City Bank v. Domain Admin / Inavit, Inc.
Claim Number: FA1406001564337
Complainant is City Bank (“Complainant”), represented by Kristi Dent of Cox Smith Matthews Incorporated, Texas, USA. Respondent is Domain Admin / Inavit, Inc. (“Respondent”), represented by Maulin V. Shah of UDRPro, LLC, North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citybank.com>, registered with Key-Systems GmbH.
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.
Fernando Triana, Esq., as Chair
Honorable James A. Carmody, as Co-Panelist
Dennis A. Foster, Esq., as Co-Panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2014; the National Arbitration Forum received payment on June 12, 2014.
On June 13, 2014, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <citybank.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 June 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2014 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@citybank.com. Also on June 18, 2014, 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 July 3, 2014.
On July 3, 2014, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq., as Chair, and Honorable James A. Carmody and Dennis A. Foster, Esq. as Co-Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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
a. Complainant is the owner of the mark CITY BANK on which it has spent time, money and effort to obtain recognition.
b. Complainant was established and insured under the CITY BANK brand in April 1984 before the Federal Deposit Insurance Corporation. See Complainant’s Exhibit 3.
c. Complainant has established substantial common law rights in the CITY BANK mark in connection with banking and financial services.
d. Complainant has continuously used the mark in connection with signage, advertisings, brochures, and in other marketing materials since 1984.
e. Complainant operates its primary website at <citybankonline.com>, and it also owns <citybanktexas.com>. See Complainant’s Exhibits 4 and 5.
f. The disputed domain name <citybank.com> is identical to Complainant’s CITY BANK mark. The disputed domain name incorporates Complainant’s mark in its entirety.
g. Respondent does not have any rights or legitimate interests in the disputed domain name <citybank.com>.
h. Respondent is not making a bona fide use of the disputed domain name.
i. Respondent is not making fair use of the disputed domain name, since it is not part of a legitimate business.
j. Complainant has not authorized Respondent to use its CITY BANK mark in any way.
k. The disputed domain name <citybank.com> resolves to a parked page with sponsored links including references to various financial products. See Complainant’s Exhibit 7.
l. Respondent registered and is using the disputed domain name <citybank.com> in bad faith.
m. Respondent offered to sell the disputed domain name for a price in excess of $180,000, which significantly exceeds the cost of acquiring and maintaining the disputed domain name.
n. Respondent is disrupting Complainant’s business by hosting a parked page with sponsored links in connection with competing financial products. See Complainant’s Exhibit 7.
o. Respondent is intentionally attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s CITY BANK mark.
p. The disputed domain name <citybank.com> resolves to a parked page featuring competing links, and Respondent admits receiving $4,000 in click-through revenue. See Complainant’s Exhibits 7 and 8.
B. Respondent
a. Complainant has not presented evidence regarding its ownership of the trademark registration CITY BANK.
b. Complainant must rely on common law rights in the alleged trademark CITY BANK. However, it fails to include any evidence to establish secondary meaning or acquired distinctiveness.
c. Complainant makes conclusory statements regarding its common law rights without providing sufficient evidence to prove common law rights.
d. Complainant’s registration with the Federal Deposit Insurance Corporation (“FDIC”) is insufficient to demonstrate common law rights.
e. Further, according to the Texas Secretary of State, Complainant was not organized as an entity until November 17, 1999, which is nearly four years after Respondent’s registration of the disputed domain name <citybank.com>. See Respondent’s Exhibit 1.
f. Respondent’s registration of the disputed domain name also predates Complainant’s registration of its two primary domain names.
g. The disputed domain name <citybank.com> is comprised of common and generic, descriptive terms.
h. Respondent is in the business of buying and selling domain names for development and monetization purposes. Respondent registers generic, descriptive, and three and four letter domain names to use in advertising and developed websites. See Complainant’s Exhibit 8.
i. The screen shot of the disputed domain name’s resolving website was a temporary page used for a few months. Upon receiving the Complaint, Respondent immediately changed the disputed domain name so that it resolved to a website that allows users to search for banks, ATM machines, and conduct routing number lookups. See Respondent’s Exhibit 6.
j. Respondent’s use of the disputed domain name <citybank.com> is legitimate because panels have generally permitted pay-per-click advertising where the domain name consists of dictionary or common words, so long as there is no capitalization on trademark value.
k. Respondent registered the disputed domain name <citybank.com> without any knowledge of Complainant’s alleged common law rights.
l. Complainant has not produced any evidence that shows Respondent was or could have been aware of Complainant’s mark at the time Respondent registered the disputed domain name.
