DECISION

Ohio Savings Bank d/b/a AmTrust v. Manfred Kempa

Claim Number: FA0512000605065

PARTIES

Complainant is Ohio Savings Bank d/b/a AmTrust (“Complainant”), represented by Peter J. Riebling, of Katten Muchin Rosenman, LLP, 1025 Thomas Jefferson Street, NW, East Lobby, Suite 700, Washington, DC 20007-5201. Respondent is Manfred Kempa (“Respondent”), 2306 Briana Dr, Brandon, FL 33511.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amtrust.us>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Steven L. Schwartz as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 6, 2005; the Forum received a hard copy of the Complaint on December 7, 2005.

On December 6, 2005, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the <amtrust.us> domain name is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

On December 12, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 3, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

A timely Response was received and determined to be complete on January 3, 2006.

On January 11, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Steven L. Schwartz as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Ohio Savings Bank d/b/a AmTrust is the seventeenth largest thrift institution in the U.S. with fifty-six branches and assets of $15 billion. AmTrust claims ownership and use of the registered U.S. trademark No. 1,462,208, AMTRUST, in connection with its services and in commerce throughout the U.S., including directly or physically in eighteen states. It also does business throughout the continental U.S. as AMTRUST through nationwide telephone and internet banking.

2. The AMTRUST trademark has been in use by AmTrust, or by its predecessors in interest, in connection with “retail banking services provided to the general public” since at least as early as August 27, 1985. The trademark has enjoyed a powerful and respected reputation. After over twenty years of use, AMTRUST is a popular, well-known and trusted brand known by consumers and competitors alike in U.S. banking, investing, insurance, and lending channels of trade. The AMTRUST trademark is used in commerce in connection with a panoply of services, inter alia: retail banking services, mortgage banking services, commercial banking services, telephone and internet banking services, automobile financing, insurance agency, securities brokerage, residential land acquisition, development and construction lending, private equity investment, and financial services.

3. AmTrust owns several trademark registrations and/or applications for the AMTRUST mark, including AMTRUST, AMTRUST BANK, and AMTRUST FINANCIAL SERVICES, with rights of use dating back to 1985. AmTrust further owns and uses as trademarks in connection with its services described above, a large family of “AMTRUST” domain names including but limited to: <amtrust.com>, <amtrustauto.com> and <amtrustautofinance.com>. The trademarks and trademark registrations and applications predate any registration of Respondent’s domain name, <amtrust.us> (hereinafter “the Domain Name”), are in full force and effect, and have not been abandoned. AmTrust therefore has the prima facie exclusive prior right to use the AMTRUST trademark or any variants or derivations thereof in the U.S. in connection with services related to its registered services, and in connection with its associated marketing and promotional activities, such as in Internet domain names.

4. In an effort to promote the services provided under its AMTRUST trademark, AmTrust has engaged in extensive use, marketing, and commercial promotion of its trademarks, not only in connection with the registered and applied for described services, but also in advertising and media campaigns.

These uses include printed matter, such as publications, brochures, catalogs, price sheets, specification sheets, and invoices; newspaper advertising; yellow pages advertising, television advertising; sponsorship of events; billboards; the Internet, and word of mouth. AmTrust has spent approximately $1.8 million in advertising and marketing its AMTRUST trademarks during the past year, and has spent equally significant sums in prior years. AmTrust estimates that it has spent in excess of $15 million in advertising its marks and services during the past fifteen years.

6. AmTrust has a significant presence on the Internet. AmTrust’s official Internet web site is located at <amtrust.com>.

7. A single common thread throughout AmTrust’s activities is the word, trademark, and brand name AMTRUST. AMTRUST is associated with everything AmTrust does. The AMTRUST term and name is synonymous in the mind of the general public due to the strong reputation gained as a result of the quality of AmTrust’s services. Through its ongoing, extensive and costly national activities and use in commerce, AmTrust has created enormous monetary value, reputation, notoriety and goodwill in the AMTRUST trademarks. The AMTRUST trademarks are distinctive symbols of AmTrust’s high quality reputation and valuable goodwill, and have become, through extensive use, famous and well-known trademarks.

