|Kläger||Fifth Third Bancorp|
|Beklagter||Texas International Property Associates|
|Entscheider||Abbott, Frederick M.|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fifth Third Bancorp v. Texas International Property Associates
Case No. D2007-0537
1. The Parties
The Complainant is Fifth Third Bancorp, of Cincinnati, Ohio, United States of America, represented by Graydon Head & Ritchey LLP, United States of America.
The Respondent is Texas International Property Associates, of Dallas, Texas, United States of America, represented by the Law Office of Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed domain name <53rewards.com> is registered with Compana, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2007. On April 11, 2007, the Center transmitted by email to Compana, LLC a request for registrar verification in connection with the domain name at issue. On April 17, 2007, Compana, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 May 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2007. The Response was filed with the Center on May 29, 2007.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 15, 2007. 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 is the owner of a service mark registration for the term “Fifth Third Bank” on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 1645502, dated May 21, 1991, in international class (IC) 36, covering “banking services”, and claiming date of first use and first use in commerce of 1968. Complainant is the owner of numerous additional service mark registrations at the USPTO that incorporate the term “FIFTH THIRD”. including
FIFTH THIRD RETIREMENT ADVANTAGE, FIFTH THIRD ASSET MANAGEMENT, FIFTH THIRD PROCESSING SOLUTIONS and FIFTH THIRD FUNDS. (Complaint, Annexes 5 & 6)
Complainant is the owner of service mark registration at the USPTO for a number of terms incorporating the numeric symbol “53” and “5/3”, including 53.COM, registration number 2568134, dated May 7, 2002, in IC 36, covering “banking services”, and claiming date of first use and first use in commerce of September 13, 2000; as well the alpha-numeric combinations BUSINESS 53; CLUB 53; RETIRE.53 DIRECT; 5/3 PCA; 5/3 WHOLESALE CONNECT; 53POINTSHARE; RETIRE.53.COM, and; stylized 5/3. (Id.)
Complainant is a bank holding company that through various affiliated entities owns and operates retail and commercial banking and financial services for individual consumers and businesses. Among its services, Complainant makes available to its customers electronic banking and financial services on the Internet. (Complaint)
Complainant has registered numerous domain names in connection with its business, including <53.com>, <53bank.com>, <53bancorp.com>, <53securities.com>, <53bank.biz>, <fifththirdrewards.com>, <fifththird.com>, <fifththirddirect.com> and <fifththirdbank.com>. It operates commercial Internet websites at various Internet addresses, including at “www.53.com”. (Id., Annex 7)
Among the programs operated by Complainant, including over the Internet is a program referred to as “Fifth Third Rewards” which permits customers to accumulate “points” which can be redeemed for goods or services, and a program referred to as 53PointShare. (Response)
According to the Registrar’s Verification response, Respondent is registrant of the disputed domain name <53rewards.com>. According to a Register.com WHOIS database report submitted by Complainant, the record of registration for the disputed domain name was created on February 10, 2005.
Respondent registered the disputed domain name for the purpose of contracting to allow advertisers to associate and link third party websites with Respondent’s website (addressed by the disputed domain name) based on search requests entered by Internet users based on Google search terms. According to Respondent, it exercises no control over the content that is displayed on the its home page addressed by the disputed domain name, which content is instead determined by the amount which prospective advertisers are willing to pay for association with the disputed domain name, which consequently determines what Internet users find on Respondent’s website. Respondent receives payment based on usage of the domain name, although Respondent has not specified the formula or mechanism that is used to determine the amount of payment it receives. (Response)
A printout of the home page addressed by the disputed domain name, and submitted by Complainant, is headed “Welcome to 53rewards.com”. This is followed by “For resources and information on Credit Card Reward and Reward prog[page cut off]”. The center part of the page refers in order to “Top Cash Back Credit Cards”, “Cash Back Credit Cards”, “Cash Rewards Credit Card”, etc. Similar terms are listed in a left side column of “Related Searches”. Complainant has furnished examples of linked websites reached by “clicking through” links on Respondent’s website, including web pages offering “Bank of America Financial Rewards Visa Platinum Plus” credit cards identified by the “bankofamerica.com” domain name. Other click-through links direct Internet users to credit cards issues by Chase, Citibank and Discover Card. (Complaint, Annex 8)
By email of March 7, 2007, Complainant (through its counsel) transmitted a cease and desist and transfer demand to Respondent. By emails dated March 7 and April 3, 2007, Respondent (through its counsel) rejected Complainant’s demand. While acknowledging that Complainant owned certain trademark rights, Respondent’s counsel expressed the view that Respondent’s use of the disputed domain name did not infringe those rights. (Complaint, Annex 9)
The Registration Agreement in effect between Respondent and Compana, LLC subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts that it has rights in various service marks, including FIRST THIRD BANK and 53.COM, and that the disputed domain name is confusingly similar, especially, but without limitation, to its 53.COM registered service mark.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent has not in any way been authorized by Complainant to make use of its 53.COM or other service marks, that Respondent has not been commonly known by the disputed domain name, and that Respondent has not used the disputed domain name for a bona fide offering of services prior to notice of a dispute, or in a fair or legitimate non-commercial manner. Complainant alleges that Respondent’s sole use of its service mark in the disputed domain name involves directing Internet traffic to a website that diverts Internet users to offers of services in competition with those of Complainant, which is not bona fide use or fair use.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith by: (1) intentionally attracting for commercial gain Internet users to its website by creating confusion as to Complainant’s sponsorship or affiliation with its website, and (2) because there is no conceivable good faith use of Complainant’s trademark, Respondent also registered the dispute domain name to extort money from Complainant.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent does not contest that Complainant owns well-known service mark rights in FIFTH THIRD BANK, nor does Respondent contest that Complainant holds a registered service mark for 53.COM, among other service marks.
