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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Staten Island Bancorp, Inc., and SIB Mortgage Corporation v. Ifg Inc.

Case No. D2003-0384

 

1. The Parties

The Complainants are: Staten Island Bancorp, Inc., and SIB Mortgage Corporation of Staten Island, NY, United States of America; Branchburg, NJ, United States of America, represented by Reed Smith LLP of United States of America.

The Respondent is Ifg Inc., of Mesa, AZ, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <sib-mortgage.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 19, 2003. On May 21, 2003, the Center transmitted by e-mail to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On May 21, 2003, Intercosmos Media Group d/b/a directNIC.com transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 26, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2003. The Response was filed with the Center on May 29, 2003.

The Center appointed Bruce E. O'Connor as the sole panelist in this matter on June 16, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On June 4, 2003, the Center received an additional submission from Complainants. This document has been treated as a Supplemental Filing as further discussed in section 6 of this decision.

 

4. Factual Background

The following facts are in the record and do not appear to be in dispute.

Complainant, Staten Island Bancorp, Inc., was organized in 1997, and is the holding company for SI Bank & Trust, a federally chartered, FDIC insured thrift institution. SI Bank & Trust has sought U.S. trademark protection for the mark SI BANK & TRUST, claiming use since September 2000. Complainant SIB Mortgage Corporation is a wholly owned subsidiary of SI Bank & Trust, and is engaged in the business of mortgage banking. In November 1998, Complainant SIB Mortgage Corporation was formed by SI Bank & Trust as a vehicle to enter the mortgage banking business by acquiring the assets of Ivy Mortgage Corporation.

Complainant SIB Mortgage Corporation advertises its mortgage services using the terms "SIB" and "SIB Mortgage." See Annex 5A to the Complaint. Complainant SIB Mortgage Corporation also operates a Web site at "www.sibware.com,"through which it offers mortgage brokerage services. At that Web site, the terms SIB and SIB Mortgage appear. The services available at that Web site are wholesale mortgage services. See Annex 6 to the Complaint.

Since 1997, Complainant Staten Island Bancorp, Inc. has traded on the New York Stock Exchange using the term "SIB." See Annex 7A to the Complaint. On April 3, 2003, a Google search for the terms "SIB Bancorp" turned up 1,210 hits, the first of which all refer to Complainant Staten Island Bancorp, Inc. See Annex 7 to the Complaint. SI Bank & Trust, a subsidiary of Complainant Staten Island Bancorp, Inc., is a national provider of single-family mortgage loan products.

Respondent registered the domain name <sib-mortgage.com> (the "domain name in dispute") on February 2, 2001. The domain name in dispute is used as part of a URL ("www.sib-mortgage.com") that directs a person using that address to a Web site operated by Respondent.

On December 12, 2002, attorneys for Complainant SIB Mortgage Corporation sent a cease and desist letter to Respondent, alleging that Respondent's use of the domain name in dispute in connection with mortgage services violated the rights of Complainant SIB Mortgage Corporation, and demanding transfer of the domain name in dispute to Complainant SIB Mortgage Corporation. See Annex 9 to the Complaint.

On December 30, 2002, Dave Bellis, the principal of Respondent (who will hereafter be referred to interchangeably with Ifg Inc. as Respondent), responded to this letter, and alleged that he was a former employee of Complainant SIB Mortgage Corporation, and that such Complainant "expressed no dissatisfaction with my use of their trademark or my domain name during my tenure. I discontinued use of their trademark and offered to sell them both the domain name, and the entire web site upon my termination, early this year, but they expressed no interest at that time." See Annex 8 to the Complaint.

Respondent was employed by Complainant SIB Mortgage Corporation beginning on December 26, 2000, as a mortgage loan originator, and received a copy of Complainant SIB Mortgage Corporation's employee handbook. Respondent no longer works for Complainant SIB Mortgage Corporation.

On March 3, 2003, attorneys for Complainant SIB Mortgage Corporation responded to the December 30 letter by a letter taking issue with Respondent's statement that he was a former employee of Complainant SIB Mortgage Corporation (which employment relationship Complainants now concede in their Complaint). This letter also reasserts the demands for Respondent to transfer the domain name in dispute to Complainant SIB Mortgage Corporation. See Annex 10 to the Complaint.

