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and Mediation Center
National City Corporation v. DotComTreasures.com
Case No. D2005-1314
1. The Parties
The Complainant is National City Corporation, Cleveland, Ohio, United States of America, represented by Sughrue Mion, PLLC, Washington, DC, United States of America.
The Respondent is DotComTreasures.com, Poway, California, United States of
America, represented by The Tech Law Group, P.C., San Diego, California, United
States of America.
2. The Domain Name and Registrar
The disputed domain name <nationalcityhomeloan.com> (“Domain Name”)
is registered with Stargate Holdings Corp. a/k/a Stargate.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2005. On December 20, 2005, the Center transmitted by e-mail to Stargate.com a request for registrar verification in connection with the domain name at issue. On December 22, 2005, Stargate.com transmitted by e-mail 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 January 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2006. The Response was filed with the Center on January 24, 2006.1
On January 25, 2006, counsel for Complainant submitted a letter to the Center2 requesting permission to submit a supplemental filing in response to the Response. The letter indicates that the supplemental filing would address the issues of genericness of Complainant’s trademark, Respondent’s use of the Domain Name and Respondent’s request for a finding of Reverse Domain Name Hijacking.
On February 7, 2006, counsel for Complainant submitted a letter to the Center3 again requesting permission to submit a supplemental filing. The letter stated that, on February 1, 2006, counsel for Complainant received a telephone call from Respondent’s attorney “whereby he reiterated that Respondent would be willing to transfer the domain name for the price she previously suggested – $5,000.”
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on February 7, 2006. 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 February 20, 2006, the Panel submitted to the Center Procedural Order No.
1, requesting the following information from the parties: from the Complainant,
a response to Respondent’s request for a finding of Reverse Domain Name
Hijacking; from the Respondent: information indicating the date and time at
which counsel for Respondent submitted its Response. The order stated that the
deadline for response was March 3, 2006. Respondent timely submitted its response
to this order on February 21, 2006. Complainant timely submitted its response
to this order on March 1, 2006.
4. Factual Background
Complainant is the owner of numerous trademark registrations in the United States that consist of or include NATIONAL CITY, including U.S. Reg. No. 1,904,621 (NATIONAL CITY), first used May 17, 1845, registered July 11, 1995; and U.S. Reg. No. 2,136,298 (NATIONAL CITY COMPLETE LOAN), first used July 7, 1997, registered February 10, 1998. Complainant operates a website using the domain name <nationalcity.com>.
The Domain Name was registered on April 1, 2005.
5. Parties’ Contentions
Complainant contends the following:
- Complainant, a financial services holding company, was founded in, and has used the service mark NATIONAL CITY since 1845.
- Complainant has multiple financial services subsidiaries with more than 1,000 branches throughout the Midwestern United States.
- Complainant is the tenth-largest banking company in the United States.
- Complainant has offered mortgage services to its customers for more than 100 years and in 2003 originated more than US$165 billion in mortgages.
- Complainant is the owner of numerous trademark registrations in the United States that consist of or include NATIONAL CITY, including U.S. Reg. No. 1,904,621 (NATIONAL CITY), first used May 17, 1845, registered July 11, 1995; and U.S. Reg. No. 2,136,298 (NATIONAL CITY COMPLETE LOAN), first used July 7, 1997, registered February 10, 1998.
- Complainant operates a website using the domain name <nationalcity.com>.
- Complainant’s wholly owned subsidiary, National City Mortgage Co., operates websites using the domain names <nationalcitymortgage.com> and <nationalcityhomeloans.com>.
- The Domain Name is “virtually identical to and confusingly similar to Complainant’s service mark and trade name NATIONAL CITY”.
- Respondent has no rights or legitimate interests in the Domain Name, and Complainant has not authorized or licensed Respondent to use the NATIONAL CITY mark.
- Respondent registered and is using the Domain Name in bad faith by “confus[ing] the relevant purchasing public into believing that Complainant maintains, or has approved, endorsed or is the sponsor of, or is otherwise associated with a website located at” the Domain Name.
- In October 2005, a website associated with the Domain Name is a search engine that offers “Popular Links” and “Popular Categories,” including links for “Home Equity Loans”, “Equity Loan”, “Application line increase” and “mortgages”. Users who click on these links are taken to competitors’ websites.
- In December 2005, a website associated with the Domain Name included “sponsored links”.
- “[A]t different times”, a website associated with the Domain Name had an invitation to “inquire about this domain name”. Users who clicked on the link to do so were taken to a website at Domain Sponsor where they could make an offer to purchase the Domain Name. Complainant’s subsidiary made an offer to purchase the Domain Name for $400.00 in May 2005. Domain Sponsor responded with a counter-offer of $5,000.00.
