WIPO Arbitration and Mediation Center
Fifth Third Bancorp v. Domain for Sale chu,y
Case No. D2006-1208
1. The Parties
Complainant is Fifth Third Bancorp (“Complainant”), a corporation incorporated under the laws of the State of Ohio, with a principal place of business located in Cincinnati, Ohio, United States of America.
Respondent is Domain for Sale chu,y (“Respondent”) with a post office box in San Diego, California, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <5-3.com> (the “Domain Name”). The registrar is Wild West Domains, Inc. (the “Registrar”) located in Scottsdale, Arizona, United States of America.
3. Procedural History
On September 19, 2006, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant. On September 21, 2006, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.
On September 21, 2006, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent’s name.
The Center verified that the Complaint with Amendment satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On October 2, 2006, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy of the Notification to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On October 27, 2006, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.
On November 16, 2006, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Panel.
4. Factual Background
Complainant is an Ohio corporation organized in 1975 and is a bank holding company under the Bank Holding Company Act (“BHCA”) of 1956 and subject to regulation by the Board of Governors of the Federal Reserve Board (“FRB”). Complaint has its principal office located in Cincinnati, Ohio and is a multi-bank holding company as defined in the BHCA and is registered as such with the FRB. At December 31, 2004, the Complainant’s wholly-owned second tier holding company, Fifth Third Financial Corporation, had six wholly- owned direct subsidiaries. Fifth Third Bank; Fifth Third Bank (Michigan): Fifth Third Community Development Corporation; Fifth Third Investment Company; Old Kent Capital Trust I and Fifth Third Reinsurance Company, LTD.
Complainant, through its subsidiaries, engages primarily in commercial, retail and trust banking, electronic payment processing services and investment advisory services. Significant direct subsidiaries of the Complainant’s affiliate banks consist of: The Fifth Third Company; Fifth Third Leasing Company; Fifth Third International Company; Fifth Third Holdings, LLC; Fifth Third Securities, Inc.; Fifth Third Real Estate Capital Markets Company; Fifth Third Mortgage Company; Fifth Third Mortgage Insurance Reinsurance Company; Fifth Third Insurance Agency, Inc.; Old Kent Investment Corporation; Home Equity of America, Inc.; Fifth Third Asset Management, Inc.; Old Kent Mortgage Services, Inc.; and GNB Management, LLC. The Complainant’s subsidiaries provide a wide range of financial products and services to the retail, commercial, financial, governmental, educational and medical sectors, including a wide variety of checking, savings and money market accounts, and credit products such as credit cards, installment loans, mortgage loans and leasing. Each of the banking subsidiaries has deposit insurance provided by the Federal Deposit Insurance Corporation (“FDIC”) through the Bank Insurance Fund (“BIF”) and/or the Savings Association Insurance Fund (“SAIF”).
Fifth Third Processing Solutions, Inc., Complainant’s electronic payment processing subsidiary, operates for itself and other financial institutions, a proprietary automated teller machine (“ATM”) and Point of Sale (“POS”) network, Jeanie®. The Complainant’s banking subsidiaries participate in several regional shared ATM networks including “NYCE®,” “Pulse®,” and “Star®.” The Complainant’s banking subsidiaries also participate in “Cirrus®,” and “Plus System®,” which are international ATM networks. Fifth Third Processing Solutions, Inc. also provides electronic fund transfers, ATM processing, electronic personal banking, merchant transaction processing, electronic bill payment and electronic benefit transfer services for thousands of regional banks, bank holding companies, service retailers and other financial institutions throughout the United States.
Complainant adopted and has continuously used since that adoption, the inherently distinctive marks FIFTH THIRD BANK and FIFTH THIRD. 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 in the United States of America. The service mark FIFTH THIRD BANK was first used by Complainant in 1968. Service mark application for FIFTH THIRD BANK and FIFTH THIRD were filed in the United States of America on June 25, 1990 and October 19, 1999, respectively. The service mark FIFTH THIRD BANK was registered as Registration No. 1645502 on May 21, 1991, and the service mark FIFTH THIRD was registered as Registration No. 2366546 on July 11, 2000.
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 the following federally registered trademarks and service marks and federally pending applications: 53.COM for banking services (Serial No. 75911170) and others using the phrases “53” and “5/3” (collectively the “FIFTH THIRD and 53 Marks”). Complainant has also registered a series of domain names using the phrases “Fifth Third” and “53.”
