DECISION

 

Global Informational Licensing Corporation v. Bankers Online

Claim Number: FA0405000267427

 

PARTIES

Complainant is Global Informational Licensing Corporation (“Complainant”), represented by Mark Lerner, of Satterlee Stephens Burke & Burke LLP, 230 Park Avenue, New York, NY 10169.  Respondent is Bankers Online (“Respondent”), 2541 Flint Ridge Road, Edmond, OK 73003.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <americanbankeronline.com>, registered with Go Daddy Software, 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.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 30, 2004; the Forum received a hard copy of the Complaint on May 3, 2004.

 

On May 3, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <americanbankeronline.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 10, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 1, 2004 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@americanbankeronline.com by e-mail.

 

A timely Response was received and determined to be complete on June 1, 2004.

 

On June 4, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

· Complainant is the owner of the mark AMERICAN BANKER (Serial No. 76/570767) in connection with a financial newspaper.  Through its predecessor in interest and licensee, it has used the mark in commerce in the United States since at least as early as 1835.

· Complainant has used the mark AMERICAN BANKER ONLINE in connection with an online publication and services since 1996.

· Respondent’s domain name "americanbankeronline.com" (the "Domain") is merely Complainant’s trademark for its online services, or the mark for its print publication with the addition of the generic term "online."

· Respondent is using the Domain for a site that mirrors and/or redirects visitors to its bankersonline.com site.  The Respondent is a competing publisher of newsletters on the banking industry. Its website is directed to bankers – the precise target audience for Complainant's publications and website.

· Respondent has refused to transfer the Domain despite the lack of any rights to the AMERICAN BANKER or AMERICAN BANKER ONLINE marks.  Despite Complainant’s longstanding use of the AMERICAN BANKER marks in the United States in connection with print and electronic publications on banking and Complainant’s efforts to resolve this matter amicably, Respondent has refused to transfer the Domain.  The panel should therefore not permit the Respondent to continue its bad faith use of the Domain.

 [a.] The Domain Name and Trademark are Confusingly Similar

The Complainant, Global Informational Licensing Corporation (hereinafter “GILC” or “Complainant”), through its exclusive licensee Thomson Media ("Thomson") and its predecessor in interest began using its AMERICAN BANKER mark in 1835.  For over 169 years, Complainant, through its predecessor and licensee Thomson has provided vital information to banking and financial services professionals under the AMERICAN BANKER mark.  Since the date of first use, Complainant has extensively and continuously advertised and used its AMERICAN BANKER mark in connection with a print publication in the field of banking.  A United States federal registration for AMERICAN BANKER issued on January 15, 1963.  An application for AMERICAN BANKER filed on January 20, 2004 was assigned serial number 76/570767.  Since 1996, Complainant has provided information online at its AMERICAN BANKER ONLINE website.

AMERICAN BANKER, which is published every business day, provides readers with up-to-date news and professional analysis of the top developments and trends in the banking field.  The publication provides breaking news and features on regulations, compliance, executives, mortgages and other banking products.

American Banker's journalism is widely recognized for its high quality.  The publication is written and edited by a staff of more than 70 reporters and editors, located in six cities.  Since 1980, American Banker has received more than 20 editorial prizes, including the Loeb Award for Distinguished Business & Financial Journalism; the Polk Award; the American Society of Business Press Editors' National Journalism Award; the PRSA Award for Excellence in Technology Journalism; and The Jesse H. Neal Award for Best News Coverage in 2000.

The AMERICAN BANKER mark is regularly advertised in national media outlets, including U.S. Banker, Bank Technology News, The Credit Union Journal, The Bond Buyer, Independent Banker, among others. 

In 2002, AMERICAN BANKER had over 12,900 subscribers and more than 3.23 million issues were distributed.

Through AMERICAN BANKER ONLINE, Complainant offers content beyond the core proprietary news and analysis in the AMERICAN BANKER newspaper.  In addition to early access to daily AMERICAN BANKER content, users can access extensive regulatory and compliance information, a searchable archive of statistical data on banks and financial services companies, a searchable archive of news from AMERICAN BANKER, up-to-date loan and deposit rates, a searchable catalogue of white papers and research reports from vendors and consultants, filtered access to Federal Register filings, pending-activity calendars, calls for comment, agency announcements, headlines from A.S. Pratt, Sheshunoff's Merger Watch and other information. In addition, users can send a letter to the editor or browse past letters and commentaries online and sign up for e-mail updates, which provide Daily Briefings and Daily Regulatory Update as well as weekly updates in Technology, Community Banking, Investment Products, Insurance Products, Cards, and Mortgages. American Banker online receives over 30,000 unique visitors and more than 750,000 page impressions on its web site each month.  The American Banker Online site receives over 30,000 unique visitors and more than 750,000 page impressions on its web site each month.