Respondent contends the following:
- Respondent “DotCom Treasures” is a “d/b/a” – that is, the name pursuant to which another is “doing business as” – for Mary Jo Rohner of Poway, California. Ms. Rohner provided a declaration in support of the Response.
- Respondent registered the Domain Name because it contains the name of the city National City, California, a city located in San Diego County, where Respondent lives. Respondent provided a link to a website (http://www.ci.national-city.ca.us/about/History.htm) that provides information about the city of National City.
- Each word in the Domain Name “is generic when separated into its component parts”.
- Complainant does not have a federal trademark registration for NATIONAL CITY HOME LOAN and, therefore, cannot claim any rights to the Domain Name.
- Even if the Domain Name is not generic, geographical names are subject to a heightened analysis.
- More than 100 businesses have the words “National City” in their names, according to records from the California Secretary of State’s and County of San Diego’s business filings databases.
- Respondent is using the Domain Name in connection with a bona fide offering of goods and services.
- Respondent had no knowledge of Complainant’s trademarks when she registered the Domain Name.
- Respondent registered “several other domain names with geographic names coupled with financial service terms on the same day she registered” the Domain Name. Respondent’s declaration identifies the following domain name in support of this contention: <baycityhomeloans.com>, <homeloankansascity.com>, <nevadacityhomeloan.com>, <siouxcityhomeloans.com>, <cathedralcityhomeloan.com> and <cathedralcityhomeloans.com>.
- Because Respondent had no knowledge of Complainant and only registered the Domain Name because of its geographic identifier, the Domain Name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and, in connection therewith, Respondent has not engaged in a pattern of such conduct.
- Complainant and Respondent are not competitors and the Domain Name was not registered to disrupt Complainant’s business.
- The domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
Respondent requests that the Panel find that the Complaint
was brought in bad faith in an attempt at Reverse Domain Name Hijacking or was
brought primarily to harass Respondent.
6. Procedural Issues
The Rules do not expressly permit a party to submit a supplemental filing.
However, panels may request a supplemental filing, see Rules, paragraph 10(a)
(giving a panel the power to “conduct the administrative proceeding in
such manner as it considers appropriate in accordance with the Policy and these
Rules”). Further, panels “have discretion to accept an unsolicited
supplemental filing from either party, bearing in mind the obligation to treat
each party with equality and ensure that each party has a fair opportunity to
present its case.” “WIPO
Overview of WIPO Panel Views on Selected UDRP Questions,” para.
4.2, (visited March 7, 2006).
Here, the Panel did not request supplemental filings from the parties other
than as set forth in Procedural Order No. 1. The information identified by Complainant
in its requests on January 25, 2006, and February 7, 2006, to submit a supplemental
filing do not relate to the single issue on which the Panel decides this case,
as set forth below. Therefore, the Panel rejects Complainant’s requests
to submit a supplemental filing.
7. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (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. Policy, paragraph 4(a).
Where a complainant does not prove one or more of these elements, the panel
is compelled to issue a decision denying the complaint, regardless of the complainant’s
ability to prove the other element(s) required by the Policy. Accordingly, under
such circumstances, any discussion by the panel with respect to such other element(s)
would be unnecessary in reaching a decision to deny the complaint. See, e.g.,
Admerex Limited v. Metyor Inc., WIPO Case No.
D2005-1246 (“[s]ince the Complainant must prove all three elements
of the Policy, and since the Complainant fails under the third element,…
it is not necessary to make a finding under the second element of the Policy”);
Micro Electronics, Inc. v. MicroCenter, WIPO
Case No. D2005-1289 (where the complainant failed to prove the second element
of the Policy, “there is no need for the Panel to address the third element
of the Policy”). Therefore, given that the Panel in the instant case finds,
as discussed below, that the Complainant has failed to prove the third element
of the Policy – that is, paragraph 4(a)(iii) – the Panel makes no
findings with respect to the first or second elements of the Policy.
A. Identical or Confusingly Similar
Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the first element of the Policy, paragraph 4(a)(i), the Panel refrains from doing so.
B. Rights or Legitimate Interests
Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the second element of the Policy, paragraph 4(a)(ii), the Panel refrains from doing so.
C. Registered and Used in Bad Faith
The third element of the Policy, paragraph 4(a)(iii) requires Complainant to prove that the Domain Name “has been registered and is being used in bad faith” (emphasis added). This is clearly a conjunctive requirement, that is, Complainant must prove both that the Domain Name has been registered in bad faith and that the Domain Name is being used in bad faith.
