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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fifth Third Bancorp v. Web Advertising, Corp.
Case No. D2006-1225
1. The Parties
The Complainant is Fifth Third Bancorp, Ohio , United States of America, represented by Graydon Head & Ritchey, LLP, United States of America.
The Respondent is Web Advertising, Corp., Nassau,
2. The Domain Name and Registrar
The disputed domain name <bank53.com> is registered
with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2006. On September 26, 2006, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On September 27, 2006, DomainDoorman, LLC transmitted by email 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 October 5, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 27, 2006.
The Center appointed James McNeish Innes as the Sole
Panelist in this matter on November 13, 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 Bankcorp is an Ohio Corporation with a principal office situated in Cincinnati, Ohio, United States of America. It is a multi bank holding company engaged in banking and investment services through its various subsidiaries. Complainant owns the rights to the registered service marks FIFTH THIRD BANK, for banking services, and FIFTH THIRD, for investment consultation and stock brokerage services. The mark FIFTH THIRD BANK was first used by Complainant in 1968. Complainant also owns a number of other 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, including: 53.COM for banking services, FIFTH THIRD TRANSACT for banking services, FIFTH THIRD EQUITY LINE for banking services, BUSINESS 53 for banking services, RETIRE.53 DIRECT for financial planning services.
Complainant is also the registrant and owner of the following domain names that incorporate the terms “FIFTH THIRD” and “53”:
The disputed domain name was first registered by the
Respondent on November 27, 2005.
5. Parties’ Contentions
Complainant’s contentions include the following:
(i) Complainant asserts that Respondent’s domain name <bank53.com> is identical or confusingly similar to Complainant’s federally registered service mark 53.COM for banking services. Complainant also asserts that Respondent’s insertion of the word “BANK” does not distinguish it from Complainant’s marks and from affiliation with Fifth Third Bankcorp, and, in fact, increases the likelihood of confusion by relating the domain name to services traditionally offered by financial institutions. The domain name <bank53.com> is therefore confusingly similar in all material aspects to Complainant’s mark and trade name.
(ii) Complainant asserts that Respondent has no rights or legitimate interest in the disputed domain name. Complainant has absolutely no association or affiliation with Respondent. Furthermore Respondent has never corresponded with Complainant with respect to the use of Complainant’s corporate name or marks. In addition, Complainant also asserts that Respondent’s name does not incorporate the domain name. Complainant is unaware of any trademark registrations owned by Respondent for FIFTHIRD or 53 marks. Complainant is further unaware of any holding out by Respondent as Fifth Third Bank.
(iii) Complainant asserts that 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.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the 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; and
A. Identical or Confusingly Similar
Two separate issues fall for consideration. (1) does
the Complainant have rights in the mark and (2) is the domain name identical
or confusingly similar to any such mark. On the record Complainant has established
rights in the mark. It has also demonstrated continued commercial usage in related
marks since 1968. The insertion of the word “bank” does not distinguish
the domain name from Complainant’s mark. If a domain name wholly incorporates
a trademark, it is confusingly similar for purposes of the dispute policy. See
Eauto L.L.C. v. Eauto Parts, WIPO Case
No. D2000-0096; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,
WIPO Case No. D2000-0662; Fifth
Third Bankcorp v. Domain Active Pty. Ltd., WIPO
Case No. D2003-0884; Fifth Third Bankcorp v. Ashley Khong, WIPO
Case No. D2005-1360.
The disputed domain name is identical and confusingly similar to Complainant’s marks. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the Panel to be proved based upon its evaluation of the evidence presented shall demonstrate a Respondent’s rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii):
(i) before any notice to you [respondent] 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 [respondent] (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 [respondent] 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.
The Respondent has not submitted a Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in registering the domain name. The Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions “Evidence of Registration and Use in Bad Faith”. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark form reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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 endorsement of your Website or location or of a product or service on your Website or location.
The Respondent has made no response in this connection. The Complainant has
made contentions that would lead to the conclusion mentioned in paragraph 4(b)(iv).
The Panel accepts the Complainant’s assertion that the Respondent has
attempted to attract users to its Website by creating a confusion with the Complainant’s
marks for commercial gain. The Panel finds that paragraph 4(a)(iii) of the Policy
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 <bank53.com> be transferred to the Complainant.
James McNeish Innes
Dated: November 27, 2006