As a result of the Complainant’s use of the mark in connection both print and online publications, consumers recognize AMERICAN BANKER and AMERICAN BANKER ONLINE as designations of Complainant as the source of print and electronic publications on the banking industry.  Based on the foregoing, Complainant has rights in the AMERICAN BANKER and AMERICAN BANKER ONLINE marks.

A side-by-side comparison of the Complainant’s AMERICAN BANKER ONLINE mark and the domain name “americanbankeronline.com” readily demonstrates they are identical.  The Domain merely eliminates the space between the words in Complainant’s marks due to the technical limitations that prohibit use of a space in a domain.  To the mark AMERICAN BANKER, Registrant's domain merely adds the generic term "online." The addition to Complainant’s mark of a generic term, “online,” for a website does not create a distinctive mark that is capable of overcoming a claim of confusing similarity.

The Domain is thus identical or confusingly similar to a mark in which the Complainant has rights.

[b.] Respondent Has No Legitimate Rights In the Domain Name

As indicated by the registration information from the Go Daddy Software, Inc. database, the registered owner of the “americanbankeronline.com” domain name is Bankers Online.  Bankers Online registered the domain name on May 16, 2002. 

Respondent should be considered as having no legitimate rights in the domain name “americanbankeronline.com,” as it is not the trade name or company name of the Respondent.  Respondent has no common law rights in the AMERICAN BANKER or AMERICAN BANKER ONLINE marks, nor a pending application or existing registration for the mark.  Respondent has not operated business under the name American Banker, nor has it been commonly known in the trade or community at large by the name American Banker.  Nor has it made any use of the AMERICAN BANKER or AMERICAN BANKER ONLINE names beyond the registration of the disputed Domain.

Respondent has established a website at americanbankeronline.com that is titled "BankersOnline.com."  The site, in addition to stories on compliance, lending, operations, security, marketing and technology, includes advertisements for vendors.  The site appears to be geared, in large part, to enabling users to shop for products and services offered by Respondent and its partners.  For example, the site notes: "BOL Vendor Connect makes it easy for you to plug in to the best products and services available for the financial services industry."  Indeed, it is clear that the site is nothing more than an effort to redirect customers for Complainant's information services to Respondent’s competing services and to profit from the initial interest confusion created by its use of Complainant's well known AMERICAN BANKER mark.

When a customer clicks on the “contact us” link on the home page of americanbankeronline.com its browser is redirected to bankersonline.com/aboutus.html.  The home page of americanbankeronline.com is identical to the bankersonline.com homepage.  Indeed, with the exception of buttons at the top of the page, all the hyperlinks to content or related pages redirect a user to the bankersonline.com site.  Even as to the buttons for "compliance" "lending" and "operations" which do link to another page within the americanbankeronline.com domain, the resulting page is clearly identified as BankersOnline.com.  The page for lending is the same page that is reached, with the root domain bankersonline.com when a user clicks the “lending” link that appears at the bankersonline.com home page.  Thus, Respondent is clearly using the americanbankeronline.com domain only as a means of directing users to its BankersOnline website.

[c.] The Respondent Acted in Bad Faith

The Respondent should be considered as having registered the domain name “americanbankeronline.com” in bad faith, based on the following:

Respondent’s use of the americanbankeronline.com domain as outlined above is an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Accordingly, Respondent’s use of the mark is in bad faith per Paragraph 4(b)(iv) of the ICANN Domain Name Dispute Resolution Policy.  

Respondent was clearly aware of the Complainant’s marks when it registered the Domain. A former employee of Thomson was instrumental in creating Respondent’s website.  Moreover, Respondent has failed to transfer the domain.  Although the Respondent replied by telephone to a letter dated September 17, 2002, it indicated that it would not relinquish the domain because it believed its use of the mark was a fair use and merely descriptive.  The Respondent however, failed to give specific examples of any use that would support this position.  Although Complainant's counsel sent a further letter on January 15, 2004 explaining why Respondent's use was not a fair use and was not permitted under the UDRP, Respondent replied again by phone, but did not agree to transfer the domain name.  A final demand sent February 2, 2004 received no response.  Thus, in addition to hosting a site that appears only to be a front for its own goods and services, Respondent has failed to offer any evidence to support its claimed basis for using Complainant’s mark.