Respondent contends that Complainant does not hold exclusive rights to use the term “53” in commerce, and indicates that other persons own trademark and service mark registrations at the USPTO using the term “53” either alone or in combination (e.g., by DAP Brands for painter’s putty and by Thomas & Betts International for metallic liquid light conduit connectors, both for “53” standing alone). Respondent indicates that by Complainant’s logic, DAP and Thomas & Betts could not use their trademarks in a domain name.
Respondent asserts that the term “rewards” used in the disputed domain name is a common dictionary term, generic and descriptive, that has no inherent relationship to the banking industry. The term “rewards” is widely used by third parties in connection with “rewards programs” offered by various industries, including, for example, by well known book sellers. Therefore, according to Respondent, the combination of “53” with the generic and descriptive term “rewards” does not create a domain name confusingly similar to Complainant’s 53.COM service mark.
Respondent asserts that it has rights or legitimate interests in the disputed domain name because it is using common generic terms to permit third party advertisers to promote their products through a website identified by the disputed domain name. Respondent asserts that prior dispute settlement panels under the Policy have recognized that when a respondent has no control over the terms advertisers bid on and which appear on Google’s website, that a respondent is not responsible for potentially “offending content” where they have contracted with third parties such as Google or Yahoo (citing Admiral Insurance Services v. Dicker, WIPO Case No. D2005-0241).
Respondent asserts that it does not require Complainant’s authorization to use its service mark because it is comprised of commonly descriptive generic terms. It asserts that it was using these terms for bona fide commercial purposes prior to notice of a dispute, and that it has legitimate interests in the use of generic and descriptive terms.
Respondent states that because it registered and used what it considered to be generic and descriptive terms, its registration and use could not be in bad faith. It further argues that because it is in the business of providing “locator services” it is not attempting to pass itself off as Complainant or any other bank. Respondent asserts that it has created and is operating a good faith business, and that there is no evidence of intent to target Complainant.
Respondent requests the Panel to reject Complainant’s request to direct the Registrar to transfer the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Complainant and Respondent have each filed submissions. The Panel is satisfied that Respondent was given adequate notice of these proceedings, and that each party has been given adequate opportunity to present its position.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has demonstrated ownership of rights in the service marks FIFTH THIRD BANK, 53.COM, and 53POINTSHARE, among other service marks, for use in the banking and financial services sector (see Factual Background, supra). Respondent has not contested Complainant’s rights in the FIFTH THIRD BANK, 53.COM or 53POINTSHARE service marks, as registered and used in commerce by Complainant. The Panel finds that Complainant has rights in the FIFTH THIRD BANK, 53.COM and 53POINTSHARE marks, among others, for use in the banking and financial services sector.
Complainant asserts that the disputed domain name, <53rewards.com> is confusingly similar to its 53.COM service mark, among others. Respondent contends that the disputed domain name is not confusingly similar because the term “53” is registered and used by other businesses in connection with products unassociated with the banking sector, and because the term “rewards” is a common descriptive term that cannot be subject to the exclusive use of a single business or person. The disputed domain name <53rewards.com>, according to Respondent, is the mere combination of two generic or commonly descriptive terms, or the combination of a service mark used by various parties with a common generic or descriptive term, such that Internet users would not confuse the disputed domain name with Complainant and its services.
The fact that the term “53” is registered by more than one party and used by those parties in connection with different goods and services is not at all unusual from a trademark law standpoint. That is a principal reason why trademarks are registered for classes of goods and services. Contrary to Respondent’s argument (see Respondent’s contentions, supra) that this logically means that trademark owners of “53” other than Complainant could not use their mark in a domain name, this instead means that potentially several different trademark owners could demonstrate rights or legitimate interests in a domain name using “53” based on their trademark ownership.
The disputed domain name uses Complainant’s 53.COM service mark, and inserts the term “rewards” between “53” and “.com”. As Respondent notes, the term “rewards” is commonly used by businesses to refer to programs according benefits to customers based on use of products or services. Its use is not specifically limited to the banking sector, but is used in various sectors including travel and retail vending of various kinds. This proceeding is not, however, concerned with Respondent’s use of the generic term “rewards” in isolation. It is instead concerned with Respondent’s use of the term “rewards” in combination with Complainant’s 53.COM service mark registered and used in the banking sector.
