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and Mediation Center
Fifth Third Bancorp v. Web Domain Names
Case No. D2005-0185
1. The Parties
The Complainant is Fifth Third Bancorp, Cincinnati, Ohio of United States of America, represented by Graydon Head & Ritchey, LLP, United States of America.
The Respondent is Web Domain Names, Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <retire53.com> is registered with Moniker Online
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2005. On February 18, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On February 18, 2005, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on March 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2005.
The Center appointed Nathalie Dreyfus as the Sole
Panelist in this matter on April 1, 2005. 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.
4. Factual Background
Fifth Third Bancorp (the “Complainant”) is an Ohio corporation organized in 1975 and is a multi-bank holding company. On December 31, 2003, the Complainant’s wholly-owned second tier holding company, Fifth Third Financial Corporation, had six wholly-owned direct subsidiaries: Fifth Third Bank; Fifth Third Bank (Michigan); Fifth Third Community Development Corporation; Fifth Third Investment Company; Old Kent Capital Trust I and Fifth Third Reinsurance Company, LTD.
The Complainant, through its subsidiaries, is engaged primarily in commercial, retail and trust banking, electronic payment processing services and investment advisory services.
The Complainant also owns a number of trademarks and service marks in the United States incorporating the terms “FIFTH THIRD” and “53” for general banking services and a variety of other financial products and services, such as FIFTH THIRD filed in October 1999, FIFTH THIRD BANK filed in June 1990, 5/3 filed in June 1990 and RETIRE.53.COM filed in June 2003.
Complainant is also the owner of numerous domain names that incorporate the terms “FIFTH THIRD” and “53”:
Respondent registered the disputed domain name <retire53.com>
on August 19, 2002, and is using the domain name to provide links to third parties’
websites that offer various financial and banking services.
5. Parties’ Contentions
Complainant asserts that Respondent’s domain name <retire53.com> is identical or confusingly similar to its registered service mark RETIRE.53.COM for banking services as Respondent’s deletion of the period between “retire” and “53” does not serve to distinguish it from Complainant’s marks.
Complainant also contends that Respondent has no rights or legitimate interest in respect of the disputed domain name. According to the Complainant’s reasoning, there is no evidence that Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Any Internet user that accesses the disputed domain name will discover, that Respondent’s website is a mere shell that serves as a conduit to third party websites. None of these websites make any mention of Complainant. More importantly, Complainant believes that Respondent charges these third party websites an advertising fee to be listed on Respondent’s website.
Finally, Complainant asserts that Respondent has registered <retire53.com> and is using the domain name in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Neither Respondent’s nor the third parties websites linked therein are in any way affiliated with Complainant. Respondent, seeking to capitalize on Complainant’s stature and reputation, lure Internet users who believe they are accessing a website affiliated with Complainant, to Respondent’s unaffiliated, unendorsed shell website.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The 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(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Paragraph 15(a) of the Rules addresses the principles to be used in rendering a decision:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Where Respondent has not filed a Response to the Complaint, in the absence
of exceptional circumstances, under paragraph 5(e) of the Rules, the Panel shall
decide the dispute based on the Complaint. It may also permit a Panel to infer
as appropriate from the case record that the Respondent does not deny the facts
which the Complainant asserts nor the conclusions, which the Complainant asserts,
can be drawn from those facts. (See: Harrods Limited v. Harrod’s Closet,
WIPO Case No. D2001-1027.)
A. Identical or Confusingly Similar
Complainant has provided in its Complaint sufficient evidence of its trademark rights over the signs “FIFTH THIRD” and “53”.
Consequently, the above mentioned uncontested evidence of the Complainant satisfies
the Panel that the domain name <retire53.com> registered by the Respondent
is identical or confusingly similar to the Complainant’s registered trademark.
It has been held that the suppression of punctuation mark such as hyphens or
dot are not sufficient on their own to avoid a finding of confusing similarity.
See CSC Holdings, Inc. v. cablevision-lightpath.com Inc., WIPO
Case No. D2004-1057, <cablevision-lightpath.com>, (March 10, 2005).
Furthermore, as held by numerous previous decisions, the adjunction of a descriptive word evocating part of the activity of the Complainant “retire” does not constitute a sufficient distinction between the mark and the domain name, likely to avoid the finding of confusing similarity.
The Panel therefore considers that, as the domain name incorporates a renowned distinctive trademark, there is a sufficient similarity created between the mark and the domain name. Such similarity renders the domain name confusingly similar to the Complainant’s trademark.