Respondent registered the Domain Name <5-3.com> on June 20, 2003. The website to which the Domain Name resolves offers Internet users “related searches” including links to subdomains that link directly to financial institutions in direct competition with Complainant.
5. Parties’ Contentions
A. Complainant’s contentions
i. Complainant contends that it has registrations of the FIFTH THIRD and 53 Marks, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the FIFTH THIRD and 53 Marks. 15 U.S.C. § 1115.
ii. Complainant argues that the Domain Name is confusingly similar to the FIFTH THIRD and 53 Marks, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the 53 Mark with the addition of a non-descriptive hyphen.
iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Complainant alleges that Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services.
Complainant alleges that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because it is not commonly known under Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the FIFTH THIRD and 53 Marks in a domain name or in any other manner.
Complainant alleges that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant further alleges that Respondent has deliberately registered the Domain Name containing the FIFTH THIRD and 53 Marks to attract the attention of Internet users searching for Complainant. Complainant contends that Respondent is simply attracting Internet traffic and then for a fee sending the traffic to other websites in competition with Complainant.
iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii). Specifically pursuant to Paragraph 4(b)(iv), Complainant further contends that the Respondent by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or, by creating a likelihood of confusion with the Complainant’s FIFTH THIRD and 53 Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website
B. Respondent’s contentions
i-iv. Respondent has not responded to any of Complainant’s allegations.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Because both the Complainant and Respondent are domiciled in the United States of America and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772, n. 3.
Failure to File a Response
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that 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 legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
Enforceable Trademark Rights
Complainant contends that it has registrations of the FIFTH THIRD and 53 Marks, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the FIFTH THIRD and 53 Marks. 15 U.S.C. § 1115.
From the evidence presented, the Panel finds that Complainant owns registrations and other rights to the FIFTH THIRD and 53 Marks. The registrations serve as prima facie evidence of its ownership and the validity of the FIFTH THIRD and 53 Marks. 15 U.S.C. § 1115.
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
Respondent has not contested the assertions by Complainant that it has valid registrations of the FIFTH THIRD and 53 Marks. It is the Panel’s belief that Respondent has not met its burden. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the FIFTH THIRD and 53 Marks.
Identity or Confusing Similarity
Complainant further contends that the Domain Name is identical with and confusingly similar to the FIFTH THIRD and 53 Marks pursuant to the Policy paragraph 4(a)(i), because it wholly incorporates the 53 Mark with the addition of a non-descriptive hyphen. Respondent has not contested the assertions by Complaint that the Domain Name is confusingly similar to the FIFTH THIRD and 53 Marks.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.
The Panel notes that the entirety of the 53 Mark is included in the Domain Name.
Generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).
Here, Respondent’s <5-3.com> Domain Name is confusingly similar to the FIFTH THIRD and 53 Marks because it contains the entirety of the 53 Mark, but for a non-descriptive hyphen.
Therefore, the Panel finds that the Domain Name is confusingly similar to the FIFTH THIRD and 53 Marks pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights referred to under Complainant’s Contentions applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
Respondent has no relationship with or permission from Complainant for the use of the FIFTH THIRD and 53 Marks.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Domain Name:
(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.
Complainant has sustained its burden of coming forward with allegations that the Respondent lacks rights to or legitimate interests in the Domain Name. Respondent has presented no evidence to the contrary. Furthermore, the file contains no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Bad Faith
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(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 from 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 complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii). Specifically pursuant to Paragraph 4(b)(iv), Complainant contends that the Respondent by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to its website or, by creating a likelihood of confusion with the Complainant’s FIFTH THIRD and 53 Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
The Panel found above that the Domain Name is confusingly similar to either the FIFTH THIRD and 53 Marks pursuant to the Policy paragraph 4(a)(i). Complainant alleges that Respondent does nothing more than route traffic from that it has captured on the <5 - 3.com> website to other commercial websites for a fee. Respondent has failed to contest these allegations. Therefore, the Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv) and that Respondent registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).
7. Decision
The Panel concludes (a) that the Domain Name <5-3.com> is confusingly similar to Complainant’s registered FIFTH THIRD and 53 Marks, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Richard W. Page
Sole Panelist
Dated: December 1, 2006