DECISION

U.S. Bancorp Licensing, Inc. v. Z, L

Claim Number:  FA0304000155891

PARTIES

Complainant is U.S. Bancorp Licensing, Inc., Minneapolis, MN (“Complainant”) represented by Michael L. Gannon of Fish & Richardson P.C., P.A.. Respondent is Z, L of Las Vegas, NV (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <usbank.cc>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 25, 2003; the Forum received a hard copy of the Complaint on April 28, 2003.

On April 29, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <usbank.cc> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On May 1, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 21, 2003, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@usbank.cc by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 2, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <usbank.cc>, is identical to Complainant’s USBANK mark.

2. Respondent has no rights or legitimate interests in the <usbank.cc> domain name.

3. Respondent registered and used the <usbank.cc> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, U.S. Bancorp Licensing, Inc., holds many federal service mark registrations for marks incorporating the words U.S. BANK, including the USBANK mark (U.S. Reg. No. 2,445,731, registered on the Principal Register of the U.S. Patent and Trademark Office on April 24, 2001). Complainant has used its mark through its related companies and licensees in connection with financial services provided to retail, institutional, and commercial customers across the U.S. since as early as 1963.

Respondent, Z, L, registered the <usbank.cc> domain name on February 6, 2003, but is not licensed or authorized to use Complainant’s USBANK mark for any purpose. The website associated with the disputed domain name displays a link to a website at the <4coc.org> domain name. This website is hosted by the Church of Change, Inc., a Nevada non-profit corporation which provides information about its philosophy and invites Internet users to make donations over the Internet. A link to complaint websites against Complainant is also displayed, as is a series of links related to Respondent’s dealings with Complainant, addressed below.

The evidence before the Panel indicates that Respondent’s real name is Michael John, the President of the Church of Change, Inc. Mr. John provides his address at the website associated with the disputed domain name, which is identical to the address listed for Respondent in the WHOIS contact information for the <usbank.cc> domain name. The disputed domain name clearly states that “My name is Michael John and I take full responsibility for this web site,” before proceeding to display a series of links related to Mr. John’s dealings with Complainant. Specifically, Mr. John alleges that Complainant committed a criminal act by filing a falsified Bad Check Complaint against him.

These charges stemmed from a check that Respondent deposited with Complainant on August 1, 2001, for $125,000., which was returned unpaid due to non-sufficient funds. On October 18, Complainant closed Respondent’s business account at a loss of $84,940.88 and subsequently filed a Bad Check Complaint against Respondent. Respondent was subsequently indicted and charged with four felony counts based on Complainant’s allegations.

On December 11, 2002, Respondent filed a civil action in Nevada state court against Complainant for $10,000,000. in damages stemming from the incident. On January 10, 2003, Complainant moved for a more definite statement, alleging that Respondent’s complaint failed to state a proper claim for relief. Respondent’s More Definite Statement was filed on February 14, 2003, eight days after its registration of the <usbank.cc> domain name. Respondent’s claim against Complainant was subsequently dismissed with prejudice.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

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) 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.

Identical to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the USBANK mark through proof of registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as by widespread and continuous use of the mark in commerce.

The domain name registered by Respondent, <usbank.cc>, is identical to Complainant’s USBANK mark. The disputed domain name duplicates Complainant’s mark with the exception of the addition of the top-level domain “.cc,” an inconsequential feature for the purposes of Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to Complainant’s TROPAR mark).

Accordingly, the Panel finds that the <usbank.cc> domain name is identical to Complainant’s USBANK mark under Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established that it has rights to and legitimate interests in the mark contained in its entirety in the domain name at issue.  Complainant met its burden of proving that Respondent has no rights or legitimate interests in the <usbank.cc> domain name by demonstrating that Respondent does not qualify for any of the three “safe harbors” provided for domain name registrants in Policy ¶¶ 4(c)(i)-(iii). Such a showing shifts Complainant’s burden to Respondent, who must come forward with evidence rebutting Complainant’s allegations in order to prevail on this element. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Respondent uses the disputed domain name to host what amounts to both a complaint website against Complainant and a portal to its non-profit corporation’s website at the <4coc.org> domain name. The website of Respondent’s corporation openly solicits donations from Internet users to fund its objectives. Appropriating Complainant’s mark and the goodwill surrounding it in order to gain financial benefit for Respondent’s corporation is not a “bona fide” offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that using Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Respondent, as either Michael John or the name “Z, L” listed in the disputed domain name’s WHOIS contact information, is not “commonly known by” the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding Respondent has no rights in a domain name when Respondent is not known by the mark).