Therefore, the condition set out by paragraph 4(a)(i) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Complainant must prove, pursuant to paragraph 4(c) of the Policy in order to obtain the remedies requested under the Policy, that the Respondent has:
“(i) before any notice [to you] of the dispute, [your] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [you (as an individual, business, or other organization)] have been commonly known by the domain name, even if [you] have acquired no trademark or service mark rights; or
(iii) [you] are making a legitimate non commercial 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.”
It is well established now that the burden of proof is on the Complainant. Nevertheless, Panels have recognised the right to draw an inference that Complainant’s allegation are true when supported by the case record and as the Respondent failed to submit a Response.
The Respondent’s failure to answer the Complainant’s cease and
desist letter may be an indication of a lack of legitimate interest in the domain
name (Banque Transatlantique S.A. v. DOTSCOPE, WIPO
Case No. D2004-1100, <banquetransatlantique.com>, February 23, 2005).
Complainant asserted that the disputed domain name directs to a search engine, that, far from any bona fide services, serves as a conduit to concurrent third party websites such as “www.homeloanquotes.net”, “www.bankersmortgagerates.com”, and “www.lowrateadvisors.com”. None of these websites make any mention of Complainant. More importantly, Complainant believes that Respondent charges these third party websites an advertising fee to be listed on Respondent’s website.
It appears to the Panel that such use does not correspond to use in connection with a bona fide offering of goods and services.
Complainant states that, to its knowledge, the Respondent has not been commonly known under the name incorporated in the domain name. It has no connection to Complainant, and is not known by Complainant’s name.
Besides, the Panel considers that the Respondent is not making any legitimate
use without intent for commercial gain. It has been previously held in Banque
Transatlantique S.A. v. DOTSCOPE, WIPO
Case No. D2004-1100, <banquetransatlantique.com>, February, 23, 2005,
that “the linkage of the domain name with a website which serves only
to redirect users to a search engine and unrelated third-party vendors cannot
be considered as a bona fide offering of goods or services in the sense
foreseen by the Policy”.
The Panel further considers that it cannot even be held as legitimate use without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In fact there is intent for commercial gain and, all the more as the Respondent seems to gain profit from the redirection to third parties websites. This element has not been contested by the Respondent. Based on the case record, it seems likely that the domain name has been registered in order to divert consumers or falsely suggest some affiliation or sponsorship with the Complainant.
Therefore, the conditions set by paragraph 4(c) of the Policy have been met.
C. Registered and Used in Bad Faith
The last of the elements foreseen by paragraph 4(a) of the Policy is that the Complainant proves that the Respondent has registered and uses the domain name in bad faith.
In this regard, it is important to remind that both
conditions are cumulative, as stated in many decisions adopted under the Policy
(Robert Ellenbogen v. Mike Pearson, WIPO
Case No. D2000-0001, for example). Consequently, the Complainant must clearly
(i) the Domain Name was registered by the Respondent in bad faith and,
(ii) the Domain Name has been used by the Respondent in bad faith.
This Panel is of the opinion that there is ample evidence for a finding of
bad faith in this case. In fact, Respondent’s action is in violation of
paragraph 4(b)(iv) of the Policy as the Respondent is intentionally attempting
to attract for commercial gain Internet users to the “retire53.com”
website and to, among others, “www.homeloanquotes.net”, “www.bankersmortgagerates.com”,
and “www.lowrateadvisors.com” websites by creating a likelihood
of confusion with Complainant’s mark as to the source, sponsorship, affiliation
or endorsement of Respondent’s websites and services which are not in
any way affiliated with Complainant. See The Toronto-Dominion Bank v. Boris
Karpachev, WIPO Case No. D2000-1571;
NCRAS Management LP v. Cupcake City, WIPO
Case No. D2000-1803; Disney Enterprises Inc. v. John Zuccarini, d/b/a
Cupcake City and Cupcake Patrol, WIPO
Case No. D2001-0489. And all the more as the Respondent appears to make
profit out of the linking to these websites.
The contact details provided on the Whois for the Respondent of the domain
name <retire53.com> appears to be false. It has been held in previous
decisions that such an element may be an indication of bad faith registration
(The Football Association Premier League Limited v. Trademark, WIPO
Case No D2005-0014, <fapremierleague.com>, February 9, 2005).
This Panel is of the opinion that the purpose of the Respondent’s use
of the disputed domain name is to divert traffic intended for the Complainant
and therefore finds that the Respondent has registered and is using the disputed
Domain Name <retire53.com> in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <retire53.com> be transferred to the Complainant.
Dated: April 15, 2005