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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fifth Third Bancorp v. Joseph Robinson

Case No. D2006-1073

 

1. The Parties

The Complainant is Fifth Third Bancorp, Cincinnati, Ohio, United States of America, represented by Graydon Head & Ritchey, LLP, United States of America.

The Respondent is Joseph Robinson, Chicago, Illinois, United States of America.

 

2. The Domain Name and Registrar

The disputed Domain Name <fifththirdchecking.com> is registered with Melbourne IT trading as Internet Names Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2006. On August 25, 2006, the Center transmitted by email to the Registrar, Melbourne IT trading as Internet Names Worldwide, a request for registrar verification in connection with the domain name at issue. On August 28, 2006, the Registrar 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 August 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2006.

The Center appointed W. Scott Blackmer as the Sole Panelist in this matter on September 27, 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

The Complainant Fifth Third Bancorp is an Ohio corporation based in Cincinnati. It was organized in 1975 as a bank holding company supervised by the United States Federal Reserve Board. The Panel notes that the Complainant appears in the Fortune 500 ranking of America’s largest corporations and that its stock is publicly traded on the NASDAQ stock exchange.

Through its subsidiaries, many of which use “Fifth Third,” “5/3,” or “53” in their names or service marks, the Complainant offers commercial banking and other financial services. It operates full-service banks in ten US states, and it offers credit and debit cards and Internet banking nationally. The Complainant has a significant Internet presence and nearly a score of domain names that incorporate the words “fifth third.”

The Complainant’s unusual name reflects its history. The current corporation is the successor to an Ohio bank formed early in the 20^th Century from the merger of the Third National Bank and the Fifth National Bank. Banking operations have been conducted under the current form of the name, Fifth Third Bank, since 1969.

The Complainant and its predecessors have used FIFTH THIRD BANK as a service mark to brand banking services since 1968. The mark was registered by the United States Patent and Trademark Office (USPTO) on May 21, 1991 (Registration No. 1645502). The Complainant also obtained USPTO registration of FIFTH THIRD as a service mark for investment counseling and stock brokering on July 11, 2000 (Registration No. 2366546), showing first use in commerce in November 1998. In addition, the Complainant holds at least eleven other USPTO registered marks for financial services incorporating its “Fifth Third” name, including FIFTH THIRD PAYCARD, FIFTH THIRD FUNDS, FIFTH THIRD EQUITY LINE, and FIFTH THIRD TRANSACT.

Almost nothing is known about the Respondent, who did not submit a Response in this proceeding. The Respondent registered the Domain Name on March 9, 2006. The Domain Name resolves to a parking website labeled, “This site is under construction.” The page is otherwise filled with links to third-party websites, including a list of financial services links headed, “Try these searches related to www.fifththirdchecking.com.” These include links not to the Complainant’s websites but rather to those of several financial institutions that directly compete with the Complainant.

It does not appear from this website that the Respondent himself has selected the displayed links or necessarily receives any click-through advertising fees. A legend at the bottom of the page indicates that it is “Powered by SBC Yahoo! Web Hosting” and does not otherwise identify the party publishing the website. A link at the top of the page offers more information under the heading “Why am I seeing this page”? That link resolves to a page with a copyright notice in the name of SBC Knowledge Ventures, L.P. and Yahoo! Inc., displaying text that explains as follows:

“The page you’re seeing is an ‘Under Construction’ page, a standard placeholder web page that SBC Yahoo! created for the owner of the web address at which it appears. The temporary home page will remain at this web address (domain) until the owner chooses to replace it with a web page or site of his own . . .

Some standard SBC Yahoo! ‘Under Construction’ pages also display lists of linked search terms and websites. These lists include relevant and/or sponsored search results relevant to the domain of this page and may be used by site visitors to find complementary information on the Web . . . .

Are you the owner of this domain? Remember that you can replace your temporary home page with a personalized web page or site anytime. For help getting started, please choose the link associated with your SBC Yahoo! service below . . . .”

The Panel notes that domains registered through the “SBC Yahoo! Store” are registered by “Internet Names Worldwide (Melbourne IT),” which is the Registrar for the Domain Name. See “http://help.yahoo.com/help/us/sbc/store/manage/sitesettings/sitesettings-15.html”. Thus, it appears that the Respondent obtained registration and perhaps related domain services through SBC Yahoo!, which automatically parked the domain at an SBC Yahoo! website with advertising and search links.¹

On August 1, 2006, counsel for the Complainant sent an email to the Respondent’s registered contact address, demanding that the Respondent cease using the Domain Name and transfer it to the Complainant. The Respondent replied by email on August 2, 2006, saying that the Respondent “has not [sic] relation with 5/3 or fifththirdbank.” According to the Complainant, there has been no further communication between the parties.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to a federally registered FIFTHTHIRD.COM service mark. The Complainant has not authorized the Respondent’s use of the mark and finds no evidence online or in the USPTO database indicating that the Respondent is known by that name, uses it in a bona fide offering of goods or services, or employs it for legitimate noncommercial purposes. Rather, the Complainant suspects that the Respondent benefits from advertising revenues on the parking site, including advertising for the Complainant’s competitors. The Complainant infers that the Respondent selected the Domain Name only because of its potential for misleading consumers seeking the Complainant’s websites, because of the similarity to the Complainant’s famous mark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions in this proceeding. In his email reply to the Complainant’s cease-and-desist message, the only substantive remark made by the Respondent was to disclaim any affiliation with the Complainant.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

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

(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.

