National Arbitration Forum

 

DECISION

 

First Place Financial Corp. v. Michele Dinoia c/o SZK.com

Claim Number: FA0506000506772

 

PARTIES

Complainant is First Place Financial Corp. (“Complainant”), represented by Christopher B. Fagan, of Fay, Sharpe, Fagan, Minnich & McKee, LLP, 1100 Superior Avenue, Seventh Floor, Cleveland, OH 44114.  Respondent is Michele Dinoia c/o SZK.com  (“Respondent”), represented by Valerio Donnini, 4 Via Venezia 65121 Pescara, PE Italy.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <fpfc.com>, registered with Onlinenic, 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.

 

Judge Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2005; the National Arbitration Forum received a hard copy of the Complaint on July 5, 2005.

 

On June 30, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <fpfc.com> is registered with Onlinenic, Inc. and that the Respondent is the current registrant of the name.  Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 July 11, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 1, 2005 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@fpfc.com by e-mail.

 

A timely Response was received and determined to be complete on August 1, 2005.

 

On August 6, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

            1.            Complainant owns and uses FPFC as a ticker symbol and as a corporate identifier in association with banking services, real estate brokerage services and insurance brokerage services.  FPFC, an acronym of Complainant’s corporate name, was first used by Complainant well in advance of the registration of <fpfc.com> by Respondent.  Complainant has a bona fide intention to further promote its services under FPFC.

 

            2.            Case law recognizes ticker symbols as indicators of origin subject to findings of likelihood of confusion with trademarks.  See, e.g., Waterman-Bic Pen Corporation et al. v. Beisinger Industries Corp., 169 USPQ 163 (CD SNY 1970).  Use of ticker symbols or use of acronyms comprised of initial letters of a corporate name may be considered use analogous to trademark use when such use is open and notorious.  Id.  Applicant’s use of FPFC is open and notorious.

 

            3.            Respondent registered the disputed domain name <fpfc.com> on August 11, 2003 (subsequent to use of FPFC as a ticker symbol by Complainant).  Respondent uses the <fpfc.com> domain name  to host a search engine that contains links to a variety of commonly searched subjects such as banking, online payment, debt consolidation, foreclosures, credit reports, travel, mortgage services, car insurance, life insurance and leisure services.  The links also cover gambling and training and/or weight loss and alcohol treatment.  Respondent is not in the banking business nor is it in the insurance or mortgage business.  Respondent has no purpose for holding the <fpfc.com> domain name.  the domain name is nothing more than the address for a search engine.  Consumers looking for Complainant’s site on the internet are misdirected to Respondent’s search engine.

 

            4.            Respondent’s <fpfc.com> domain name is confusingly similar to Complainant’s FPFC symbol and mark for banking services, insurance brokerage services and real estate brokerage services.  A side-by-side comparison of <fpfc.com> with Complainant’s symbol and mark FPFC shows that they are identical.  Registration and use of <fpfc.com> is likely to cause confusion.  Consumers are likely to identify the domain <fpfc.com> as originating with Complainant.

 

            5.            Complainant asserts that the disputed domain name is not used for any bona fide offering of goods or services and that there is no indication that Respondent was known by the name FPFC prior to registration of the domain name.  The Respondent is not authorized or licensed to use the Complainant’s mark or symbol FPFC.

 

            6.            Respondent registered the domain name to attract, for commercial gain, internet users to Respondent’s website or other online location by creating a likelihood of confusion with Complainant’s FPFC symbol as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location, or of a product or service on that website or location.

 

            7.            The disputed domain name was registered or acquired in bad faith and primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner of the service mark (i.e., the Complainant) for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name.

 

            8.            Evidence of Respondent’s bad faith may be viewed directly on the <fpfc.com> website home page.  Note that Respondent seeks to sell the domain name directly on its website.  Respondent’s willingness to sell the domain evidences its bad faith.

 

            9.            Registration of the <fpfc.com> domain name  prevents Complainant, the valid owner of the symbol and service mark FPFC for banking services, real estate brokerage and insurance brokerage services from reflecting its mark in a corresponding domain name.  Respondent has engaged in a pattern of such conduct as evidenced by multiple decisions including those from WIPO and proceedings at the National Arbitration Forum which found in favor of the complainants, and the Respondent was required to transfer domain names to the respective complainants.

 

            10.            By using the disputed domain name, <fpfc.com>, Respondent is intentionally attempting to attract, for commercial gain, internet users to its website or other online location by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.  Furthermore, Respondent seeks to sell the disputed domain name online, which is further evidence of bad faith.

 

 

 

B. Respondent

            1.            Under Paragraph 4(a)(i) of the Policy, the Complainant must establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights.

 

            2.            The Respondent asserts that the Complainant has no trademark or service right on FPFC.  Complainant has no relevant trade or service mark registrations, and must therefore rely upon whatever rights it can demonstrate to exist in its unregistered mark.  Further, outside the USA, it is unlikely that anyone would recognize FPFC as being associated with the First Place Financial Corporation.  The Complainant’s contention that its use of the acronym is open and notorious cannot be accepted since in the absence of rights evidenced by some form of registration, the Complainant needs to establish that it has used the letters FPFC in this format as a mark and, in the course of doing so, has built up a reputation or goodwill in that form of identification so that it refers to it and no one else.

 

            3.            Relevant UDRP precedent does not support protecting Complainant’s corporate name, absent evidence of secondary source identification or extensive use of the name in relation to the specified product.