On March 31, 2003, Respondent replied to the March 3, 2003 letter, stating: "Repeated and exhaustive searches of the federal trademark database uncovered no records of 'SIB' or 'SIB Mortgage' as a federally registered trademark;" "Neither your client's web sites nor their printed materials (my employee handbook, for example) that contain 'SIB' or the phrase 'SIB Mortgage' include the '®' or the '™' symbol indicating a registered trademark;" "The fact that your client continues to offer consumer mortgage services on the Internet as 'Ivy Mortgage is wholly a subsidiary of Staten Island Savings Bank' instead of as 'SIB' or 'SIB Mortgage' further undermines your allegations;" "I do concede that Staten Island Savings Bank did some disjointed marketing in the New England area as SIB Mortgage before my web site existed;" "As a result and in a good faith effort to resolve our differences, I've revised my web site carefully since your letter of December 12, 2002. Neither 'SIB' nor 'SIB Mortgage' presently appears anywhere on the site;" "my web site does not offer mortgage services, only free information useful to mortgage consumers." See Annex 8A to the Complaint.

 

5. Parties' Contentions

A. Complainants

1. The Domain Name is Identical or Confusingly Similar to the Complainants' Trademarks

Complainants have sought neither federal nor state trademark registration for the terms SIB and SIB Mortgage. Rather, Complainants contend that they have acquired common law rights in those terms as trademarks, based upon the following allegations and arguments.

Complainant Staten Island Bancorp, Inc. had $6.2 billion in total assets as of March 31, 2002. Since its inception, Complainant SIB Mortgage Corporation has become one of the country's pre-eminent mortgage lenders. In 2001, Complainant SIB Mortgage Corporation achieved $4 billion in loan originations within 42 states. During the first quarter of 2002, Complainant SIB Mortgage Corporation had over 80 locations nationwide and had originated $1.3 billion in loans. For the year 2003, Complainant SIB Mortgage Corporation will spend roughly $1,531,895 to advertise its services under the term SIB Mortgage.

In September 2002, Complainant SIB Mortgage Corporation was named, along with its parent, SI Bank & Trust, to Fortune Magazine's list of 100 Fastest-Growing Companies. See Annex 4 to the Complaint.

Complainant SIB Mortgage Corporation conducts business in some states under the assumed or trade name "Ivy Mortgage," and elsewhere under the name "SIB Mortgage Corp." See Annex 5 to the Complaint.

Complainant Staten Island Bancorp, Inc. is frequently referred to as "SIB" by the press in connection with providing various financial services, including mortgage lending services. As support for this proposition, Complainant Staten Island Bancorp, Inc. points to the Google search results previously mentioned. See Annex 7 to the Complaint.

Complainants, quoting McCarthy on Trademarks and Unfair Competition, argue that the courts recognize that "Americans are prone to abbreviate recognized trademarks and to use nicknames. Such abbreviations and nicknames are just as entitled to legal protection as the original full trademark. If the public has come to shorten a trademark into a nickname, then the nickname is entitled to independent legal protection as a mark." Further quoting McCarthy, Complainants contend that "where, as a result of use by customers, the trade or by the news media, an abbreviation has become identified in the public mind with a particular company, then that abbreviation is a protectable trademark, even if the company itself has not formally used the abbreviation as a trademark."

Complainants also argue that Respondent has conceded that Complainants own trademark rights in the terms SIB and SIB Mortgage. In this regard, Complainants point to Respondent's December 30, 2002, letter and to the statement (previously quoted) by Respondent as to "my use of their trademark." See Annex 8 to the Complaint. Complainants also point out the statement (previously quoted) by Respondent in his March 31, 2003 letter as to marketing by SI Bank & Trust under the term SIB Mortgage before his Web site existed, and his revision of that Web site so that neither "SIB" nor "SIB Mortgage" presently appear on that Web site. See Annex 8A to the Complaint.

Complainants contend likelihood of confusion, based on the following allegations and arguments.

In early December 2002, Complainants learned of Respondent's Web site which purportedly at that time featured the mark SIB MORTGAGE STORE. Complainants state that a Web page at that Web site had eight hyperlinks through which the user could obtain information regarding applying for and obtaining a sub-prime mortgage. Complainants further state that one of the links on that Web site included the following statement:

"Please Note: We are NOT associated with SIB Mortgage Corp., Staten Island Savings Bank, SI Bank & Trust, or Ivy Mortgage in any way."