m. Respondent resides in Great Britain, and there is no plausible reason why Respondent knew or should have known of Complainant.
n. Respondent has not attempted to target Complainant’s interests or alleged trademark in order to capitalize on it. The term “city bank” is widely used by banks across the world.
o. Respondent never made an initial offer to sell the disputed domain name. Rather, Respondent’s offer was in response to Complainant’s unsolicited inquiry, which renders Respondent’s offer irrelevant under Policy ¶ 4(b)(i).
p. Complainant is precluded by the doctrine of laches from bringing this UDRP proceeding. Complainant waited approximately eighteen and a half years after the disputed domain name was registered to file this Complaint. Such a delay indicates that disruption of Complainant’s business has not been significant, otherwise Complainant would have been compelled to take swifter action against Respondent.
q. Complainant is attempting to reverse domain name hijack the disputed domain name <citybank.com> from Respondent. Complainant is aware that it lacks a registered trademark and has failed to submit evidence establishing distinctiveness or secondary meaning attached to the alleged trademark CITY BANK. Complainant should have known it would likely fail for lack of common law rights. Respondent believes Complainant may have filed the Complaint to intimidate and pressure Respondent into making a favorable deal with Complainant.
1. Complainant argues to have used the expression CITY BANK as a trademark since 1984; however, the Complaint does not provide any evidence of such use. After reviewing the Exhibits to the Complaint, the Panel only found the current screenshot of the website <citybankonline.com> (Evidence 5 to the Complaint) and a copy of a TV-GUIDE from 1986 (Evidence 5 to the Complaint). The aforementioned documents, and all the other documents filed by Complainant, do not prove the existence of a trademark, its use or its secondary meaning. Consequently, there is neither evidence of secondary meaning nor evidence of use of the expression CITY BANK as a trademark. Thus, Complainant has not proven any rights regarding the trademark CITY BANK.
2. Respondent uses a domain name which is the combination of generic and descriptive words.
3. Complainant should have known of the existence of the disputed domain name, since Respondent’s domain name registration predates Complainant’s domain name registrations.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Complainant contends to be the owner of the trademark CITY BANK, since 1984.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[1]. However, a Complainant does not need to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark in order to deserve legal protection, based solely on its use in commerce. Accordingly, in this case, Complainant must establish unregistered or common law trademark rights if it is to succeed with its Complaint.
In S.N.C. Jesta Fontainebleau v. Po Ser, D2009-1394 (WIPO November 21, 2009), the Panel stated that:
[F]or the purpose of assessing what might constitute an equivalent to a common law trade mark right, it is important to understand what a common law trade mark is. In this context it is a name or sign, the use of which (or a confusingly similar variant of which) a person can restrain by way of a passing off action. For the purposes of a passing off action the plaintiff needs to be able to prove that (a) it has a reputation and goodwill in respect of the name or sign in question, (b) the defendant is using it or a confusingly similar variant of it to cause deception in the marketplace and (c) the plaintiff is suffering or is likely to suffer consequential damage.
In other words, in a common law jurisdiction, if a third party set up in competition with the Complainant under the same or a confusingly similar name, the Complainant could succeed in a passing off action and stop the activity complained of if it were able to establish those three elements.
Therefore, to determine whether or not Complainant owns unregistered trademark rights the Panel must, as a threshold matter, be able to identify a reputation in respect of the name or sign in question. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, available at http://www.wipo.int/amc/en/domains/search/overview2.0/1.9, requests at paragraph 1.7: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” In answer, the consensus view of UDRP panelists is that:
The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required … Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.
It should be added that a corollary to these principles is that the lower the level of inherent distinctiveness of the alleged trademark, the higher will be the bar to proof its secondary meaning.
The expression CITY BANK to indentify financial services is descriptive, as it refers to the bank of the city. On this basis Complainant faces the additional hurdle of showing secondary meaning in a descriptive term that other traders are likely to desire to use for similar services.
The evidence does not advance Complainant’s position. Panel is told that Complainant has spent significant time, money and effort to establish public recognition and has portrayed its trademark in advertisement, brochures and promotional materials. Nonetheless, this information does very little to assist the Panel to understand the reach and recognition of the trademark as an indicator of Complainant’s services and not as a reference to banking services generally.
For these reasons, and in the absence of Complainant’s trademark registration for CITY BANK, this Panel is not able to conclude that Complainant has common law trademark rights. The Panel finds that Complainant has failed to establish the first limb of the Policy.
Consequently, the element of the Policy paragraph 4(a)(i) has not been established in the present case.
Doctrine or Defense of Laches
Respondent considers that since Complainant filed the Complaint 18 years after the registration of the disputed domain name, the Complaint should be precluded by laches.