In summary, Complainant has trademark rights in the marks AMERICAN BANKER and AMERICAN BANKER ONLINE.  Respondent registered the identical “americanbankeronline.com” domain name and has posted a site that purports to provide information on the banking industry – the same information that Complainant provides through its print and online publications under the mark AMERICAN BANKER and AMERICAN BANKER ONLINE.  However, Respondent makes no legitimate business use of the marks at its site which appears constructed to compete with Complainant and redirect users to bankersonline.com for Respondent's commercial benefit.  Complainant asks that bad faith use of the domain registration be found, and that the domain name “americanbankeronline.com” be transferred to the Complainant to remedy the harm resulting from Respondent’s bad faith use of the domain name.

 

B. Respondent

 

To keep our response both clear and concise, we have included the text of their complaint integrated along with our response. Our responses will appear in this font. (Arial, Bold)

 

Their complaint began with this text:

(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;

 

We make the same claim.

 

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

 

We do. The plan is to move to a more international version of our flagship site, BankersOnline.com. We purchased AmericanBankersOnline.com and AmericanBankerOnline.com on the same day. The purchase of AmericanBankerOnline.com simply followed the common practice of reserving names that were very similar to the desired domain.

 

(3) the domain name has been registered and is being used in bad faith. Complainant will establish herein, that:

 

·        Complainant is the owner of the mark AMERICAN BANKER (Serial No. 76/570767) in connection with a financial newspaper. Through its predecessor in interest and licensee, it has used the mark in commerce in the United States since at least as early as 1835.

We have been using the domain name BankersOnline.com in a live site since October, 2000 and the domain name was owned for several years prior to that date. We purchased AmericanBankersOnline.com and AmericanBankerOnline.com on May 16, 2002 to protect those domains for use in future expansion of the site.

 

 

 

 

Despite Complainant’s longstanding use of the AMERICAN BANKER marks in the United States in connection with print and electronic publications on banking and Complainant’s efforts to resolve this matter amicably, Respondent has refused to transfer the Domain. The panel should therefore not permit the Respondent to continue its bad faith use of the Domain.

 

[a.] The Domain Name and Trademark are Confusingly Similar

 

Agreed.

 

The Complainant, Global Informational Licensing Corporation (hereinafter “GILC” or “Complainant”), through its exclusive licensee Thomson Media ("Thomson") and its predecessor in interest began using its AMERICAN BANKER mark in 1835.  For over 169 years, Complainant, through its predecessor and licensee Thomson has provided vital information to banking and financial services professionals under the AMERICAN BANKER mark.  Since the date of first use, Complainant has extensively and continuously advertised and used its AMERICAN BANKER mark in connection a print publication in the field of banking.  A United States federal registration for AMERICAN BANKER issued on January 15, 1963.  An application for AMERICAN BANKER filed on January 20, 2004 was assigned serial number 76/570767.  Since 1996, Complainant has provided information online at its AMERICAN BANKER ONLINE website.


We agree that the American Banker is one of the most highly respected banking publications. However, it is a stretch to think that, owning AmericanBanker.com, they chose to expand and extend the size of the domain name to AmericanBankerOnline.com without knowing that they would be confusing their domain name with ours.

 

AMERICAN BANKER, which is published every business day, provides readers with up-to-date news and professional analysis of the top developments and trends in the banking field. The publication provides breaking news and features on regulations, compliance, executives, mortgages and other banking products.

BankersOnline.com also publishes content every business day, providing readers with up-to-date news and professional analysis of the top developments and trends in the banking field. In this area, we do not differ. Except that our online audience is much larger.

 

American Banker's journalism is widely recognized for its high quality. The publication is written and edited by a staff of more than 70 reporters and editors, located in six cities. Since 1980, American Banker has received more than 20 editorial prizes, including the Loeb Award for Distinguished Business & Financial Journalism; the Polk Award; the American Society of Business Press Editors' National Journalism Award; the PRSA Award for Excellence in Technology Journalism; and The Jesse H. Neal Award for Best News Coverage in 2000.


Again, we agree that the American Banker is a competent, quality, and highly-respected publication and web site. However, if the suggestion here is to try and contrast this experience against our site, BankersOnline.com, then we would point out that our executive editor is one of the most respected writers, speakers, and innovators in the industry. And, in addition to exceptional journalists, the content contributors to BankersOnline include many of the industry’s leading experts (including not only one, but two of those designated Compliance Professional of the Year by the American Bankers Association).
 

The AMERICAN BANKER mark is regularly advertised in national media outlets, including U.S. Banker, Bank Technology News, The Credit Union Journal, The Bond Buyer, Independent Banker, among others.

 

The BankersOnline.com mark is seen in many publications, conferences, products, and services as well.

 

In 2002, AMERICAN BANKER had over 12,900 subscribers and more than 3.23 million issues were distributed.