 

            4.            It is only where a domain name has been shown by appropriate evidence to have acquired distinctiveness as a trademark that it may be protected under the Policy.  Complainant has not carried its required burden of proof here.

 

            5.            Respondent had a legitimate interest in registering the disputed domain name, which was available for registration.  Respondent’s demonstrable legitimate interests in the disputed domain name is because the disputed name is comprised of generic terms that are legitimately open for registration as domain names on a first come, first served basis.

 

            6.            Numerous Panels have determined that the business of registering domain names is not illegitimate per se.  Even if the Respondent were considered to be in the business of obtaining lapsed domain names and putting them to use, such activities, where carried out in relation to a domain name which is generic or which is not clearly associated with a single entity, does constitute rights or legitimate interests within the meaning of the Policy.  Several Panels have held that exactly such an enterprise creates a legitimate bona fide business interest in the generic or descriptive domain name in the domain name owner.

 

            7.            The Respondent did not know of the Complainant’s existence or make an unsolicited offer to sell the disputed domain name to the Complainant, thus it did not act in bad faith.  The Complainant has failed to show that the Respondent knew of the Complainant’s existence when it registered the disputed domain name and it did not submit any supporting evidence that the Respondent in Italy knew or should be deemed to have known of the Complainant and its use of the letters FPFC.  Moreover, as stated by the Complainant, the activities of the Complainant are based only in the USA and only in the U.S. the mark could have acquired distinctiveness, while Respondent is an Italian citizen, living in Italy.  Complainant did not introduce any evidence of the reasons why the Respondent should have been aware of the Complainant’s service mark.  There is no evidence to suggest that the Italian Respondent knew of the U.S. based Complainant’s trademarks when the Respondent registered the disputed domain name.

 

            8.            The disputed domain name is a combination of four letters that might be – and apparently is – used by many organizations in many countries.

 

            9.            Complainant asserts that since the Respondent was judged to be an illegal registrant of domain names as a party in multiple previous Forum cases, Respondent should also be recognized as having bad faith in this case also.  But, the Respondent’s bad faith cannot be demonstrated by those other cases alone.  The fact that the Panel in a different UDRP case found that the conduct of diverting traffic to a search engine is to be considered as bad faith registration and use, it is not appropriate to apply all the facts of other cases merely because Respondent is a party here.

 

            10.            Even if Respondent did acquire the disputed domain name for the primary purpose of selling it to a third party, this was not done for the purpose of selling, renting or otherwise transferring the name to Complainant or a competitor as required by Paragraph 4(b) of the Policy.  Nor did Respondent register the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.  In fact, Complainant has its own website at domain name <fpfc.net>.  In any event, there is no pattern demonstrated here.

           

FINDINGS AND DETERMINATIONS

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.

 

Identical and/or Confusingly Similar

 

      It may well be that Respondent is a “recidivist cybersquatter,” but this does not doom his position here.

 

      Complainant does not have a registered mark.  It can, of course, contend, as it does, that it has common law rights which are sufficient under the Policy.  See McCarthy on Trademarks and Unfair Competition, section 25:74..2 (4^th Ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required – unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO March 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

 

      But to establish a common law mark, the mark must have acquired a secondary meaning.  See IMDb, Inc. v. Seventh Summit Ventures, FA 436735 (Nat. Arb. Forum April 25, 2005) wherein it was said:

 

Complainant may have established trademark rights apart from the presumption afforded by federal trademark registration prior to Respondent’s registration of the domain name in 1997 through secondary meaning.  See Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763, 769 (1992), citing Restatement (Third) of Unfair Competition § 13, pp. 37-38, and comment a (Tent. Draft No. 2, Mar. 23, 1990) (“The general rule regarding distinctiveness is clear:  An identifying mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning.”). 

 

      See to the same effect Tuxedos by Rose v. Nunez, FA95248 (Nat. Arb. Forum August 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum March 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982); see also Keppel Tatlee Bank v. Taylor, D2001-0168 (WIPO March 28, 2001) (“[O]n account of long and substantial use of {KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).

 

      The difficulty with Complainant’s position here is that it has not carried its burden of proof with respect to trademark status, i.e., lack of genericness (see McCarthy, supra, section 12.12) and secondary meaning.  See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); see also Yao Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (“Bald assertions of consumer knowledge are not an adequate form of evidence to establish secondary meaning in a name.”).

 

      Complainant seeks to bolster its case by citing Waterman-Bic Pen Corp. v. Beisinger Industries Corporation, 321 F.Supp. 178, 169 USPQ 163 (DC SD NY 1970) for the proposition that use of initials in a ticker tape symbol on the National Stock Exchange is open and notorious and will establish secondary meaning.[1]

 

      This, however, is not what the Waterman-Bic case held or suggested.  It was the defendant Beisinger who wanted to use B.I.C. as a ticker symbol.  The Court said it could not because the BIC ballpoint pen was a household term so well known that the use of the ticker symbol could possibly cause confusion.

 

      The other evidence provided by Complainant does not establish a secondary meaning sufficient to create a common law mark.[2]

 

      Complainant, accordingly, has not established the threshold issue, i.e., that it is the owner of a trademark or service mark in which it has rights.

 

      This failure of proof by Complainant obviates the need to consider further issues.

 

DECISION

Having failed to establish the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated:  August 22, 2005

 

 

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