Certain jurisdictions endorse the doctrine of laches which typically bars the recovery of damages incurred before the filing of a lawsuit and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief.[2]
The remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.[3]
The Policy offers a limited remedy to avoid future confusion in the marketplace, and it does not contemplate that such a remedy would be unavailable because of delay in instituting a Policy proceeding.
Furthermore, lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent's alleged bad faith in registering and using the domain name.
As laches is a defense mechanism for Respondent which finally affects the arguments regarding the elements of rights or legitimate interests in the disputed domain name and bad faith registration and use, the delay should be taken into account in those elements. Notwithstanding, as Complainant did not even prove its rights in a trademark registration of trademark rights of any kind, the defense of laches is no longer applicable.
Paragraph 15(e) of the Rules provides as follows:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
As per Paragraph 1 of the Rules: “Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Regarding Reverse Domain Name Hijacking, Respondent must provide sufficient evidence for the Panel to conclude that Complainant has filed the Complaint in bad faith.
Allegations of Reverse Domain Name Hijacking would succeed when Respondent’s use of the disputed domain name has not constituted bad faith and weaknesses in the Complaint are revealed during the proceeding[4], such as, Complainant’s knowledge of: (i) its lack of relevant trademark rights, (ii) Respondent's rights or legitimate interests in the disputed domain name, or (iii) Respondent's lack of bad faith in the disputed domain name.
In the present case, the disputed domain name was registered in 1995, with a business model based on pay-per-click advertisement. Complainant registered its domain names in 1998 and 1999, which means that at least on those dates Complainant should have known that the disputed domain name was not available and neglected to proceed against it, until 2014, which is 15 years after Complainant should have known of the existence of a conflict.
Furthermore, Complainant did not provide any evidence as to prove its trademark rights regarding the expression CITY BANK and tried to confuse the Panel regarding Respondent’s bad faith, as the Complaint asserted that Respondent offered to sell the disputed domain name for over USD$180,000, when from the exchanged emails it is obvious that Respondent was not offering the disputed domain name but responding to an offer from Complainant, and simply informed Complainant that a third party had offered to pay for the disputed domain name USD$180,000, and that in fact Respondent refrained itself from selling it.
Moreover, as per the list of Respondent’s domain names which are on sale, filed by Complainant as Evidence 8, the disputed domain name was not even listed.
Finally, Complainant’s long delay in bringing this action is another factor supporting a finding of its bad faith. The fact that Complainant filed this proceeding nearly 15 years after Complainant should have known of the existence of the disputed domain name and over 18 years after the disputed domain name registration, suggests that Complainant knew it had a very weak claim and nevertheless filed its UDRP Complaint in bad faith.
The Panel accordingly finds that Complainant’s actions constitute an abuse of the UDRP process.
Having not established the element required under the ICANN Policy paragraph 4(a)(i); it will not be necessary to make an in depth study of the remaining elements of paragraph 4(a) of the Policy, the Panel concludes that relief shall be DENIED.
Moreover, the Panel declares that the Complaint was brought in bad faith and thus constitutes Reverse Domain Name Hijacking.
Accordingly, it is Ordered that the <citybank.com> domain name REMAINS WITH Respondent.
Fernando Triana, Esq.
Chair of the Panel
|
Honorable James A. Carmody Co-Panelist |
Dennis A. Foster, Esq. Co-Panelist |
July 21, 2014
COLO 1308 0960 65740/SÁG
4290210366897
[1] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i)).
[2] Mile, Inc. v. Michael Burg, D2010-2011 (WIPO, February 7, 2011) (The parties in the current proceeding are both located in the United States, where courts recognize the equitable doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. However, in the United States, the defense of laches typically bars the recovery of damages incurred before the filing of a lawsuit, and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace). See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2005) §31:10, p. 31-35 and cases cited therein. The remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. Thus, UDRP panels have generally declined to apply the doctrine of laches. See, e.g., Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 (“It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy”); The E.W. Scripps Company, supra (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes); see also cases cited in the Index of WIPO UDRP Panel Decisions, sec. III(G)(1)(c)).
[3] See The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616; The E.W. Scripps Company v. Sinologic Indus., WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy's purposes). See also Tom Cruise v. Network Operations Center/ Alberta Hot Rods, WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint).
[4] See Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, Case No. D2005-0309 (WIPO, July 19, 2005) (Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151)). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant’s relevant trademark registrations.) See also Prime Pictures LLC v. DigiMedia.com L.P. Case No. D2010-1877 (WIPO February 2, 2011).
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