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Generic Top Level Domain Name (gTLD) Decisions |
Jeff Davis Bank & Trust Company v.
Frank Small
Claim Number: FA0305000157310
PARTIES
Complainant
is Jeff Davis Bank & Trust Company,
Jennings, LA (“Complainant”) represented by Stephen C. Polito of Stockwell, Sievert, Viccellio, Clements
& Shaddock, L.L.P. Respondent is
Frank Small, Collegedale, TN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <jeffdavisbank.com>
registered with Stargate.com, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Judge
Irving H. Perluss (Retired) is the Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 13, 2003; the Forum received
a hard copy of the Complaint
on May 16, 2003.
On
May 15, 2003, Stargate.com, Inc. confirmed by e-mail to the Forum that the
domain name <jeffdavisbank.com>
is registered with Stargate.com, Inc. and that the Respondent is the current
registrant of the name. Stargate.com, Inc. has verified
that Respondent is
bound by the Stargate.com, 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 22, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 11,
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@jeffdavisbank.com by e-mail.
A
timely Response was received and determined to be complete on June 9, 2003.
On June 16, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Judge Irving H.
Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Jeff
Davis Bank and Jeff Davis Bank & Trust Company are trade names which are
registered with the Secretary of State of Louisiana. These names have been continuously used by Complainant in
commerce since November 18, 1946.
2. Complainant
is a State Chartered Bank domiciled and located in Jennings, Louisiana and
operating in Jefferson Davis parish which is
also known as Jeff Davis Parish,
Louisiana. Complainant also operates
its bank branches in Calcasieu and Allen Parishes, Louisiana. Complainant has made loans in Louisiana,
Texas, and other states.
3. Complainant,
on or about January 5, 1999, registered and established a website and has used
the names <jeffdavisbank.com> and
<jdbank.com> for its websites
since that date.
4. The
disputed domain name registration by Complainant expired on January 5, 2003,
and it was registered by Respondent on January 9,
2003.
5. The
registrar failed to notify the Complainant or its authorized representative of
the need for the renewal of the name.
6. On
or about January 30, 2003, Complainant discovered that the disputed name had
been registered by Respondent.
7. On
or about January 30, 2003, Complainant contacted Respondent, Frank Small, who
had acquired the name. Mr. Small told
Complainant that he had acquired the name for a client who “was a civil war
buff.” At that time Complainant made an
offer to pay to Mr. Small the cost incurred by him in acquiring the name. After two or three days, Complainant again
attempted to purchase the name from Mr. Small and Complainant’s offer to
purchase the name
for the amount of the cost and expenses involved was rejected
by Mr. Small.
8. Complainant
has browsed the Internet and in particular the name, <jeffdavisbank.com>,
which automatically transfers the browser to a website entitled
<gascashandcars.com>. This is a
site registered to Mr. Small and is not in any way connected with any banking
business or banking undertaking, nor does
this site have any relationship to
the civil war or to Jefferson Davis as the former president of the Confederacy.
B.
Respondent
1. Complainant
cannot meet the three required factors under Paragraph 4(a) of the Policy.
2. The
Policy requires that the Complainant first establish that it has rights in the
mark “Jeff Davis Bank.” The Complainant
has not provided evidence that it has a superior right to use of the generic words
“jeff,” “davis,” or “bank” to the
exclusion of the Respondent or any other
entity.
3. Respondent
registered the domain name <jeffdavisbank.com> January 9, 2003,
and it was not until April 28, 2003, that Complainant filed for registration of
the trade name with the State
of Louisiana.
Complainant has not provided any documentation as to the registration of
a federally-registered trademark known as <jeffdavisbank.com>
prior to Respondent’s registration.
4. The existence of a common law
mark is not sufficient to meet Complainant’s burden.
5. The
words “jeff,” “davis,” and “bank” are descriptive and generic terms and used by
thousands of other domain names not owned by Complainant. A reasonable person viewing the Respondent’s
website would conclude that the disputed domain name does not suggest that the
Complainant
is the source, origin, or sponsor of Respondent’s website. Respondent is engaged in no business even
remotely similar to that of Complainant.