The Panel is persuaded that the term “53.COM” when combined with “rewards” to form the disputed domain name, would likely be associated by Internet users with Complainant and its banking and financial services. That is, the disputed domain name <53rewards.com> is confusingly similar to 53.COM, because it combines Complainant’s service mark with a common term that consumers would expect to be associated with Complainant. The fact that Complainant also uses the 53POINTSHARE and FIFTH THIRD BANK service marks (the latter of which Respondent states is “well known”), enhances the likelihood of confusion because Internet users are likely to associate “53” and “FIFTH THIRD” with Complainant and its services. Such factors are sufficient to warrant a finding of confusing similarity for the purpose of the first element of the Policy.
It is noteworthy that use of the disputed domain name as an Internet search term generates responses that appear virtually exclusive to the consumer banking sector. If Respondent were correct in its assertion that the combination <53rewards.com> is industry-sector neutral, entering the term in a search engine should yield results across a spectrum of industry sectors. Instead, it appears only to yield results for competitors of Complainant in the banking and financial services sector.
The Panel finds that the disputed domain name is confusingly similar to the 53.COM service mark in which Complainant holds rights.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.” (Policy, paragraph 4(c))
Respondent asserts that it has rights or legitimate interests in the disputed domain name because it is providing a neutral service to advertisers by allowing them to bid on key search terms which include the disputed domain name, and which then direct Internet users to Respondent’s website where links are provided to the websites of those advertisers. Respondent asserts that it has no control over or responsibility for the content of the information displayed on its website. This neutral “click through” advertising mechanism is, in Respondent’s view, a bona fide offering of services prior to notice of a dispute, or a fair use of Complainant’s service mark, assuming (for the sake of argument) that the disputed domain name is otherwise confusingly similar to Complainant’s service mark.
The Panel does not accept Respondent’s legal analysis. A party that registers a domain name that is confusingly similar to the service mark of a third party does not avoid responsibility for whatever use may be made of that domain name and service mark merely by subcontracting control over use of the domain name to a revenue generating advertiser. By executing its Registration Agreement with Compana, LLC, Respondent accepted legal responsibility for use of the disputed domain name. Complainant is not required to proceed against Respondent’s advertising subcontractor for abusive domain name registration and use.
The fact that the content on Respondent’s website may be determined by the amount that advertisers are willing to pay for promotion and linkage to their own websites also does not absolve Respondent for the content that is on its website. Respondent is ultimately responsible for the content displayed on its website. The fact that this content is determined by advertising bids from third parties – for which Respondent has contracted and for which it is being paid – does not obviate that conclusion. See Park Place Entertainment Corporation v. Anything.com Ltd., WIPO Case No. D2002-0530.
Respondent’s website diverts Internet users who likely are seeking Complainant and its services to third party providers of competitive services. Because Complainant’s 53.COM service mark is distinctive in connection with the banking sector, it is implausible that Respondent registered the term “53rewards.com” without knowledge of Complainant’s mark. Its offering of services prior to notice of a dispute is not bona fide because Respondent was presumably aware of Complainant’s mark. Respondent’s use of Complainant’s 53.COM service mark is not “fair” because it is merely being used to divert Internet traffic to third party competitors of Complainant.
The panel decision relied on by Respondent in support of its position, Admiral Insurance Services v. Dicker, WIPO Case No. D2005-0241, is materially distinct from a factual and legal standpoint to the instant proceeding. In the referenced proceeding, the respondent and complainant were based in different countries, and the respondent was presumed not to have knowledge of the complainant’s mark when it registered the domain name in dispute. More important, the respondent had used the generic term at issue, “Elephant”, primarily to provide information on its website relating to the mammal described by the term “Elephant”, although at some stage advertising references to competitors of the complaining party may have sporadically appeared on the respondent’s website. The panel determined that the respondent made bona fide use of the domain name prior to notice of a dispute. In that context, it also said that it need not make a determination regarding whether subsequent intentional advertising using the complainant’s mark would make the prior use illegitimate, observing that the respondent did not in any case have control over the advertisements.
Respondent in this proceeding has not demonstrated that it used the disputed domain name to provide some generic or commonly descriptive information about 53.COM at any stage. Moreover, the appearance of advertisements for competitors on its website is not sporadic; instead, it is the entire content of the website. Whatever the panel in Admiral Insurance may have intended in its statement regarding control over content in dicta, it does not apply in this proceeding. Experimental Aircraft Association (EAA) v. EAA.COM, NAF Case No. FA0310000206309, a case also cited by Respondent and referenced by the panel in Admiral Insurance, is clearly distinguishable on the facts from this proceeding.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the dispute domain name.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] website or location or of a product or service on your website or location” (id., paragraph 4(b)(iv)) .
Respondent has used the disputed domain name, which is confusingly similar to Complainant’s service mark, for the purpose of intentionally attracting for commercial gain Internet users to Respondent’s website, by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. While Respondent’s website is being addressed by Complainant’s service mark, the content on Respondent’s website refers to and links almost exclusively (if not exclusively) to third parties offering services competitive with those of Complainant. Respondent is being paid for click throughs (or other advertising linkages) to such third party competitors. Such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
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, <53rewards.com> be transferred to the Complainant.
Frederick M. Abbott
Date: June 29, 2007