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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boardwalk Bank v. Patrick Thorogood
Case No. D2000-0213
1. The Parties
Complainant is Boardwalk Bank, a New Jersey corporation with a place of business at 201 Shore Road, Linwood, NJ 08221, U.S.A. (Boardwalk). Respondent is Patrick Thorogood, with an address at 300 Norwood, Deal, NJ 07723, U.S.A. (Thorogood).
2. Domain Name and Registrar
The domain name in issue is "BOARDWALKBANK.COM". The registrar is Network Solutions, Inc.
3. Procedural History
On March 27, 2000, Boardwalk transmitted a copy of its complaint to Thorogood by electronic mail and Federal Express (Complaint, Paragraph 17).
The WIPO Arbitration and Mediation Center (the Center) received Boardwalk’s complaint on March 28, 2000, (electronic version) and on March 30, 2000, (hard copy version). The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Boardwalk made the required payment to the Center. The formal date of the commencement of this administrative proceeding is April 4, 2000.
The complaint (Paragraph 7) provides the following contact information regarding Thorogood:
C/o Tucker Anthony
623 River Road
Fair Haven NJ 07704
fax (732) 747-2078
On March 29, 2000, the Center transmitted via email to Network Solutions a request for registrar verification in connection with this case. On April 3, 2000, Network Solutions transmitted via email to the Center Network Solutions’ Verification Response, confirming (a) the registrant is Thorogood, at "300 norwod, DEAL, NJ 07723, US," (b) the administrative contact and billing contact is Thorogood, (c) "Network Solutions’ 4.0 Service Agreement is in effect," and (d) "The domain name BOARDWALKBANK.COM is in ‘Active’ status."
On April 4 and 5, 2000, the Center transmitted Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, via post/courier (April 5), facsimile (April 5), and email (April 4), to Thorogood, and via email (April 4) to counsel for Boardwalk. The Notification stated that the Policy "is incorporated by reference into your Registration Agreement with the Registrar of your domain name, pursuant to which you are required to submit to and participate in a mandatory administrative proceeding ...".
On April 7, 2000, the Center received an email from Thorogood inquiring:
"... how can a proceeding commence against me based upon the policy adopted on oct. 24th 1999 when 5mths earlier on may 20th 1999 (date i registered name in dispute) no such law existed ... please respond."
On April 10, 2000, the Center responded via email:
"According to the Registrar, the dispute policy terms of your agreement may be modified, upon 30 days notice. It is our understanding that your Registrar sent such a notice which indicated it would apply the UDRP and that its registrants would be subject to the dispute resolution policy in effect at the time of the dispute."
On April 25, 2000, the Center advised Thorogood and Boardwalk via email of the receipt on April 19, 2000, of Thorogood’s response to the complaint.
On May 8, 2000, the Center advised Thorogood and Boardwalk via email that David W. Plant, Esq. had been appointed as the panelist in this proceeding.
4. Factual Background; Parties’ Contentions
a. The Trademarks
The complaint avers (Paragraph 12, 4th page) that Boardwalk has adopted "BOARDWALK" and "BOARDWALK BANK" as its service marks.
b. The Factual Contentions of the Parties
Because the parties address the relevant events in relative detail in their respective pleadings, i.e. the complaint and the response, we first set out here a rough chronology of events gleaned from the complaint and from the response. Next, we set out the parties’ contentions in light of the averments as to the relevant events.
i. Relevant Events
During "its organization in early 1999," Boardwalk adopted the name and service mark "Atlantic Bank" for its Internet and community banking services (Complaint, Paragraph 12, 4th page).
In about April 1999, Boardwalk changed its name to "Boardwalk Bank" and adopted the two service marks here in issue (Complaint, Paragraph 12, 4th page).
Boardwalk avers this change was to satisfy requirements of state banking regulators and to move away from use of the term "Atlantic" "which is common in the banking field" (Id.).
Thorogood responds (Response, page 5):
"How would complainant provide Internet banking services under the name Atlantic Bank when that name had been in use by another bank since 1996."
Thorogood refers to his Exhibit A, a Network Solutions WHOIS printout, which shows "atlanticbank.com" was registered October 25, 1996, by Atlantic Bank in South Portland, Maine.