Therefore, the disputed domain name is not identical or confusingly
similar to Complainant’s name.
FINDINGS AND DETERMINATIONS
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(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.
There
is no question but that Complainant’s name and that disputed domain name are
identical.[1]
What
is troublesome, however, is that Respondent has charged that JEFF DAVIS BANK is
not a trademark but only a trade name.
In Diversified Mortgage, Inc. v. World Fin. Partners, FA 118308
(Nat. Arb. Forum Oct. 30, 2002), it was said:
The reports and descriptions of the purpose
of the UDRP make clear that these rules are intended only to protect
trademarks, registered
or common law, and not mere trade names, due to the fact
that trade names are not universally protected as are trademarks. See
WIPO Final Report of April 30, 1999 on The Management of Internet Names and
Address: Intellectual Property Issues,
¶ 167.
Of
great importance, however, is that Complainant has used the name JEFF DAVIS
BANK in commerce since it was established on November
18, 1946. In the Panelist’s view, accordingly, JEFF
DAVIS BANK is neither generic, nor descriptive, and, by virtue of its long
usage, has achieved
protected status under the Policy as a common law
trademark.
As
Professor McCarthy has observed (McCarthy, Trademarks
and Unfair Competition (3/2001 update) §16.18, p. 16-33:
Trademark ownership is not acquired by
federal or state registration.
Ownership rights flow only from prior use, either actual or
constructive. As the Federal Circuit
has observed: ‘The requirements of both
adoption and use devolve from the common law; trademark rights in the United
States are acquired by such
adoption and use, not by registration.’ Apart from statutory constructive use,
priority and ownership of a trademark are not governed by a race to the Patent
and Trademark
Office, but ‘[i]t is a race to the market place.’ (Footnotes omitted.)
The
first prong of Complainant’s burden has been established.
With
respect to Respondent’s legitimate interest or rights to use the disputed
domain name, his explanation that he registered the
name for a “civil war buff”
is nonsensical.
Moreover,
Complainant owned the domain name <jeffdavisbank.com> until the
expiration of its registration on January 5, 2003.
Respondent
registered the disputed domain name on January 9, 2003.
Complainant’s
prior registration of the disputed domain name favors finding that Respondent
lacks any rights to or legitimate interests
in the domain name. See American Anti-Vivisection Soc’y v. “Infa dot
Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding
that Complainant’s prior registration of the same domain name is a factor in
considering
Respondent’s rights or legitimate interest in the domain name); see
also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (finding that “Respondent’s opportunistic registration of the
Complainant’s domain name,
within 24 hours of its lapse, weighs strongly in
favor of a finding that Respondent has no rights or legitimate interests in the
disputed domain name”).
The
Panelist finds that Complainant has established the second prong of its
required burden. The law abhors
forfeitures.
It
is evident that Respondent registered and is using the <jeffdavisbank.com>
domain name in bad faith.
This
is because when browsing the Internet, utilizing the disputed domain name,
there is an automatic transfer to a website entitled
<gascashandcars.com>
owned by Respondent, where assistance in purchasing automobiles, among other
services, is sold.
Thus,
Respondent used the disputed domain name to divert Internet traffic to his
commercial website. This clearly
establishes that Respondent intentionally attempted to attract Internet users
to Respondent’s website for commercial
gain by creating a likelihood of
confusion with Complainant’s mark, which is evidence of bad faith registration
and use pursuant
to Policy Paragraph 4(b)(iv).
See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb.
Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet
users seeking Complainant’s site
to its own website for commercial gain); see
also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract
users to a website sponsored by Respondent).
In
the Panelist’s opinion, confusion, and not competition, is the real test of
trademark infringement, and bad faith under the Policy.
The
third prong of Complainant’s burden has been established.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <jeffdavisbank.com>
domain name be TRANSFERRED from Respondent to Complainant.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: June 27, 2003
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