Other links on that Web site, according to Complainants, led the user to other pages providing information about mortgages. The Web site also included a link to the Web site using the URL "www.fullspectrumlending.com", at which the user could obtain more information about mortgages and apply for mortgage loans.

Complainants contend that a Google search conducted on April 3, 2003, using the terms "SIB Mortgage" turned up a link to "www.sib-mortgage.com," and text that refers to the "SIB Mortgage Store." See Annex 12 to the Complaint. Complainants argue that Respondent may have paid Google for the right to turn up high on the list of search results where the user is searching for "SIB Mortgage." Complainants also contend that the text in this Google search was likely to mislead consumers into thinking that they had found Complainant SIB Mortgage Corporation or a site that is sponsored by or affiliated with Complainant SIB Mortgage Corporation.

Complainants contend that, on March 26, 2003, the Web site using the domain name in dispute had changed in content, in that such Web site was (and apparently still is) entitled "Simple Individual Borrowing," and provides information and assistance to mortgage "sub-prime borrowers." Complainants also point out that the Web site at that time, and apparently at the present time, directs users to shop for a mortgage loan at "www.loanweb.com" by links to that site. See Annex 11 to the Complaint. Complainants further contend that Respondent receives compensation from users of the Web site using the domain name in dispute, who pursue loans through the Web site using the domain name <loanweb.com>, pursuant to a "Loan Web Affiliate Program." See Annex 13 to the Complaint.

Complainants conclude by arguing that the domain name in dispute is identical and/or confusingly similar to each of the terms "SIB" and "SIB Mortgage" alleged by Complainants as trademarks, being distinguished from the former term by the inclusion of a dash and the non-distinctive term "mortgage," and from the latter term by the inclusion of a dash. Complainants argue that Respondent, at its Web site, offers mortgage information and links to a competing mortgage lender, whose services compete with those offered by Complainants.

2. The Respondent Has No Rights or Legitimate Interests in Respect of the Domain Name

Complainants contend that they have never granted Respondent any rights to the terms "SIB" and "SIB Mortgage" alleged by Complainants as trademarks, or any derivatives thereof.

Complainants contend that Respondent's "opportunistic" registration of the domain name in dispute is not in connection with a bona fide offering of goods or services, arguing that Respondent is not generally known by the domain name in dispute and is not making a legitimate non-commercial or fair use of the domain name in dispute. Complainants contend that Respondent uses the domain name in dispute to divert Internet users to a Web site that is competitive with Complainants' Web site and business in general, and that pays Respondent for borrowers originating from the Web site using the domain name in dispute, while attempting to benefit from the goodwill associated with the terms SIB and SIB Mortgage alleged by Complainants as trademarks.

3. The Domain Name was Registered and is Being Used in Bad Faith

Complainants contend that bad faith is established by the following circumstances:

The domain name in dispute is confusingly similar to the terms SIB and SIB Mortgage alleged as trademarks by Complainants; Respondent earns money by referring Internet users to the "www.loanweb.com" Web site for mortgage products, and most likely enjoys similar benefits by referring Internet users to the "www.fullspectrumlending.com" Web site, both of which provide mortgage products competitive with those of Complainants; Respondent changed the content of the Web site using the domain name in dispute to refer to "Simple Individual Borrowing" instead of "SIB Mortgage Store," while still diverting consumers to the Web site by virtue of the domain name in dispute and Respondent's business arrangement and resultant search rankings on Google; Respondent has acknowledged in writing Complainants' trademark rights, and implicitly acknowledged that its actions in using SIB MORTGAGE as a mark were unauthorized and illegal when Respondent changed the content of its Web site, but continues to use the terms SIB and SIB Mortgage (in the guise of the domain name in dispute) to direct users to competing services for the commercial gain of Respondent; Respondent provided a false telephone number of 800-555-1212, a well-known directory assistance number for all toll free listings, for its contact number, in registering the domain name in dispute. See Annex 1 to the Complaint.

B. Respondent

1. Whether the Domain Name Is Identical or Confusingly Similar to a Trademark or Service Mark in Which the Complainants Have Rights

Respondent contends that Complainants offer consumer related mortgage services similar to those advertised at their Web site using the domain name in dispute, by use of the domain name <ivymortgage.com>. See Annex 1 to the Response. Respondent contends that the domain name, <sib-mortgage.com>, is hardly similar to, likely to be confused with, or likely to "divert" traffic from the domain name <ivymortgage.com>.

