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WIPO Domain Name Decision: D2000-1771
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WIPO
Arbitration and Mediation Center
ADMINISTRATIVE
PANEL DECISION
FleetBoston
Financial Corporation v. Jung Y. Lee
Case No.
D2000-1771
1. The Parties
The Complainant is
FleetBoston Financial Corporation, with a place of business at 100 Federal
Street, Boston, Massachusetts 02110, U.S.A.
The Respondent is Jung
Y. Lee, with an address at R. Camomil 157, Pari, Sao Paulo, SP 03032-010, Brazil
2. The Domain Name and
Registrar
The domain name in
dispute is <fleetbostonfinancial.com>. The Registrar is Network
Solutions, Inc.
3. Procedural History
a) The Center
received Complainant's Complaint by e-mail on December 19, 2000, and by
hard copy on December 21, 2000. The Center, by an e-mail message to Network
Solutions, Inc., then sought verification of specific facts relevant to
the domain name registration from Network Solutions, Inc., and was informed,
inter alia, that according to the Registrar’s records, "the domain
name registration is currently in litigation and is under the control
of the United States District Court for the District of Massachusetts."
By letter of January
4, 2001, the Center advised Complainant that the Complaint was deficient
in that the domain-name holder did not submit in its Registration agreement
(NSI Service Agreement 4.0) to the jurisdiction of the court at the location
of the principal office of the Registrar for adjudication of disputes
concerning or arising from the use of the domain name, - and that accordingly,
Complainant had to submit, with respect to any challenges to a decision
in the administrative proceeding cancelling or transferring the domain
name, to the jurisdiction of the court at the location of the domain-name
holder’s address, as specified in the Rules, Para 1 and Para 3(b)(xiii).
By amendment dated
January 8, 2001, Complainant agreed to submit, only with respect to any
challenge that may be made by Respondent to a decision of the Administrative
Panel to transfer or cancel the domain name in dispute, to the jurisdiction
of the Court at Respondent’s address.
After receipt of
the Complaint and the Amendment dated January 8, 2001, in accordance with
paragraph 4(a) of the Rules for the Uniform Domain Name Dispute Resolution
Policy (the "Rules") and paragraph 5 of the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"),
the Center confirmed on January 11, 2001, it had verified that the Complaint
satisfied the formal requirements of the ICANN Uniform Domain Name Dispute
Resolution Policy (the "Policy"), the Rules and the Supplemental Rules,
and further that the payment in the required amount to the Center had
been made by Complainant. The formal date of the commencement of this
Administrative Proceeding is January 11, 2001.
b) On January
11, 2001, Notification of Complaint and Commencement of Administrative
Proceeding was forwarded to Respondent by post/courier with enclosures,
and to its administrative, billing and technical contacts by facsimile
and e-mail without attachments, at the addresses given on the Registrar’s
listing of the domain name. A copy was forwarded to Complainant's representative
at the e-mail address provided in the Complaint.
c) The Notification
of Complaint and Commencement of Administrative Proceeding stated the
formal date of the commencement of the administrative proceeding was January
11, 2001, and that the last day for Respondent to send his Response to
Complainant and to the Center was January 30, 2001, and that in the event
of his failure to file such a Response by the due date he would be considered
in default. In the event of such a default, an Administrative Panel would
still be appointed which would have the discretion but not the obligation
to consider a late filed Response.
d) No response
was received by the Center.
e) On February
2, 2001, by Notification of Respondent Default, the Center notified Respondent
and his administrative, billing and technical contacts and Complainant's
authorized representative, at the respective addresses as above indicated,
that Respondent had failed to comply with the deadline indicated in the
Notification of Complaint and Commencement of Administrative Proceeding
for the submission of his Response.
f) The Center
proceeded to appoint the Administrative Panel, consisting of a single
member, Joan Clark. The Panelist had previously submitted a Statement
of Acceptance and Declaration of Impartiality and Independence to the
WIPO Arbitration and Mediation Center . The projected decision date was
February 27, 2001.
g) On February
14, 2001, the Center forwarded to Complainant and to Respondent Notification
of Appointment of Administrative Panel and projected decision date.
h) By an e-mail
message to the Center dated February 21, 2001, the Panel requested, pursuant
to Rule 12 of the Rules, clarification of issues arising from the allegations
in the Complaint, including the relationship between Complainant and FleetBoston
Corporation.
i) Complainant’s
Further Statement dated March 12, 2001, was forwarded to the Center on
March 13, 2001, and by the Center to the Panel on March 14, 2001. A page
missing from Complainant’s Further Statement, apparently omitted during
transmission, was forwarded to the Panelist on April 19, 2001.
j) The deadline
for forwarding the Panel’s decision was extended to April 27, 2001.