Given Respondent’s previous contentious dealings with Complainant, the Panel considers Respondent’s failure to contest the Complaint as evidence that it lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because the Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <usbank.cc> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s registration of the <usbank.cc> domain name came in the midst of a civil proceeding against Complainant. Its registration came after Respondent was indicted and charged by the Clark County District Attorney’s Office in Nevada on Complainant’s complaint with four felony counts stemming from alleged check fraud. For these reasons, the Panel finds that Respondent was well aware of Complainant’s rights in the USBANK mark when it chose to register a domain name identical to that mark.  This is evidence that the domain name was registered in bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (“The Respondent intentionally registered a domain name which uses the Complainant’s name.  There is no reasonable possibility that the name karlalbrecht.com was selected at random.  There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith”); see also Cabela’s Incorporated v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000) (finding evidence of bad faith where Respondent registered the domain name in response to Complainant’s request that it transfer the domain name to Complainant, stating plainly, “Respondent registered this domain name in bad faith to retaliate against Complainant”).

Respondent’s principal use of the disputed domain name involves posting disparaging information about Complainant and providing links to other websites critical of Complainant. Although honest criticism of an entity or person is a protected right, that criticism must be based on fact and cannot be done under the lawfully protected mark of an organization. While these proceedings are not designed to determine whether Respondent has a factual basis for the claims it makes against Complainant, Respondent’s wholesale use of Complainant’s mark for its criticism website is evidence of bad faith. Respondent’s speech is not protected speech when it is presented to the public under the misleading guise of Complainant’s registered mark. See Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (finding that “[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of (the Complainant) . . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant”); see also Baker &Daniels v. DefaultData.com, FA 104579 (Nat. Arb. Forum Mar. 27, 2002) (finding that because Respondent’s <bakeranddaniels.com> domain name merely incorporates Complainant’s trademark, without more, it is not protected by the First Amendment).

Respondent uses the disputed domain name to gain financial support for its corporation, the Church of Change, Inc. Although Respondent’s corporation is a non-profit organization, its use of Complainant’s mark to procure funds is a commercial activity for the purposes of Policy ¶ 4(b)(iv). The Panel finds that in registering a domain name identical to the mark of an entity against which Respondent was facing legal proceedings in both a criminal and civil context, Respondent intended to create a likelihood of confusion as to the source or sponsorship of the disputed domain name for commercial gain, fulfilling the criteria for bad faith use and registration under Policy ¶ 4(b)(iv). See Nat’l Rifle Ass'n. v. fredg.com, FA 95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where Respondent registered the domain names <friendsofnra.com>, <friendsofnra.net>, and <friendsofnra.org> with the intention of using the domain names in connection with individual NRA fundraising, but without permission from Complainant to use the registered marks); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

Furthermore, Respondent’s fine-print disclaimer at the disputed domain name does nothing to alleviate the initial confusion imparted upon Internet users who mistakenly access Respondent’s website en route to Complainant’s websites. This disclaimer is not a mitigating factor in the Panel’s determination of whether the domain name was used in bad faith. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of Complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by Complainant); see also Las Vegas Sands, Inc. v. Red Group, D2001-1057 (WIPO Dec. 6, 2001) (justifying the conclusion that Respondent wishes to trade on the fame of Complainant’s trademark, regardless of the presence of a small-print disclaimer, because the disclaimer fails to remedy initial confusion).

The Panel thus finds that Respondent registered and used the <usbank.cc> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <usbank.cc> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: June 16, 2003.

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/610.html