Under Paragraph 15(a) of the Rules,

“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.”

A. Identical or Confusingly Similar

The Complaint is expressly grounded on “Complainant’s federally registered service mark FIFTHTHIRD.COM for banking services.” The Complainant does hold the domain name <fiththird.com>, but there is no evidence in the record or in the USPTO trademark database that a mark has been registered in that form. However, as noted above, FIFTH THIRD is a federally registered trademark owned by the Complainant, and the Panel will examine the similarity of the Domain Name with the FIFTH THIRD registered service mark.

The Domain Name includes the FIFTH THIRD mark in its entirety and adds a generic word, “checking,” which does not lessen the likelihood of confusion. Rather, in this instance it heightens the likelihood of confusion, since the Complainant’s banking subsidiaries offer bank checking accounts. See, e.g., Microsoft Corporation v. Wayne Lybrand, WIPO Case No. D2005-0020 (the addition of generic words to a distinctive mark normally does not avoid confusion, especially when the generic word is relevant to the trademark owner’s products or services, as was found to be the case with <microsoftcustomerservice.com>).

The Panel finds, therefore, that the Domain Name is confusingly similar to the Complainant’s registered FIFTH THIRD mark.

B. Rights or Legitimate Interests

The Respondent’s reply to the Complainant’s emailed cease-and-desist letter makes it clear that the Respondent claims no “relation” to the Complainant. The Complainant asserts without contradiction that it has not authorized the Respondent to use the FIFTH THIRD mark.

The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:

“(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 noncommercial 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.”

There is no evidence in the record that any of these circumstances apply. The Respondent has not asserted any right or legitimate interest in the Domain Name, either in this proceeding or in his reply to the Complainant’s cease-and-desist letter. Having “no relation” to the Complainant does not amount to a positive right or legitimate interest in a Domain Name that is confusingly similar to the Complainant’s service mark. The Panel concludes, therefore, that the second element of the UDRP Complaint is satisfied.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), sets forth a non-exhaustive list of circumstances indicating bad faith. The Complaint relies on one of these - Policy, paragraph 4(b)(iv):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”

It is undisputed that the Domain Name is confusingly similar to the Complainant’s distinctive, long-established, and nationally known service mark. It is hard to imagine the value of the Domain Name to any party lacking rights or legitimate interests in the name, except as a means of misleading Internet users interested in the Complainant’s checking account products.

Paragraph 4(b)(iv) addresses misleading domain names used “for commercial gain.” The Respondent’s commercial gain is not obvious on this record, even though the Domain Name resolves to a website with advertising links to banking competitors of the Complainant. The Complainant assumes that the Respondent “may charge some of these third-party websites an advertising fee to be listed on Respondent’s website.” However, from the text on the website itself and the links explaining its function, it appears more likely that SBC Yahoo! controls the website and serves up advertising links through software that automatically selects potentially relevant words and phrases. There is no direct evidence that this form of domain parking is designed to provide click-through advertising payments to the Respondent. The Panel is aware of other registrars who similarly park undeveloped domains by default at websites filled with “relevant” and “popular” links, without remitting any click-through advertising revenues to the registrant. However, the Respondent has not replied to the Complainant’s contentions, which are plausible and may therefore be accepted as unrebutted presumptions.

In any event, the list of instances of bad faith in Paragraph 4(b) is expressly nonexclusive. UDRP panels have often found bad faith in “passive holding” cases where there was no evidence that the disputed domain name had yet been used for commercial gain. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Here, as in Telstra, the Complainant’s mark is distinctive and well known, the Respondent has not come forward with a legitimate reason for registering the Domain Name, and it is difficult to conceive of a good-faith reason to select the Domain Name, precisely because of the fame and distinctiveness of the mark.

Moreover, even if the Respondent did not choose the specific advertising links on the domain parking website (including links to the Complainant’s competitors), as the registrant of the Domain Name the Respondent bears some responsibility for the uses to which it is put. It is unlikely that the Respondent (who, like the Complainant, is located in the United States) was unaware of the Complainant’s famous and distinctive mark. And it is fair to expect that the Respondent would at some time view the website to which his Domain Name resolved. Paragraph 2 of the Policy implicitly requires a good-faith effort to avoid registering and using domain names corresponding to trademarks in violation of law or of the Policy. Paragraph 2 of the Policy, “Your Representations,” is incorporated by reference in the registration agreements of ICANN-approved registrars. It reads as follows:

“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”

The Respondent here registered a Domain Name confusingly similar to the Complainant’s famous and distinctive mark and allowed it to be used to direct visitors to the websites of the Complainant’s competitors. The Respondent has not offered a legitimate reason for doing so. The Panel concludes, therefore, that the Domain Name was registered and used in bad faith within the meaning of paragraph 4(b) of the Policy.

 

7. Decision

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 <fifththirdchecking.com> be transferred to the Complainant.

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W. Scott Blackmer
Sole Panelist

Dated: October 5, 2006

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¹ See, generally, the Wikipedia article on “Domain Parking,” available online at “http://en.wikipedia.org/wiki/Domain_parking”.