4. Factual Background
and Parties’ Contentions
The Complaint and Complainant’s
Further Statement
Complainant FleetBoston
Financial Corporation describes itself in the Complaint as the eighth largest
financial holding company in the United States with over 181 billion dollars
in assets. It claims to be a global financial company with more than 20,000,000
customers in more than 20 countries and territories around the world, including
customers in the country of Brazil where Complainant and its predecessor
in interest Bank Boston Corporation, have done business for more than 50
years. Complainant asserts that it is highly active in the Brazilian banking
and financial community, and considers itself well-known to the Brazilian
public. This fact appears to be emphasized in view of the fact that Respondent
is located in Sao Paulo, Brazil.
The Complaint also
explains that, since 1982, Complainant and its predecessor in interest have
substantially, continuously and exclusively used, in connection with their
business, the mark FLEET alone and as a component of composite marks incorporating
the word "Fleet".
Complainant states
that, effective October 1, 1999, Bank Boston Corporation merged into and
with Fleet Financial Group, Inc and that the resulting entity was Fleet
Boston Corporation. The Complaint further states that, by a press release
issued by the two merging corporations on March 14, 1999, there was a public
announcement of the impending merger between Fleet Financial Corporation
and Bank Boston Corporation. The announcement stated that the merged entity
would be named "FleetBoston Corporation". Press reports were published beginning
the day after the announcement reporting that the merged entity would do
business under the name "FleetBoston Corporation".
Although the press
release refers to Fleet Financial Corporation, the Panel notes that the
correct name of one of the merging entities was Fleet Financial Group, Inc.
The Complaint further
states that on March 15, 1999, the day following the announcement on March
14, 1999, of the merger of Fleet Financial Corporation and Bank Boston Corporation
which stated the merged entity would be known as FleetBoston Corporation,
Respondent registered the internet domain name <fleetbostonfinancial.com>.
Complainant’s Further
Statement explains that the name of the merged entity Fleet Boston Corporation
was changed to FleetBoston Financial Corporation, the present name of Complainant,
on April 19, 2000.
Complainant asserts
that it is the registered owner of the trademark FLEET, registered in the
United States in 1983 for banking services, and is also the owner of numerous
other trademarks registered over the years since 1983, involving the word
"fleet" as the first component of composite marks incorporating the word
"fleet", for banking, financial, investment and related services. These
trademarks are herein referred to as the Fleet Family of Marks.
The Complaint states
that Complainant owns several other common law trademarks incorporating
the term "FLEET" and that, on June 2, 1999, Fleet Financial Group, Inc.
(prior to the effective date of the merger) applied to register the mark
FLEETBOSTON for banking services and financial services.
The Complaint further
states that on October 25, 1999 (that is after the effective date of the
merger) Fleet Financial Group, Inc. (the merged entity) applied to register
the mark FLEETBOSTON FINANCIAL.
The Panel found no
evidence in the Complaint or documents submitted in support of the Complaint
that Complainant, or indeed any of the other entities referred to such as
Fleet Financial Corporation, Bank Boston Corporation, Fleet Boston Corporation
and Fleet Financial Group, Inc., had used the mark FLEETBOSTON FINANCIAL
prior to Respondent’s registration of the domain name <fleetbostonfinancial.com>.
The particular combination
of "Fleet", "Boston" and "Financial" appears, according to the Complaint
and evidence in support thereof, to have been first used by Respondent in
registration of his domain name.
The Complaint asserts
that the domain name in issue is identical to Complainant’s FLEETBOSTON
FINANCIAL mark and confusingly similar to Complainant’s FLEET mark and Fleet
Family of Marks.