Since April 1999, (a) Boardwalk has taken steps to make its name and service marks known to "the relevant financial professionals and public," (b) Boardwalk’s regulatory filings have been under the name "Boardwalk Bank", and (c) Boardwalk has answered its telephone as "Boardwalk Bank" (Complaint, Paragraph 12, 4th page).
Thorogood responds (Response, page 6):
"It is now spring of 2000 and this ‘Internet Bank’ can not be found on the search engine Yahoo. (see exhibit B) In addition this ‘Internet Bank’ has apparently never bothered to register with any of the online Internet Bank directories. (see exhibit C)."
In April 1999, Boardwalk posted the following announcement on the Internet:
"BOARDWALK Internet and Community Bank. Welcome to the virtual branch of Boardwalk Bank. We are putting the finishing touches on our Grand Opening Event. Please check back soon." (Complaint, Paragraph 12, 4th page)
On April 26, 1999, Boardwalk submitted the "Boardwalk Bank" name to the Department of Banking in New Jersey (Complaint, Paragraph 12, 4th page).
On May 18, 1999, Boardwalk’s "advertising agency and website developer" informed Boardwalk Bank that the domain name "boardwalkbank.com" was available (Complaint, Paragraph 12, 5th page).
Thorogood responds (Response, pages 6 - 7):
"Complainant seems to suggest that an ‘Internet Bank since early ‘99’ would wait until 5/18/99 to ascertain whether the all important domain name was available and then when informed of its availability waited at least 3 days before determining that it was worth the $70.00 fee to secure the name. Finally, not until the last week in June (5 weeks later) did Boardwalk Bank, the ‘Internet Bank since early ‘99’ determine that maybe they should of [sic] spent the $70.00 on 5/18/99. I surely wish they had."
On May 20, 1999, Thorogood registered BOARDWALKBANK.COM with Network Solutions (Complaint, Exhibit A; Response, page 6).
At an unspecified date, after receiving instructions from Boardwalk Bank, "the website developer" tried to register the domain and was informed that Thorogood had registered the domain name (Complaint, Paragraph 12, 5th page).
On May 27, 1999, the Bergen County Record published an article announcing the change of name from "Atlantic Bank" to "Boardwalk Bank" (Complaint, Paragraph 12, 4th page). A copy of the article appears at Exhibit C to the complaint. It states in part:
"... Boardwalk Bank, a start-up in Linwood, near Atlantic City."
"Devlin [Boardwalk’s CEO] said he was forced to rename the yet-to-be-opened bank after he got a call from ... Atlantic Bank in New York ...".
* * *
"Two weeks ago [sic], Devlin and his management team settled on Boardwalk Bank, which is similar to the name of a fondly remembered local bank that was bought out ... years ago."
Thorogood notes (Response, page 6) that he had registered the domain name one week prior to the newspaper article.
On about June 24, 1999, Boardwalk was informed by "its advertising firm" that Thorogood had registered the domain name (Complaint, Paragraph 12, 5th page).
On June 28, 1999, Boardwalk applied to the U. S. Patent and Trademark Office to register the service marks "Boardwalk" and "Boardwalk Bank" (Response, Exhibit E).
At an unspecified time (but apparently before July 20, 1999), Devlin telephoned Thorogood (Complaint, Paragraph 12, 5th page). Thorogood reportedly stated he was "wondering when he would receive a call" from Boardwalk (Id.). Devlin asked Thorogood what he intended to do with the domain name (Id.) Thorogood allegedly answered he had seen an announcement of the change from "Atlantic Bank" to "Boardwalk Bank", and "when checking the availability of the name, was surprised that it had not been registered as a domain name," and therefore decided to register the domain name "for Boardwalk Bank" (Id.). Allegedly, Thorogood stated there would be no problem in transferring the domain name to Boardwalk on the implied condition that Boardwalk does some brokerage business and transactional work with Thorogood (Id.). Devlin allegedly advised Thorogood that Devlin was not interested in discussing the brokerage business and that Devlin would have Boardwalk’s attorney call Thorogood to arrange for the forms for transfer (Id.).
Thorogood responds (Response, page 7):
"It is true that I saw an announcement regarding Boardwalk Bank sometime in June ‘99. I wondered at that time (weeks after I registered the name) when I would be contacted by the bank. I never contacted the bank, nor made any attempts to do so until I was contacted by Mr. Devlin sometime near the end of June ‘99.