8. According to the records of Go Daddy Software, Inc. (the Registrar of the disputed Domain Name, hereinafter “Registrar”), located at 14455 N. Hayden Road, Suite 219, Scottsdale, Arizona 85260: (1) Respondent, and the registrant of the <amtrust.us> domain name, is Manfred Kempa, located at 2306 Briana Dr., Brandon, Florida 33511; and (2) the administrative, technical and billing contact for Respondent is Manfred Kempa, kempam@hotmail.com, phone (813) 380-4580, fax (760) 588-3188. AmTrust is not related to Manfred Kempa. AmTrust has not licensed to Manfred Kempa nor granted its permission or consent to the use, ownership or appropriation by Manfred Kempa, any portion of AMTRUST or the above described AMTRUST trademarks in Manfred Kempa’s Domain Name, or in any manner whatsoever.

9. Identical to or confusingly similar. Respondent’s Domain Name, <amtrust.us>, violates Paragraph 4(a)(i) of the ICANN Policy. It contains elements identical to or confusingly similar to the AMTRUST trademarks in which AmTrust has prior rights, because:

(a) Visually, it is identical to the trademarks. It contains AmTrust’s entire coined term, business name and registered trademark, AMTRUST.

(b) Phonetically, it is identical to the trademarks. A speaker has no alternative but to say “amtrust” as part of the entire pronunciation.

(c) It has the identical commercial meaning and source identification to the public as the trademarks. It means nothing other than the financial, banking, investment, and lending business and activities associated with AmTrust and the AMTRUST trademarks. It is used with offering mortgage and other financial services.

(d) Because of this identical sight, sound and meaning, members of the public who find <amtrust.us> on the Internet, on search engines, or elsewhere, are likely to believe falsely and mistakenly that the source or origin of the Domain Name and associated web site is AmTrust, or one of its affiliates, or that the Domain Name is sponsored by, endorsed by, approved by, licensed by, connected, associated or affiliated with AmTrust—when, in fact, the opposite is true.

10. Registration in bad faith. <amtrust.us> violates Paragraph 4(a)(iii) of the Policy. <amtrust.us> should be considered as having been registered or being used in bad faith, because:

(a) Despite AmTrust’s rights in the AMTRUST trademarks, the Domain Name actively uses the AMTRUST trademark and the AMTRUST brand in connection with lending services. Manfred Kempa blatantly and prominently displays at the web site associated with the Domain Name AmTrust’s own AMTRUST trademarks--making it impossible for a consumer to believe anything other than that it is affiliated or associated with AmTrust.

(b) Because the Domain Name contains AmTrust’s entire AMTRUST trademark and business name, AmTrust has no alternative but to conclude and assert that registration and use of the Domain Name was deliberately designed and calculated to trade on and misappropriate the enormous monetary value, reputation, notoriety, fame and goodwill in the AMTRUST trademarks. Registration of the Domain Name was made to unjustly enrich Manfred Kempa by enabling it to obtain unfairly the benefits and advantages of AmTrust’s own use, research, testing, marketing, offering, and advertising of the AMTRUST trademarks. AmTrust, for the same reasons, has no alternative but to conclude and assert that Manfred Kempa has capitalized on the high consumer demand for AmTrust’s AMTRUST brand, and on the high-quality reputation and goodwill associated with the AMTRUST trademarks. A domain name consisting of nothing more than AmTrust’s entire trademark and trade name is, by itself, a proper inference of evidence of bad faith.

(c) The Domain Name places a cloud over AmTrust’s title and ownership in and to all of the AMTRUST trademarks, as well as placing a cloud over AmTrust’s right to enjoy the free, unfettered and exclusive use of the AMTRUST trademarks in connection with AmTrust’s services.

(d) Manfred Kempa’s intentional registration of the Domain Name has deprived AmTrust of its right to determine and decide with whom AmTrust, and the AMTRUST trademarks, shall be connected and associated.