The Complaint also
asserts that Respondent has no rights or legitimate interests with respect
to the FLEET or FLEETBOSTON FINANCIAL marks or the Fleet Family of Marks,
or the domain name <fleetbostonfinancial.com>, and further that there
is no evidence that <fleetbostonfinancial.com> comprises the legal
name of Respondent or a name by which Respondent was commonly known.
The Complaint states
that Respondent did not, prior to the notice of the dispute, use the domain
name or a trademark corresponding to the domain name in connection with
a bona fide offering of goods or services and adds that Respondent
has not made a bona fide non-commercial fair use of the domain name.
The Complaint further
states that the internet domain name in dispute does not currently resolve
to an active web site, and never has. When the domain name is entered into
any commercial internet browser, the Complaint states that a web page appears
that states "Coming soon… we recently registered our domain name at Register.com."
Finally, the Complaint states that Respondent registered the disputed domain
name in bad faith in order to prevent Complainant from reflecting its FLEET
and FLEETBOSTON FINANCIAL marks in a corresponding domain name.
In its overall presentation,
the Complaint lays great emphasis on its trademark FLEET and the Fleet Family
of Marks which Complainant says are well-known and have a strong reputation,
Complainant being one of the largest financial holding companies in the
United States with over 181 billion dollars in assets, over 20,000,000 customers
in more than 20 countries and territories around the world.
The Complaint states
that Complainant has a wide reputation in the word "fleet" in relation to
financial and banking services around the world, and asserts it is not possible
to conceive of a plausible circumstance in which Respondent could legitimately
use the domain name <fleetbostonfinancial.com>.
The Complaint requests
that the disputed domain name <fleetbostonfinancial.com> be
transferred to Complainant.
5. Discussion and Findings
Pursuant to paragraph
4(a) of the Policy, Complainant must prove each of the following in order
that Respondent be required to submit to a mandatory administrative proceeding:
(i) The domain
name in issue is identical or confusingly similar to a trademark or
service mark in which Complainant has rights, and
(ii) Respondent
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 the purpose of
paragraph 4(a)(iii) above, shall be evidence of the registration and use
of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the
Policy sets out three illustrative circumstances, without limitation, each
of which, if proven, shall demonstrate Respondent’s rights or legitimate
interests in the domain name for purposes of paragraph 4(a)(ii) above.
a) Identity or
confusing similarity of the domain name to a trademark or service mark
in which Complainant has rights
The domain name in
issue is: <fleetbostonfinancial.com>.
In the opinion of the
Panel, the suffix ".com" should not be taken into consideration when considering
the identity or confusing similarity of a domain name to a trademark or
service mark.
Complainant is the
owner of the trademark FLEET and numerous other trademarks in which FLEET
is the first and primary component (the Fleet Family of Marks). The marks
are for banking, financial, investment and related services. The first registrations
submitted in evidence by Complainant were registered in 1983.
These trademarks which
include FLEET as the first and principal component are herein referred to
as the Fleet Family of Marks.
The Panel finds that
the disputed domain name is confusingly similar to Complainant’s trademark
FLEET, as well as to its Fleet Family of Marks. "fleet" is the first and
primary component of the disputed domain name, and the third word in the
domain name is "financial" which specifically describes the services for
which FLEET and the Fleet Family of Marks have been registered, two of them
for nearly two decades.
While the insertion
of "boston" as the second component of the domain name is relevant under
criteria 2 and 3 below, the Panel notes that the trademarks and service
marks of Complainant did not include the word "boston" until the effective
date of the merger on October 1, 1999. Accordingly, the Panel is of the
view that the inclusion of "boston" is not a factor to be taken into account
as contributing to the confusing character of the domain name.
It is true that, on
March 14, 1999, a day before Respondent registered the domain name <fleetbostonfinancial.com>,
Complainant’s predecessors in title, the parties to the merger, had announced
that upon the merger, they would be known as Fleet Boston Corporation. However,
they had not as of that time made use of the corporate name or trade name
Fleet Boston Corporation, and therefore their reference to the projected
use of the name Fleet Boston Corporation cannot be taken into account in
a strict interpretation of criterion 1. Similarly, the application on June
2, 1999, by one of the parties to the merger, Fleet Financial Group, Inc.,
to register FLEET BOSTON and later on October 25, 1999, to register FLEET
BOSTON FINANCIAL as service marks in association with banking services,
cannot be taken into account as contributing to the confusing character
of the domain name, since these marks were applied for on the basis of ITU,
that is, as proposed marks with an intention to use and, as such, must be
deemed not to exist as of the date of the filing of the applications.