Here, Respondent states in a declaration, and the Panel has no reason to doubt, that she is a resident of San Diego County, in which the city of National City is located. In her declaration, Respondent states that she registered the Domain Name “with the intent of adding it to a financial information website which links to other such websites within a network of related websites.” She further states: “Domains within the network contain geographic names and generic financial terms and operate as a comprehensive search engine to connect residents of a geographic area with financial services located in that geographic area.” Respondent also states (and the Panel’s independent review of Whois records confirm) that she registered at least six additional domain names containing the words “Home Loan” or “Home Loans” plus a geographic identifier (i.e., <baycityhomeloans.com>, <homeloankansascity.com>, <nevadacityhomeloan.com>, <siouxcityhomeloans.com>, <cathedralcityhomeloan.com> and <cathedralcityhomeloans.com>) on the same date that Respondent registered the domain name at issue in this case (i.e., <nationalcityhomeloan.com>).
It appears as if Respondent has not developed the “financial information website” to which she refers, given that each of the seven domain names listed in the previous paragraph is used with websites that are nothing more than so-called “link farms.” However, the Panel struggles to find in the record before it conclusive information that the Domain Name was registered in bad faith, particularly given the words that make up the Domain Name (which, when used in connection with home loan services in National City, likely would be generic) and Respondent’s registration on the same date of six other similar domain names containing the names of different geographic regions. While Complainant states that “[t]here is no justification for Respondent’s registration of Complainant’s mark with the descriptive word ‘homeloan’ other than to try to sell it to Complainant or divert the public from Complainant’s web sites,” Respondent has indeed provided such a justification. The Panel is not convinced that the justification provided by Respondent is complete, but the justification is supported and not implausible. Indeed, Respondent’s registration of the Domain Name could be, for Complainant, nothing more than an unfortunate coincidence.
Therefore, in light of the above, the Panel cannot conclude that the Domain Name was registered in bad faith.
With more information, this Panel – like many others – might reach
a different decision. However, “[f]or good reason, this… process
is designed to be a fast track inexpensive process. Necessary elements of that
desirable process are an absence of discovery, depositions, cross examination,
live hearings. When… a party critically needs certain evidence available
only by discovery forbidden by the [Policy’s] parameters, this process
may not produce as confidently sound results as the more expensive court processes
that afford those features forbidden here. That is one of the reasons that this
process is not a final process, but one where a disappointed party may take
the issue to court.” Quoteseek Corporation v. Internet Marketing Group,
WIPO Case No. D2002-0511.
8. Reverse Domain Name Hijacking
Reverse Domain Name Hijacking is “using the Policy in bad faith to attempt
to deprive a registered domain-name holder of a domain name.” Rules, paragraph
1. To prevail on such a claim, a respondent must show that “the complainant
knew of the respondent’s unassailable rights or legitimate interests in
the disputed domain name or the clear lack of bad faith registration and use,
and nevertheless brought the complaint in bad faith.” National Trust
for Historic Preservation v. Barry Preston, WIPO
Case No. D2005-0424.
In this instance, Respondent’s request for a finding of Reverse Domain
Name Hijacking is not supported by any arguments or citations other than those
contained elsewhere in its Response. Given that the Domain Name contains a trademark
used by Complainant for more than 160 years; that the Domain Name is, with the
exception of a single letter, identical to a domain name used by a subsidiary
of Complainant; and that the Domain Name has been used in connection with a
website that contains links to competitors of Complainant, the Panel finds that
the record does not indicate the Complaint was brought in bad faith. Accordingly,
the Panel refuses to find Reverse Domain Name Hijacking.
For all the foregoing reasons, the Complaint is denied.
Douglas M. Isenberg
Dated: March 9, 2006
1 The Response is dated January 23, 2006, and was apparently received by the Center on January 24, 2006. In response to a Procedural Order issued by the Panel to address this discrepancy in the dates, counsel for Respondent submitted a notarized declaration supported by a copy of his e-mail to the Center transmitting the Response, as well as a copy of the FedEx International Air Waybill, all indicating that the Response was submitted on January 23, 2006. Given this, as well as the time difference between San Diego, California, USA (where counsel for Respondent is located) and Geneva, Switzerland (where the Center is located), the Panel is satisfied that the Response was submitted in a timely manner pursuant to the 20-day requirement set forth in Rules, para. 5(a).
2 A letter from counsel for Complainant is dated January 25, 2005, but the Panel assumes the correct date should have been January 25, 2006.
3 A letter from counsel for Complainant is dated February 7, 2005, but the Panel assumes the correct date should have been February 7, 2006.