"It is true that I answered Mr. Devlin that transferring the name would not be a problem as I have never sold nor transferred any domain names to anyone at any time. It is true I never offered to sell this name nor any other domain name to anyone at anytime. Mr. Devlin was not interested in creating any goodwill."
Also at an unspecified time (probably in June or July 1999), Boardwalk’s attorney, Karol Kepchar, telephoned Thorogood and informed Thorogood of "Boardwalk’s rights in the ‘BOARDWALK BANK’ mark and name under the law" (Complaint, Paragraph 12, 5th page). Kepchar allegedly stated that Boardwalk was prepared to be accommodating and was willing to pay Thorogood’s out of pocket expenses incurred in registering the domain name in exchange for the domain name to Boardwalk (Id.). Thorogood allegedly became angry and terminated the conversation (Id.).
Thorogood responds (Response, page 8):
"Karol Kepchar did telephone me regarding the law and informed me that its [sic] a crime in N.J. to be a ‘bank without a license.’ At no time during that conversation did Ms. Kepchar verbally, nor in writing communicate to me that they were ‘prepared to be accommodating’ and were willing to pay me the actual out of pocket expenses ($119.00). It was not until I failed to sign the release that I conveyed to Mr. Devlin his lack of consideration in neglecting to at least offer the $119.00 for the inconvenience."
On about July 20, 1999, Devlin called Thorogood "again .. at the place of his new employer" (Complaint, Paragraph 12, 6th page). Thorogood allegedly stated he would not transfer the domain name under any circumstances (Id.).
Thorogood responds (Response, page 8):
"Having been harassed and threatened by Devlin and Kepchar for 3 weeks straight, including but not limited to; letters to N.J. Banking Commission accusing me of committing felonies; and certified letter to my new place of employment alleging crimes and other misdoings, I came to the conclusion that I would not have any further dealings with either of the above."
In an undated (circa July 16), hand-written note addressed to a "Michael Sheridan" (Complaint, Exhibit D), Thorogood apparently wrote, inter alia:
"I buy domain names through Network Solutions as a hobby. I have never attempted to profit from my hobby. I have not created any web sites of any kind for any of the domain names that I own.
"I believe I have legally registered approximately 18 domain names with the word ‘Bank or banker or banking or trust’ in the domain name. ... I have never used the domain name boardwalkbank.com in any form or fashion.
* * *
"Mr. Michael Devlin & his counsel Karol Kepchar have harassed me repeatedly in to giving them my legally registered domain name ... without any reimbursement ($119.00 registration cost). They were so rude and obnoxious to me that I’m inclined to sit on this legally registered domain name & combine it with other Monopoly [sic] board game names ie (ParkplaceBank.com) ... ."
Thorogood contends (Response, page 9) Boardwalk misleadingly paraphrased a portion of the last paragraph quoted above as "part of a pattern of distorting the facts to fit the fiction." Thorogood continues that his
"... plan for boardwalkbank.com was to combine it with other monopoly board names such as parkplacebank.com, communitychestbank.com, etc. The marketing of non-legal tender currency or cybercash could be then used through these sites (i.e. monopoly money) that could later be exchanged for coupons or other marketing promotions."
As of July 23, 1999, Thorogood had registered the following domain names, inter alia, in addition to the domain name in issue here (Complaint, Exhibit E):
On about July 28, 1999, Boardwalk launched its community banking services (Complaint, Paragraph 12, 5th page).
On August 2, 1999, Boardwalk commenced an action against Thorogood in the United States District Court for the District of New Jersey for trademark infringement (Complaint, Paragraph 16, 7th page, and Exhibit F).
On October 25, 1999, Boardwalk launched its Internet banking services at "boardwalkbank.net" (Complaint, Paragraph 12, 5th page).
ii. Summary of Contentions in Light of Foregoing Events
Boardwalks’s Contentions and Thorogood’s Responses --
Boardwalk contends that Thorogood’s registration agreement with Network Solutions incorporates the Policy (Complaint, Paragraph 10, 3d page) 1.
Thorogood contends (Response, Paragraph 9.a., page 4):
"I agree to be bound by any applicable regulations that were in place and current at the time I registered the domain name on May 20th 1999."
