commonly known by”
the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing
in Respondent’s WHOIS information implies that Respondent is ‘commonly known
by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also Gallup Inc. v. Amish
Country Store, FA 96209
(Nat. Arb. Forum Jan. 23, 2001) (finding Respondent has no rights in a domain
name when Respondent is not known by the mark).
Given Respondent’s previous contentious dealings with Complainant, the
Panel considers Respondent’s failure to contest the Complaint as evidence that
it lacks rights or legitimate interests in the disputed domain name. See
Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that Respondents’ failure to respond can be construed as an admission that they
have no legitimate interest in the domain names); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interests in the domain name because the Respondent never submitted a response
or provided the Panel with evidence to suggest otherwise).
Accordingly, the
Panel finds that Respondent has no rights or legitimate interests in the <usbank.cc>
domain name under Policy ¶
4(a)(ii).
Respondent’s registration of the <usbank.cc> domain name came in the midst of a civil proceeding
against Complainant. Its registration came after Respondent was indicted and
charged by the Clark County District Attorney’s Office in Nevada on
Complainant’s complaint with four felony counts stemming from alleged
check fraud. For these reasons, the Panel finds that Respondent was well aware
of Complainant’s rights in the USBANK mark when it chose to register a domain
name identical to that mark. This is
evidence that the domain name was registered in bad faith. See
Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Albrecht
v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (“The Respondent
intentionally registered a domain name which uses the Complainant’s name. There is no reasonable possibility that the
name karlalbrecht.com was selected at random.
There may be circumstances where such a registration could be done in
good faith, but absent such evidence, the Panel can only conclude that the
registration was done in bad faith”); see
also Cabela’s Incorporated v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum
Aug. 29, 2000) (finding evidence of bad faith where Respondent registered the
domain name in response to Complainant’s request that it transfer the domain
name to Complainant, stating plainly, “Respondent registered this domain name
in bad faith to retaliate against Complainant”).
Respondent’s principal use of the disputed domain name involves posting
disparaging information about Complainant and providing links to other websites
critical of Complainant. Although honest criticism of an entity or person is a
protected right, that criticism must be based on fact and cannot be done under
the lawfully protected mark of an organization. While these proceedings are not
designed to determine whether Respondent has a factual basis for the claims it
makes against Complainant, Respondent’s wholesale use of Complainant’s mark for
its criticism website is evidence of bad faith. Respondent’s speech is not
protected speech when it is presented to the public under the misleading guise
of Complainant’s registered mark. See Monty & Pat Roberts, Inc. v.
Keith, D2000-0299 (WIPO
June 9, 2000) (finding that “[T]he Panel does not dispute Respondent’s right to
establish and maintain a website critical of (the Complainant) . . . . However,
the panel does not consider that this gives Respondent the right to identify
itself as Complainant”); see also Baker &Daniels v. DefaultData.com,
FA 104579 (Nat. Arb. Forum Mar. 27, 2002) (finding that because Respondent’s
<bakeranddaniels.com> domain name merely incorporates Complainant’s
trademark, without more, it is not protected by the First Amendment).
Respondent uses the disputed domain name to gain financial support for
its corporation, the Church of Change, Inc. Although Respondent’s corporation
is a non-profit organization, its use of Complainant’s mark to procure funds is
a commercial activity for the purposes of Policy ¶ 4(b)(iv). The Panel finds
that in registering a domain name identical to the mark of an entity against
which Respondent was facing legal proceedings in both a criminal and civil
context, Respondent intended to create a likelihood of confusion as to the
source or sponsorship of the disputed domain name for commercial gain,
fulfilling the criteria for bad faith use and registration under Policy ¶
4(b)(iv). See Nat’l Rifle Ass'n. v. fredg.com, FA 95837 (Nat. Arb. Forum Nov. 30,
2000) (finding bad faith where Respondent registered the domain names
<friendsofnra.com>, <friendsofnra.net>, and
<friendsofnra.org> with the
intention of using the domain names in connection with individual NRA
fundraising, but without permission from Complainant to use the registered
marks); see also Perot Sys. Corp.
v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith
where the domain name in question is obviously connected with the Complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain).
Furthermore,
Respondent’s fine-print disclaimer at the disputed domain name does nothing to
alleviate the initial confusion imparted upon Internet users who mistakenly
access Respondent’s website en route to Complainant’s websites. This disclaimer
is not a mitigating factor in the Panel’s determination of whether the domain
name was used in bad faith. See DaimlerChrysler Corp. v. Bargman,
D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the
domain name consists of Complainant’s well-known trademark, does not counter
the expectation of Internet users that the domain name is sponsored by
Complainant); see also Las Vegas
Sands, Inc. v. Red Group,
D2001-1057 (WIPO Dec. 6, 2001) (justifying the conclusion that Respondent
wishes to trade on the fame of Complainant’s trademark, regardless of the
presence of a small-print disclaimer, because the disclaimer fails to remedy
initial confusion).
The Panel thus
finds that Respondent registered and used the <usbank.cc> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <usbank.cc> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 16, 2003.
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