Respondent points out that Complainants own the domain name <sibmortgage.com>, as evidenced by an e-mail address in the Complaint, and in Annex 9 to the Complaint, but choose to not deliver Web pages from that domain name. Respondent argues that Complainants create a substantially greater "likelihood of confusion" by using <ivymortgage.com> as the domain name for their online consumer mortgage services, instead of using <sibmortgage.com>.

2. Whether the Respondent Has Rights or Legitimate Interests in Respect to the Domain Name

Respondent contends that the domain name in dispute was registered after Respondent became an employee of Complainant SIB Mortgage Corporation, referring to an employee handbook of "SIB Mortgage Corp., dba Ivy Mortgage." See Annex 2 to the Response. Respondent argues that the intent was to "associate his site" with the Complainant's business to enhance both his business and the Complainant's. Respondent contends that during the summer of 2001, a "compliance officer" employed by Complainant (presumably Complainant SIB Mortgage Corporation) reviewed the Web site using the domain name in dispute on many occasions, and dictated numerous changes, to ensure compliance with U.S. federal banking regulations. Respondent argues that this review was concluded at the end of the summer of 2001. Respondent points to a Web page, Annex 3 to the Response, obtained from a Web archive and purportedly in use in 2001, including a link to "the SIB Mortgage Corp/Ivy Mortgage Privacy Policy" which was mandated by this compliance officer.

Respondent contends that neither the compliance officer nor any other representative of Complainant SIB Mortgage Corporation suggested trademark infringement or expressed concerns about Respondent's domain name to Respondent during his employment. Respondent contends that he offered to transfer the domain name in dispute to Complainant SIB Mortgage Corporation during a termination proceeding for Respondent, but was told that such Complainant was not interested in that transfer. Respondent contends that the termination of his employment was approximately nine months prior to the allegation of trademark infringement by Complainant SIB Mortgage Corporation (December 12, 2002).

Respondent argues that these facts establish that the use of the domain name and the offering of Respondent's goods and services were in good faith and with the tacit approval of the Complainant, prior to Respondent receiving notice of the dispute.

3. Whether the Domain Name Has Been Registered and Is Being Used in Bad Faith

Respondent's contentions and arguments on this point, while extensive, essentially boil down to a contention and argument that Respondent registered the domain name in dispute, and operated his Web site using that domain name in dispute, to enhance the business of Complainant SIB Mortgage Corporation, starting from the time when Respondent was an employee of Complainant SIB Mortgage Corporation. Respondent also points out that he made every effort to disassociate the Web site using the domain name in dispute from the alleged trademarks in interest of the Complainant SIB Mortgage Corporation, once he had received the cease and desist letter from the attorneys representing Complainant SIB Mortgage Corporation.

Regarding the reference to the Web site link to "www.fullspectrumlending.com," Respondent contends that such relationship "is essentially the same advertiser supported relationship that the Complainant enjoyed when the Respondent was the Complainant's employee," and that the current link to "www.loanweb.com" "is simply one of several advertisers that supports the Respondent's web site at "www.sib-mortage.com". Respondent contends that rather than undermining the Complainant's business, the Respondent is simply trying to augment his own business.

Respondent also contends that the sales leads that he provided to Complainant SIB Mortgage Corporation, during his employment, were dissatisfactory in quality to such Complainant. Respondent contends that his present advertisers "are quite satisfied with the quality of his sales leads," which establishes that the Web site using the domain name in dispute "does not directly compete with Complainant's business."

Respondent argues that he chooses not to provide his personal/business telephone number to the general public "to ensure personal privacy and security," and that the telephone number used (an 800 number) was provided only because domain name registrars require a telephone number.

Respondent finally contends that Respondent has never sold a domain name nor engaged in a pattern of conduct of selling domain names, and although Complainants and Respondent may be competitors, Respondent registered the domain name to enhance, not to disrupt, Complainants' business.

Finally, Respondent has made certain other statements as to the value of the domain name in dispute, and states that the primary goal of Complainants is to simply acquire the domain name in dispute at no cost, and to capitalize on the value that Respondent has built into that domain name.