While the Panel concludes
that the use of "boston" in the domain name does not contribute to the confusing
character of the domain name, the Panel also considers that the word "boston"
does not detract from the confusing character of the domain name.
As the Panel has found
confusing similarity between the domain name in dispute and Complainant’s
registered trademark FLEET and the Fleet Family of Marks, the criterion
of paragraph 4(a)(i) has been met.
b) Rights or legitimate
interests of Respondent in the domain name
According to the evidence
filed by Complainant, there having been no response or evidence filed by
Respondent, the Panel concludes that Respondent has no rights or legitimate
interests in the domain name.
There is no evidence
that Respondent has used or made demonstrable preparations to use the domain
name in connection with the bona fide offering of goods or services.
On the contrary, the web page which appears when Respondent’s domain name
is accessed shows that the web site under this domain name is in preparation
and is "coming soon". Any other written material on the page of that web
site appears to refer to advertisement or promotion of services available
by the Registrar.
There is no evidence
that Respondent has been known by the domain name. Nor is there any evidence
that Respondent is making a legitimate, non-commercial or fair use of the
domain name. In fact, there is no indication that Respondent is making any
use whatsoever of the domain name.
Accordingly, the Panel
finds that there is no evidence that Respondent has any rights or legitimate
interests in the domain name.
The criterion of paragraph
4(a)(ii) of the Policy has therefore been met.
c) Registration
and use of the domain name in bad faith
Paragraph 4(b) of the
Policy contains examples which shall be evidence of the registration and
use of a domain name in bad faith. The examples listed are not limitative,
and do not exhaust the situations in which a Panel may find bad faith.
There is no evidence
which has been submitted to the Panel to the effect that Respondent intended
or attempted to sell his web site to Complainant or to anyone else. However,
the mere fact of the registration by Respondent of a web site which includes
the words "fleet" and "boston" being the first and primary words in the
names of two entities whose merger was announced the day before the registration
of the domain name, indicates an attempt by Respondent to take advantage
of the proposed merger and, if not to offer the domain name for sale, then
to attract to its web site customers who were aware of either or both Fleet
Financial Group and Bank Boston Corporation. It is to be noted that Respondent’s
address is in Sao Paulo, Brazil, a country where Bank Boston Corporation,
one of the merging entities, had done banking business for many years and,
according to the Complaint, was well-known.
The Panel concludes
that the disputed domain name was registered in bad faith. While there is
no indication that it has been actively used, the fact of its continued
existence on the web is a passive use which has been considered in numerous
decisions to constitute use as required by paragraph 4(b) (WIPO Case No.
D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows; WIPO Case
No. D2000-0862 The McGraw-Hill Companies, Inc. v. Amit Dhir). The Panel
has no hesitation in concluding that Respondent was aware of the announcement
of the merger of Fleet Financial Corporation and Bank Boston Corporation,
the merger of same to be initially known as FleetBoston Corporation.
In view of this, the
Panel concludes that Respondent has intentionally attempted to attract internet
users to its web site by creating a likelihood of confusion with Complainant’s
marks, and that the only conceivable purpose of Respondent in so doing was
for commercial gain.
The criterion of paragraph
4(a)(iii) of the Policy has therefore been met.
6. Decision
(1) The Panel
decides, in accordance with the Uniform Domain Name Dispute Resolution
Policy, paragraph 4:
- that the
domain name <fleetbostonfinancial.com> is confusingly
similar to the trademark FLEET and the Fleet Family of Marks of Complainant;
- that Respondent
has no rights or legitimate interests in respect of the domain name;
and
- that it
has been registered and is being used in bad faith.
(2) The Panel accordingly
requires that the domain name <fleetbostonfinancial.com> be transferred
forthwith to Complainant FleetBoston Financial Corporation.
Joan Clark
Sole Panelist
Dated: April
26, 2001