Boardwalk contends (Complaint, Paragraph 12, 4th and 5th pages):
"As a result of Boardwalk Bank’s efforts, the relevant banking regulators and public have come to recognize ‘Boardwalk Bank’ as a mark and name of Boardwalk Bank, and no other person or entity. Such recognition accrued even before Boardwalk Bank opened its door to the public and began providing banking services over the Internet."
Thorogood does not specifically address this contention.
Boardwalk contends also (Complaint, Paragraph 11, 3d and 4th pages; Paragraph 12, 6th page):
(1) The domain name is identical or confusingly similar to a service mark in which Boardwalk has rights.
Thorogood contends Boardwalk did not file a trademark application until six weeks after he registered the domain name (Response, page 4), and "there are scores of trademark names (360) filed prior to complainants [sic] registration that are ‘confusingly similar in sound, appearance, meaning, and connotation of the Boardwalk and Boardwalk Bank marks’ (see exhibit E)." Exhibit E includes copies of U. S Trademark Electronic Search System printouts regarding Boardwalk’s applications to register with the U. S. Patent and Trademark Office "Boardwalk Bank" and "Boardwalk" as service marks. Those printouts refer, e.g., to "Record 20 out of 360". Other pages refer to "BoardWALK", a volunteer leadership training program, "Boardwalk Financial Services, Inc.", and "Boardwalk Financial Corporation".
(2) Thorogood has no rights or legitimate interests in respect of the domain name.
Thorogood avers he has legitimate interests in every domain name he ever registered (Response, page 5).
Thorogood further challenges (Response, pages 11 - 12) Boardwalk’s averments as to (a) Thorogood having no rights or legitimate interests and (b) the domain was registered and is being used in bad faith, as follows:
"In sum, Respondent has rights and legitimate interests in respect to any domain name registered legally and Respondent has never ‘used the domain name comprising its mark and name;’ Respondent has not used bad faith because Respondent did not know of Boardwalk Bank when he registered the name. Respondent further demands that complainant proves [sic] the allegations that respondent ‘proceeded to register the name for no other purpose than to sell, rent, or otherwise transfer the domain name registration to Boardwalk Bank or a competitor of Boardwalk Bank.’"
"Complainant alleges respondent has a business consisting of 75 domain names that respondent registered for no other purpose than to be used in bad faith. Why then has no other intended victim of bad faith identified themselves? And: because the other 74 names were not registered with ‘no other purpose that [sic] to sell (never happened) rent or otherwise transfer (never happened)’."
"The bad faith has always been generated from the side of Complainant. Complainant has lied from the beginning about its origins of its ‘Internet Bank.’ All relevant and verifiable facts suggest a bank ignorant and oblivious to the Internet. Note attached exhibits proving a non-existent Internet presence even to this date." Thorogood then reviews the "absurd time line" followed by Boardwalk with regard to ascertaining whether or not its name was available for registration as a domain name.
(3) The domain name was registered and is being used in bad faith.
In addition to the foregoing assertions, Thorogood avers that Boardwalk "alleges the mere fact that I own many hypothetical self created domain names with the word bank in it [sic] constitutes bad faith. In addition to Boardwalkbank.com I also own Parkplacebank.com, NJBanks. com, NYBanks.com, and estatebanking.com among others" (Response, page 5).
Boardwalk contends further (Complaint, Paragraph 12, 6th page):
(4) Thorogood does not currently provide banking services and has never provided banking services.
Thorogood appears to agree that he has never used the domain name in issue as a web site.
(5) Thorogood is not currently authorized under the applicable banking regulations to conduct business using the term "Bank" and has not applied to do so.
Thorogood does not specifically address this contention.
(6) Thorogood registered "BOARDWALKBANK.COM" with knowledge of "Boardwalk Bank", with the expectation he could exchange the domain name for services he hoped to provide to Boardwalk.
Thorogood responds (Response, pages 9 - 10):
"Has anyone at anytime offered any proof that ‘respondent registered the boardwalkbank.com domain name with knowledge of Boardwalk Bank?’ Has anyone at any time offered any proof that respondent has ever had ‘the expectation that he could exchange the domain name for services he hoped to provide to Boardwalk Bank[’] or any other bank. I repeat, I have never exchanged, sold, nor bartered any domain name with anyone at any time."