(e) Because the AMTRUST trademark is so established and famous, AmTrust has no alternative but to conclude and assert that Manfred Kempa’s registration and use of the Domain Name in the same financial services market as AmTrust’s was done with the blatant and deliberate intent to trade on and procure the goodwill, fame, renown, reputation, worldwide notoriety and advertising expenditures of AmTrust as related to the AMTRUST trademarks, to trade on and procure use of the AMTRUST trademarks alone, to prevent AmTrust’s own use of its trademarks, to deceive and confuse the consuming public, and to blur whatever distinctions existed between the parties. Registration of AmTrust’s strong and widely known coined term and mark as a domain name and use of the same with financial services is plainly indicative of bad faith.

(f) Based on the foregoing, AmTrust asserts that Manfred Kempa registered, acquired and uses the Domain Name primarily for the purpose of selling competing funding, financial and/or lending services under the AMTRUST trademarks, for confusing the public, and/or for the purpose of selling, renting, or otherwise transferring the Domain Names to AmTrust who is the true owner of the AMTRUST trademark and of <amtrust.com>, or to a competitor of AmTrust, for valuable consideration in excess of the out-of-pocket costs directly related to the Domain Names.

(g) Based on the foregoing circumstances, AmTrust has no alternative but to conclude and assert that Manfred Kempa has registered and used the Domain Name in order to prevent the true owner of the AMTRUST trademark and of <amtrust.com> from reflecting the mark in corresponding domain names.

(h) Based on the foregoing circumstances, AmTrust has no alternative but to conclude and assert that Manfred Kempa registered and uses the Domain Name primarily for the purpose of disrupting the business of AmTrust.

(i) Based on the foregoing circumstances, AmTrust has no alternative but to conclude and assert that by registering and using the Domain Name, Manfred Kempa has intentionally attempted to use the Domain Name to divert and attract, for commercial gain, Internet users to its Domain Name, URL, web site or other on-line location, by creating a likelihood of confusion with the AMTRUST trademarks as to the source, sponsorship, affiliation, association, or endorsement of Manfred Kempa’s Domain Name, URL, web site or other on-line location.

11. No rights or legitimate interests in respect of the Domain Name. <amtrust.us> violates Paragraph 4(a)(ii) of the Policy. Manfred Kempa has no rights or legitimate interests in respect of the Domain Name because:

(a) Manfred Kempa is not related to AmTrust, and has not received any license, permission, or consent to use or own the AMTRUST trademarks.

(b) AmTrust’s established rights to AMTRUST in connection with financial services and banking precede the Domain Name by at least twenty years.

(d) “Amtrust” is not even a dictionary word. It is an inherently unique coined term, with registered U.S. trademark rights owned exclusively by AmTrust. Manfred Kempa’s registration and use of the Domain Name in the financial services market was done with the blatant and deliberate intent to trade on and procure the goodwill, fame, renown, reputation, worldwide notoriety and advertising expenditures of AmTrust. It is impossible for Manfred Kempa to use the Domain Name as the name of any business product or service without trespassing on AmTrust’s prior AMTRUST trademarks. The bad faith registration and use of the Domain Name as described herein makes all registration and use by Manfred Kempa illegitimate. It is impossible to conceive of any legitimate use of the AMTRUST trademarks by Manfred Kempa.

B. Respondent

1. Respondent has spent a significant amount of time and money in developing and maintaining the goodwill associated with his domain names and the associated business. Losing these domain names will cause severe damage to Respondent’s business.

2. Respondent states that there is no intention to infringe on any trademarks owned by Ohio Savings Bank. Respondent is based in Hillsborough County, Florida. Ohio Savings Bank has no presence in Hillsborough County, Florida. Respondent owns this and other similar domain names and has for several years provided mortgage loan origination services on behalf of Amtrust Funding Services, Inc., a Florida corporation since August 2002 and a Licensed Correspondent Mortgage Lender located at 215 Lithia Pinecrest Road, Brandon, Florida 33511, Hillsborough County, Florida.

3. Respondent has spent a significant amount of time and money in developing and maintaining the goodwill associated with his domain names and the associated business interests in Hillsborough County and South Florida. Complainant has no presence in Hillsborough County. Complainant is an Ohio corporation based in Ohio and considered a “Foreign for Profit Corporation” in Florida. Respondent’s customers in Brandon and Hillsborough County, Florida have been familiar for many years with the name Amtrust Funding Services, Inc., a locally owned corporation.