 

6. Discussion and Findings

As a preliminary point, the Panel has not requested a copy of, and has not seen, the supplemental filing made by Complainants. The ICANN rules provide only for the filing of a complaint and a response. Although the Panel can request additional documents from the parties, the Panel in this case did not request the supplemental filing and has declined to review the contents thereof.

Paragraph (4)(a) of the Uniform Domain Name Dispute Resolution Policy ("Policy") states that the domain name can be transferred where Complainant has established the following:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is not convinced that Complainants have established common law trademark or service mark rights in either the term SIB or the term SIB Mortgage in the context of this UDRP proceeding.

It appears that neither Complainant has sought any type of trademark registration, either state or federal, for SIB or SIB Mortgage as a trademark or service mark for any goods or services, even to the present time. Such a situation is unusual for companies of the size of Complainants. The Panel accordingly draws the inference that neither Complainant believes either the term SIB or the term SIB Mortgage to be important to or to symbolize its business to purchasers.

Complainants' support for their allegation of trademark rights consists in part of two listings (both combined in Annex 5 to the Complaint) of business names and corporate names. Assuming that the listings represent the business names and corporate names owned by Complainants in the 50 states, the Panel notes that the listings are not supportive of Complainants' claim of trademark rights. It is axiomatic that no protectable rights in a name or a mark come as such from trade name registrations or corporate name reservations, incorporations or qualifications, which provide no right to their owner to use the name, or to stop others from using such a name, in the conduct of any trade or business.

Regarding Complainant Staten Island Bancorp, Inc., there has been no showing that the term SIB has been used, other than as the symbol for such Complainant on the New York Stock Exchange. A stock symbol does not associate such Complainant with any specific goods or services, or otherwise establish in the minds of the public any relationship between that symbol and any such goods or services. The Complaint also fails to establish any specific goods or services that are provided by Complainant Staten Island Bancorp, Inc., other than those provided by its wholly owned subsidiaries. The Panel particularly notes that the parent of Complainant SIB Mortgage Corporation appears to use the name and mark SI Bank & Trust, and not the term SIB, in its provision of goods and services, including mortgage services.

No evidence also has been introduced for the proposition, advanced by Complainants, that purchasers view SIB as an acronym for Complainant Staten Island Bancorp, Inc., and goods or services provided thereby. The Google search submitted by Complainants, Annex 7 to the Complaint, on its face does not refer to any goods or services provided by Complainant Staten Island Bancorp, Inc., and at best establishes only an association between the term "SIB" and the name of such Complainant.

Notwithstanding the apparent lack of a formal trademark application, the Panel believes that Complainant SIB Mortgage Corporation may be in the process of acquiring protectable rights in the terms SIB and SIB Mortgage as trademarks. The record, particularly the advertisement submitted by Complainants and the Web page "www.sibware.com/FrontEndInfo/AboutUs.asp," Annexes 5A and 6 to the Complaint, show use of those terms as marks, even if the complainants have not clearly stated the services with which such marks appear to be associated.

Also, the record contains a statement that Complainant SIB Mortgage Corporation has expended a considerable amount of money in 2003, to advertise its services under the term SIB Mortgage. Again, however, the record is rather poor on specifics and documentation.

Complainants also seek to establish trademark rights in the terms SIB and SIB Mortgage by the purported admissions against interest by Respondent. In the context in which those statements would have been made, the Panel is not prepared to accept them as sufficient basis for a finding of trademark rights in this proceeding.

The Panel must take its decision on the record before it. In the circumstances, the Panel is not persuaded, by the evidence in the record, that Complainants had established trademark rights in the terms SIB and SIB Mortgage.

Accordingly, the Panel finds that Complainants have not met their burden of proof under Paragraph 4(a)(i) of the Policy. The Panel would like to add that its findings are of course limited to the present UDRP case. Also, given its findings on the trademark issue, the Panel does not comment further on the strengths and weaknesses of the Respondent’s position with regard to its alleged legitimate interests (second element of the UDRP) or the bad faith issue (third element of the UDRP). For example, a finding of trademark rights on the part of the Complainants would have led the Panel to examine the reasons why the Respondent chose this particular domain name and why the Respondent later, somewhat disingenuously, referred to a rather coincidental acronym as an attempt of explanation.

 

7. Decision

For the foregoing reasons, the Complaint is denied.

 

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Bruce E. O'Connor
Sole Panelist

Dated: June 30, 2003