(7) Thorogood has refused to transfer the domain name and has demanded payment of $10,000.
Thorogood responds (Response, pages 10 - 11):
"The pattern of deceit continues." The $10,000 number arose in response to an inquiry by the judge in the New Jersey Federal Court. "I do recall receiving a phone call from someone (who never acknowledged his official capacity in regard to this matter, see exhibit D [two telephone message slips]) who said something to the affect [sic] of ‘What would it take to resolve the Boardwalk Bank issue?’ I responded that what I told the federal judge in our only courtroom appearance still stands despite the fact that many more days have been lost from this ordeal."
(8) Thorogood has registered more than 75 domain names.
See page 12 of Thorogood’s Response quoted supra, pag
(9) Boardwalk has not agreed or consented to Thorogood’s use or registration of a domain name comprising its mark and name.
Thorogood does not challenge this contention.
(10) Thorogood registered the domain name for no other purpose than to sell, rent or otherwise transfer the domain name registration to Boardwalk or a competitor of Boardwalk.
See Thorogood’s pages 9 - 10 and 12 of Thorogood’s Response, summarized in his words supra.
(11) Thorogood has refused to cooperate with Boardwalk to resolve the instant domain name dispute.
See Thorogood’s various contentions, summarized above, as to communications between Boardwalk’s representatives and Thorogood.
Boardwalk avers (Complaint, Paragraph 16, 7th page) a decision in this proceeding may permit Boardwalk to forego seeking further relief in Federal court in the United States.
Boardwalk requests that the domain name be transferred to Boardwalk (Complaint, Paragraph 13, 7th page).
Thorogood’s Contentions –
Thorogood challenges (Response, page 5) Boardwalk’s averment (Complaint, Paragraph 12, 4th page) that it is an Internet Bank, as follows:
"The prior administrative actions by complainant would suggest something other than an Internet Bank. Question: Would an Internet Bank that posted an announcement on the Internet in April 1999 wait until May 18th 1999 to determine if the domain name was available? I think not."
Thorogood further challenges (Response, page 13) Boardwalk’s contentions, as follows:
" ... the Internet part of this ‘Internet and Community[’] bank was nothing more than a [sic] after thought that the bank now wishes to address."
Thorogood lists four "wishes" Boardwalk has:
Boardwalk wishes it had registered "the name" before Thorogood.Boardwalk wishes it had filed its trademark registration before Thorogood’s registration.
Boardwalk wishes Thorogood had previously sold or transferred domain names.
Boardwalk wishes "law signed in the fall of ‘99" [the Policy] was the law on May 20th, 1999.
In addition, Thorogood avers (Response, pages 13 - 14) that approximately 10 banks began operation in New Jersey within one year of Boardwalk’s commencement, and less than half have a domain name that is the same as their "traditional bank". Thorogood adds that Boardwalk’s use of its name a few days before Thorogood registered the domain name "does not give Complainant a permanent reserve pass on the domain name BoardwalkBank.com."
Thorogood adds (Response, page 14):
"My interpretation is that until I generate revenue from my Internet marketing ideas, the IRS says it is a hobby, not a business."
"I have many, many marketing ideas for all domain names but until I determine the best course of action I maintain my right that property bought legally by me prior to any domain name registration and prior to any trademark applicant can not forcibly be taken from me."
"I have proved the fact that it was both possible and probable that the domain Boardwalkbank.com could be registered by someone without any prior knowledge of Boardwalk Bank (the complainant). I refer to the registration of Boardwalkbank.org that was registered by someone not affiliated by the bank (exhibit F) one week prior to my registration." 2
5. Discussion and Findings
Paragraph 4.a. of the Policy directs that Boardwalk must prove, with respect to each domain name in issue, each of the following:
(i) The domain name in issue is identical or confusingly similar to the corresponding Boardwalk service marks, and
(ii) Thorogood has no rights or legitimate interests in respect of the domain name, and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4.b. of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4.a.(iii) above shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.c. of the Policy sets out three illustrative circumstances which, if proved by respondent, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4.a.(ii) above.
a. Identity or Confusing Similarity
Boardwalk bears the burden to prove this element, as well as the other two elements, set out in Paragraph 4.a. of the Policy. Boardwalk urges that the domain name in issue is "identical and/or confusingly similar to the "BOARDWALK BANK" mark and name. Thus, Boardwalk must prove either identity or confusing similarity between the domain name in issue and a Boardwalk service mark.