4. Respondent contends that a search of the official public records at the State of Florida website, Florida Department of State, Division of Corporations at <sunbiz.org> reveals that Ohio Savings Bank is known in Florida only as “AMTRUST BANK” or “AMTRUST FINANCIAL SERVICES, INC.,” not as “AMTRUST,” “AMTRUST FUNDING SERVICES, INC.,” “AMTRUST.US,” “AMTRUSTDIRECT.COM” or “AMTRUST, INC.”

5. Respondent also contends that the same search also reveals the fact that there are and have been many other businesses licensed and/or established in Florida or on the Internet that have “Amtrust” as part of their name, i.e.: “AMTRUST, INC,” “AMTRUST APPRAISERS, INC.,” “AMTRUST ENTERPRISES, INC.,” “AMTRUST FINANCIAL, INC.,” “AMTRUST FINANCIAL CORP.,” “AMTRUST FUNDING LLC,” “AMTRUST INVESTMENT N.A., INC.,” “AMTRUST INSURANCE GROUP, INC.,” “AMTRUST MORTGAGE CORPORATION,” “AMTRUST MORTGAGE SERVICES, INC.,” “AMTRUST NORTH AMERICA INC.,” “AMTRUST SOUTH INC.,” “AMTRUST UNITED CORPORATION,” etc. Many other domain names contain the term “Amtrust.” The <amtrust.org> domain name is owned by Amtrust Mortgage Corp. The <amtrust.net> domain name is owned by Amtrust Mortgage Funding, Inc.

6. Identical or confusingly similar. A search of the official public records at the State of Florida website, Florida Department of State, Division of Corporations at <sunbiz.org>, revealed that Ohio Savings Bank is known in Florida only as “AMTRUST BANK” or “AMTRUST FINANCIAL SERVICES, INC.” Respondent’s websites <amtrust.us> and <amtrustdirect.com> do not contain the full terms “amtrust bank” or “amtrust financial services, inc.” Respondent and Complainant also operate in different market places.

7. Rights or legitimate interests. Respondent owns this and other similar domain names and provides mortgage loan origination services on behalf of Amtrust Funding Services, Inc., a Florida corporation since August 2002 and a Licensed Correspondent Mortgage Lender located at 215 Lithia Pinecrest Road, Brandon, Florida 33511, Hillsborough County, Florida. Respondent has for years and still provides bona fide mortgage loan origination services on behalf of Amtrust Funding Services, Inc., a Florida corporation since August 2002 and a Licensed Correspondent Mortgage Lender located at 215 Lithia Pinecrest Road, Brandon, Florida 33511, Hillsborough County, Florida. Respondent has for years been commonly known as AMTRUST.US and AMTRUSTDIRECT.COM providing bona fide mortgage loan origination services on behalf of Amtrust Funding Services, Inc.

8. Registered or used in bad faith. Respondent has been in the mortgage business for many years and has provided bona fide mortgage loan origination services on behalf of Amtrust Funding Services, Inc., a Florida corporation and a Licensed Correspondent Mortgage Lender located at 215 Lithia Pinecrest Road, Brandon, Florida 33511, Hillsborough County, Florida. The domain name at issue directly relates to the company name Amtrust Funding Services, Inc. and the identical Florida Correspondent Mortgage Lender License.

FINDINGS

The Panel finds that Complainant has not met its burden of proof under the ICANN Policy. Furthermore, it appears that while the Panel has jurisdiction to determine whether the ICANN Policy has been violated and whether the Complainant is entitled to relief thereunder, it appears that this matter is largely a question of whether Respondent is a junior user of a trademark claimed by Complainant, which is inappropriate to determine in an ICANN proceeding. This dispute is outside the Policy’s scope because it centers on interpretation of trademark law. See Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”); AutoNation Holding Corp. v. Alawneh, D2002-0581 (WIPO May 2, 2002) (“[A]ssertions [of trademark infringement] are entirely misplaced and totally inappropriate for resolution through an ICANN proceeding. The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else."). But see Estate of Brando v. thewordbank twb, FA 505502 (Nat. Arb. Forum Aug. 16, 2005)

