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and Mediation Center
Fifth Third Bancorp v. Ashley Khong
Case No. D2005-1360
1. The Parties
The Complainant is Fifth Third Bancorp, Cincinnati, Ohio, United States of America, of United States of America, represented by Graydon Head & Ritchey, LLP, Cincinnati, Ohio, United States of America.
The Respondent is Ashley Khong, San Clemente, California, United States of
2. The Domain Name and Registrar
The disputed domain name <fifththirddirect.com> is registered with Go
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2005. On January 3, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On January 3, 2006, Go Daddy Software 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 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 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2006. The Response was filed with the Center on February 4, 2006.
The Center appointed Sandra J. Franklin as the sole
panelist in this matter on March 14, 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.
4. Factual Background
Complainant Fifth Third Bancorp has used the mark
FIFTH THIRD BANK since 1968, and owns the mark FIFTH THIRD for a wide range
of financial products and services. Complainant holds many trademarks and service
mark registrations, and domain names, for FIFTH THIRD by itself or with other
common words, such as FIFTH THIRD TRANSACT, FIFTH THIRD PAYCARD, FIFTH THIRD
5. Parties’ Contentions
A. Complainant makes the following assertions:
1. Respondent’s <fifththirddirect.com> domain name is confusingly similar to Complainant’s FIFTH THIRD mark.
2. Respondent does not have any rights or legitimate interests in the <fifththirddirect.com> domain name.
3. Respondent registered and used the <fifththirddirect.com> domain name in bad faith.
B. Respondent makes the following assertions:
1. Complainant does not own the name “Fifth-Third” outright.
2. Respondent has legitimate rights in the <fifththirddirect.com> domain name.
3. Respondent did not register and use the <fifththirddirect.com>
domain name in bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has established rights in the FIFTH THIRD mark through commercial use since 1968, and registration of the mark with the United States Patent and Trademark Office (USPTO). See Innomed Technologies, Inc. v. DRP Services, FA 221171 (National Arbitration Forum (NAF), February 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark.”). The Respondent’s principle claim in addition to quoting parts of the Policy appears to be the fact that the disputed domain name was registered before the Complainant registered the trademark FIFTH THIRD DIRECT. The Panel notes that the Complainant has demonstrated its rights to the trademark FIFTH THIRD which is sufficient for the Panel to proceed to make a finding under the first element of the Policy.
Respondent’s domain name <fifththirddirect.com> is confusingly
similar to Complainant’s mark pursuant to Policy, paragraph 4(a)(i). The
domain name incorporates Complainant’s entire mark and merely adds the
generic word “direct” to the mark. Panels have routinely held that
adding a generic term to a complainant’s mark does not sufficiently distinguish
a domain name from a mark. See Arthur Guinness Son & Co. (Dublin) Limited
v. Tim Healy/BOSTH, WIPO Case No. D2001-0026
(March 23, 2001) finding confusing similarity where the domain name in dispute
contains the identical mark of the complainant combined with a generic word
Respondent’s use of the “.com” in its domain name <fifththirddirect.com>
also does nothing to distinguish it from Complainant’s mark. See Hannover
Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA 102724 (NAF, January 7, 2002)
finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces
are impermissible in domain names and a generic top-level domain such as ‘.com’
or ‘.net’ is required in domain names”; see also Rollerblade,
Inc. v. Chris McCrady, WIPO Case No. D2000-0429
(June 25, 2000) finding that the top level of the domain name such as “.net”
or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar.
The Panel finds that Policy, paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Complainant asserts that Respondent uses the domain name to redirect Internet traffic to third parties offering products and services which compete with Complainant’s, which Respondent did not dispute. Presumably, Respondent receives referral fees for each Internet user diverted through Respondent’s domain name. Such diversionary use is neither a use in connection with a bona fide offering of goods or services under Policy, paragraph 4(c)(i) nor a noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii). See Seiko Kabushiki Kaisha dba Seiko Corporation v. CS into Tech, FA 198795 (NAF, December 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Golden Bear International, Inc. v. Kangdeock-ho, FA 190644 (NAF, October 17, 2003) (“Respondent’s use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant’s business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”)
Furthermore, nothing in the record indicates that Respondent is either commonly
known by the disputed domain name or authorized to register domain names bearing
Complainant’s trademark. As a result, the Panel finds that Respondent
lacks rights and legitimate interests pursuant to Policy, paragraph 4(c)(ii).
See Gallup, Inc. v. Amish Country Store, FA 96209 (NAF, January 23, 2001)
finding that the respondent does not have rights in a domain name when the respondent
is not known by the mark; see also Compagnie de Saint Gobain v. Com-Union
Corp., WIPO Case No. D2000-0020 (March 14, 2000)
finding no rights or legitimate interests where the respondent was not commonly
known by the mark and never applied for a license or permission from the complainant
to use the trademarked name.
The Respondent has not indicated any rights or legitimate interests in the domain name but has merely quoted parts of the Policy and has thus not rebutted the Complainant’s prima facie showing on lack of rights. Further, Respondent offers no evidence whatsoever regarding its interest in the <fifththirddirect.com > domain name.
The Panel finds that Policy, paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Respondent again made no factual assertions whatsoever regarding bad faith.
Complainant provided undisputed proof that Respondent tried to sell the domain
name <fifththirddirect.com> to Complainant for an amount well in excess
of the cost to register it. This is evidence of bad faith. See The Board
of Regents of the University of Nebraska v. Bill Saedlo, WIPO
Case No. D2000-0154 (April 20, 2000), stating “it is now well established
that the act of registering a trademark as a domain name and then offering to
sell the name to the rightful trademark owner constitutes commercial use”
and bad faith. See also Virtual Works, Inc. v. Volkswagen of America, Inc.,
238 F.3d 264 (4th Cir. 2001), affirming summary judgment against
a registrant who acted in bad faith when it offered <vw.net> for sale
to the VW mark owner.
Respondent’s <fifththirddirect.com> domain name resolves to a website that features links to various competing websites through which Respondent presumably receives click-through fees. Because Respondent’s domain name is confusingly similar to Complainant’s FIFTH THIRD mark, consumers accessing Respondent’s domain name may become confused as to Complainant’s affiliation or sponsorship of the resulting website. The Panel finds that this competing use is evidence of bad faith registration and use pursuant to Policy, paragraph 4(b)(iv). See H-D Michigan, Inc. v. Petersons Automobile aka Larry Petersons, FA 135608 (NAF, January 8, 2003) finding that the disputed domain name was registered and used in bad faith pursuant to Policy, paragraph 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness; see also American University v. Richard Cook, FA 208629 (NAF, December 22, 2003) (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
Due to Respondent’s inclusion of goods and services competing with Complainant’s mark, the Panel infers that Respondent had actual knowledge of Complainant’s rights. See Digi International Inc. v DDI Systems, FA 124506 (NAF, October 24, 2002) holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”; see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) (“Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.”).
The Panel finds that Policy, paragraph 4(a)(iii) has been satisfied.
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 <fifththirddirect.com> be transferred to the Complainant.
Sandra J. Franklin
Date: March 20, 2006