The significant portion, i.e. BoardwalkBank, of the domain name is issue is undeniably identical with the alleged service mark and name of Boardwalk.
Moreover, on its face, the domain name is for purposes of this dispute confusingly similar to the Boardwalk service marks. The domain name in issue suggests a web site that the ordinary consumer would likely believe was operated or sponsored by Boardwalk or otherwise affiliated with Boardwalk. It is immaterial that Boardwalk was less than sophisticated, apt, and timely in establishing a web site under its service marks or trade name. The issue here is whether or not the domain name in issue is identical with or confusingly similar to Boardwalk’s service marks. Accordingly, the ordinary consumer would likely believe that, if the consumer were to visit the web site, whatever services or information were (or were not) provided at the BOARDWALKBANK.COM web site were (or were not) provided by or with the approval of Boardwalk.
That other organizations have used "Boardwalk", or a variant, as trademarks or trade names (see Response Exhibit E) is alone not sufficient to detract from the conclusion of identity and confusing similarity between the domain name in issue and Boardwalk’s service marks. At best, from Thorogood’s standpoint, such other uses may affect the strength and reach of Boardwalk’s service marks. Such uses do not, on this record, invalidate the service marks.
If Thorogood’s averments as to the date of Boardwalk’s applications to register its service marks are meant to challenge Boardwalk’s right to "Boardwalk" and "Boardwalk Bank" as service marks, Thorogood misses the target. In the United States, rights in trademarks and service marks arise primarily through use, not only registration. It is not disputed that Boardwalk uses "Boardwalk" and "Boardwalk Bank" as service marks. It is also not disputed that Thorogood has not used either mark in commerce in a conventional trademark sense. As far as use for trademark purposes is concerned, on this record, Boardwalk was first vis-a-vis Thorogood.
b. Rights or Legitimate Interests
On this record, it is plain that Thorogood has had no rights or legitimate business interest in the domain name in issue. Thorogood has acquired and registered dozens of domain names, some of which are identical or closely similar to names of banks. Asserting that he is holding these domain names as a hobby in light of IRS requirements in no way supports Thorogood’s contention that he is collecting and holding the domain names, including the domain name here in issue, for legitimate reasons. This unsupported explanation neither excuses nor justifies his conduct.
It is much more likely, as reflected in the parties’ averments as to their 1999 telephone conversations and in Thorogood’s own business interests as a stock broker, that Thorogood acquired this domain name, as well as others, for the purpose of transferring those domain names to the owners of the corresponding trademarks in return for money or a business relationship -- here, for example, either $10,000 or a relationship in which Thorogood would perform services for Boardwalk for remuneration.
Thorogood’s speculations as to hypothetical and ill-defined marketing ideas (e.g. Thorogood’s idea to generate cybercash) do not demonstrate any right or legitimate interest of Thorogood in the domain name in issue here, at least vis-a-vis Boardwalk.
Also, that a Mr. Gittleman, apparently from New Jersey, registered the same domain name in ".org", on May 13, 1999, a week before Thorogood registered the domain name in ".com", does not avail Throrogood. It may suggest only that Thorogood was not alone in attempting to benefit from "Boardwalk Bank". Mr. Gittleson’s activities in no respect justify Thorogood’s registration vis-a-vis Boardwalk.
In light of the record here, it is clear that Thorogood has no rights or legitimate interest in the domain name BOARDWALKBANK.COM.
c. Bad Faith
Registration and use of the domain name in issue in bad faith are matters of the appropriate inferences to draw from circumstantial evidence. Boardwalk must prove both registration in bad faith and use in bad faith.
Notwithstanding Thorogood’s protests to the contrary, it defies reason to conclude that Thorogood registered the domain name in issue here with absolutely no knowledge of Boardwalk and its efforts to enter the banking market in New Jersey. Thorogood surely was informed about Boardwalk’s activities in the regular course of his business activities, especially in light of the undenied and unchallenged averments of Boardwalk that (1) Thorogood dealt with banks in his brokerage business, and (2) Thorogood asserted that transferring Thorogood’s registration to Boardwalk would be no problem so long as Boardwalk used Thorogood’s services.