DISCUSSION

Complainant’s Claims of Trademark Infringement. To the extent that this dispute involves the question of whether Respondent is a junior user of Complainant’s trademark, is using the mark without Complainant’s consent and is violating Complainant’s trademark rights, it is outside the Policy’s scope because it centers on interpretation of trademark law. See Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”); AutoNation Holding Corp. v. Alawneh, D2002-0581 (WIPO May 2, 2002) (“[A]ssertions [of trademark infringement] are entirely misplaced and totally inappropriate for resolution through an ICANN proceeding. The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else."). But see Estate of Brando v. thewordbank twb, FA 505502 (Nat. Arb. Forum Aug. 16, 2005).

Complainant’s Claims of ICANN Policy Violation. 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 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 or is being used in bad faith.

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

Identical and/or Confusingly Similar

Complainant asserts its trademark registration for the AMTRUST mark to establish its rights. The Panel accepts this as evidence of its rights pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

The Panel finds that the <amtrust.us> domain name is identical to Complainant’s AMTRUST mark because the addition of the “.us” top-level domain does not signficantly distinguish the domain name from the mark. See 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 the complainant’s TROPAR mark).

Rights or Legitimate Interests

The Panel finds that Respondent does have rights and legitimate interests in <amtrust.us> because it is using and was using the domain name, prior to notice of this dispute, to make a bona fide offering of goods or services pursuant to ¶ Policy ¶ 4(c)(ii). Respondent argues that it has traded under the “Amtrust” name since 2002 to originate and market mortgages. It offers its Florida “Doing Business As” registration as proof of its business and identity; its Florida Correspondent Mortgage Lender License. The Panel finds that Respondent has demonstrated that it is using the <amtrust.us> domain name to make a bona fide offering of a service pursuant to Policy ¶ 4(c)(ii). See AmeriCares Found., Inc. v. Ewing, D2003-0347 (WIPO June 26, 2003) (finding that the <americare.org> domain name was used in a bona fide manner since respondent registered the domain name on behalf of AmeriCare MedServices, which had been using the “AmeriCare” name in business for seven years prior to the dispute); Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (stating that by September 1999, when first approached by the Complainant, the Respondent or its predecessors had used the <bankinternet.com> website for almost 4 years, thus demonstrating “a bona fide offering of goods and services”).

The Panel finds that Respondent has demonstrated that it is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1, 2000) (finding that the respondent was commonly known by the <six.net> and <sixnet.com> domain names even though the complainant had registered the SIXNET trademark because the respondent demonstrated that its customers associated the respondent’s company with the domain names); cf. Penguin Books Ltd. v. Katz, D2000-0204 (WIPO May 20, 2000) (“It is reasonable for someone to register a domain name based on a nickname such as ‘Penguin,’ and it follows that the Respondent had legitimate interests in that name. It is not for this Administrative Panel to decide on whether such use would in any way infringe any intellectual property rights of the Complainant and this must be left to other fora.”).

Registration or Use in Bad Faith

Respondent asserts that it has not registered the disputed domain name to specifically target Complainant. The Panel finds that Respondent does not have the demonstrated specific intent required to evidence bad faith. See U.S. Nutraceuticals, LLC v. Telepathy, Inc., FA 365884 (Nat. Arb. Forum Jan. 17, 2005). Respondent did not register or use the disputed domain name in bad faith. See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that a respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest); see also DJF Assocs., Inc. v. AIB Commc’ns., FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding a respondent has shown that it has a legitimate interest in the domain name because the respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute).

Respondent has also offered evidence of innumerable businesses in Florida using the term, “Amtrust,” in their business names. It appears, therefore, that this particular term is of common usage among businesses ranging from insurance, financial services and banking, to mortgages. While Complainant’s trademark may not be generic, the term is of such common use in the state where Respondent conducts business and where Complainantt does not do so, that it is difficult to conclude that there was a deliberate attempt to confuse on Respondent’s part and register the domain in bad faith.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Dated: January 25, 2006