It is entirely reasonable to conclude that Thorogood acquired and held registrations in this and other domain names solely for the purpose of enabling him to parlay his registrations into business opportunities by way of transfers of the registrations for consideration. COMMUNITYBANK.COM, NJBANKSTOCK.COM, NJBANK.COM, OYSTERBAYBANK.COM, NYBANK.COM, NYAPPLEBANK.COM, and GLENHEADBANK.COM are not the acquisitions of a mere hobbyist who simply wants to exhibit his domain name registrations as monuments to his ingenuity with no intent of utilizing them to advance his brokerage or other business interests.
d. Paragraph 4.c. Factors
With respect to each domain name in issue, Thorogood has failed to prove any of the three circumstances set out in Paragraph 4.c. of the Policy. Indeed, the facts relevant to each factor cut against Thorogood, viz.:
(i) Before any notice by Boardwalk to Thorogood of the dispute, Thorogood’s use of or preparations to use the domain name was not in connection with a bona fide offering of goods or services. Indeed, Thorogood agrees that he has never used the domain name in issue as a website or made any other use of the domain name.
(ii) Thorogood or a related entity has not been commonly known by the domain name. Thorogood has made no attempt to establish that the contrary is so.
(iii) Thorogood is not making legitimate noncommercial or fair use of the domain name, "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." From Thorogood’s own averments, it is difficult to envision as legitimate, fair or innocent Thorogood’s "hobby" of acquiring and holding domain names which are identical to names of pre-existing, active businesses and organizations. Indeed, at page 14 of his response, Thorogood makes it plain that it is a matter of his determining "the best course of action" before he generates revenue from his Internet marketing ideas -- none of which has advanced beyond the speculative, germinal stage. This is not a legitimate or fair use.
e. Jurisdiction and Applicability of the Policy
Thorogood misreads his agreement with Network Solutions. This record reveals that Network Solutions, pursuant to the relevant provisions of its agreement with Thorogood, advised Thorogood that the Policy, adopted on October 24, 1999, applied to Thorogood (Center’s April 10, 2000 email to Thorogood). Thorogood has agreed to participate and has participated. Thorogood’s Network Solutions agreement and Thorogood’s performance under the agreement confirm that the Policy applies. This Panel clearly has jurisdiction of this dispute.
The panel has jurisdiction of this dispute.
In light of the foregoing, the Panel decides that (a) the domain name BOARDWALKBANK.COM registered by Thorogood and in issue here is both identical with and confusingly similar to the corresponding service marks of Boardwalk, (b) Thorogood has no rights or legitimate interests in respect of the domain name in issue, and (c) the domain name in issue has been registered and is being used in bad faith by Thorogood.
Accordingly, the Panel requires that the registration of the BOARDWALKBANK.COM domain name be transferred to Boardwalk.
David W. Plant
Dated: May 20, 2000
1. Boardwalk contends that a copy of "the Policy" is at Exhibit B to the complaint. In fact, Network Solutions Service Agreement Version Number 5.0 is at Exhibit B. Network Solutions has advised the Center that Version 4.0 is the applicable agreement. Boardwalk quotes from Section 8 of the Exhibit B Agreement (Complaint, Paragraph 10, 3d page). In fact, because Thorogood registered the domain name in issue here before the Policy became effective, Sections 9 and 10 of the Agreement are the relevant provisions, assuming these two Sections are the same in Versions 4.0 and 5.0 of the Agreement. Section 9 of the Agreement at Exhibit B provides that Thorogood agrees that Network Solutions may modify "our dispute policy" by posting "such revised policy on our Web site at least thirty (30) calendar days before it becomes effective." Section 10 provides that Thorogood "will be subject to the provisions specified in our dispute policy in effect at the time of the dispute [not the time the domain name was registered]." (See also April 10, 2000 email from the Center to Thorogood, supra.)
2. Exhibit F comprises a print out from Network Solutions’ WHOIS database, showing that a "Bruce Gittleman" of Somers Point, NJ, registered "boardwalkbank.org" on 13 May 1999. Nothing in this record illuminates the question as to what Mr. Gittleman knew about Boardwalk Bank on May 13, 1999 or his motive in registering "boardwalkbank.org