 

Through AMERICAN BANKER ONLINE, Complainant offers content beyond the core proprietary news and analysis in the AMERICAN BANKER newspaper. In addition to early access to daily AMERICAN BANKER content, users can access extensive regulatory and compliance information, a searchable archive of statistical data on banks and financial services companies, a searchable archive of news from AMERICAN BANKER, up-to-date loan and deposit rates, a searchable catalogue of white papers and research reports from vendors and consultants, filtered access to Federal Register filings, pending-activity calendars, calls for comment, agency announcements, headlines from A.S. Pratt, Sheshunoff's Merger Watch and other information. In addition, users can send a letter to the editor or browse past letters and commentaries online and sign up for e- mail updates, which provide Daily Briefings and Daily Regulatory Update as well as weekly updates in Technology, Community Banking, Investment Products, Insurance Products, Cards, and Mortgages. American Banker online receives over 30,000 unique visitors and more than 750,000 page impressions on its web site each month.

 

While these numbers are very impressive for the American Banker, in the most recent month (April, 2004), BankersOnline.com had 342,597 unique visitors (with more than 85% repeat visitors) and served more than 3.2 million pages to fellow bankers (just under 30 million hits).  While the quality of the American Banker is without question, any confusion in our names would certainly seem to benefit them. To us at BankersOnline.com, although we are not pursuing a counter complaint at this time, there is definitely similarity between BankersOnline.com and AmericanBanker.Online – especially since they seem to be ‘enlarging and extending’ their name to be similar to ours.
 

As a result of the Complainant’s use of the mark in connection both print and online publications, consumers recognize AMERICAN BANKER and AMERICAN BANKER ONLINE as designations of Complainant as the source of print and electronic publications on the banking industry.  Based on the foregoing, Complainant has rights in the AMERICAN BANKER and AMERICAN BANKER ONLINE marks.

 

Clearly, the addition of ‘online’ to the official name, and the desire to extend the length of the URL to be typed by users is an attempt to confuse with our mark. Surely, they will not be giving up the domain name AmericanBanker.com as the primary address for their site, encouraging users to type in AmericanBankerOnline.com. And, they made the change to their site shortly after we registered AmericanBankersOnline.com (and protected that name by also registering the disputed AmericanBankerOnline.com).

 

A side-by-side comparison of the Complainant’s AMERICAN BANKER ONLINE mark and the domain name “americanbankeronline.com” readily demonstrates they are identical. The Domain merely eliminates the space between the words in Complainant’s marks due to the technical limitations that prohibit use of a space in a domain. To the mark AMERICAN BANKER, Registrant's domain merely adds the generic term "online." The addition to Complainant’s mark of a generic term, “online,” for a website does not create a distinctive mark that is capable of overcoming a claim of confusing similarity. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business). See also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); Foot Locker Retail, Inc. v. Promo.Net Communications, Inc., Case No. 118312 (Nat. Arb. Forum October 18, 2002) ("A domain name does not become distinct from another’s trademark simply by adding a common generic term"); Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term).

 

All three words in use are generic. “American”, “Banker(s)”, and “Online”. AmericanBanker and BankersOnline. We would make exactly the same arguments with respect to the word “online”, which had been missing from their web site for years.

 

In addition, the examples cited above are not created with ‘generic’ words. Of course Hoyle and Guinness can claim ‘uniqueness’ – unlike the words American, Banker(s), and Online.

 

And the confusion is noted about the similarity in the names. However, AmericanBanker.com altered the official graphic designating the web site after we registered the name. And they made no comment for five months after they made this change. They’ve altered their name to be confusingly similar to our much larger presence on the Internet.

 

The Domain is thus identical or confusingly similar to a mark in which the Complainant has rights.

 

[b.] Respondent Has No Legitimate Rights In the Domain Name

 

As indicated by the registration information from the Go Daddy Software, Inc. database, the registered owner of the “americanbankeronline.com” domain name is Bankers Online.  Bankers Online registered the domain name on May 16, 2002.

 

Respondent should be considered as having no legitimate rights in the domain name “americanbankeronline.com,” as it is not the trade name or company name of the Respondent. Respondent has no common law rights in the AMERICAN BANKER or AMERICAN BANKER ONLINE marks, nor a pending application or existing registration for the mark.  Respondent has not operated business under the name American Banker, nor has it been commonly known in the trade or community at large by the name American Banker.  Nor has it made any use of the AMERICAN BANKER or AMERICAN BANKER ONLINE names beyond the registration of the disputed Domain.

 

As noted earlier, AmericanBankerOnline.com is owned merely to protect the desired domain, AmericanBankersOnline.com (spelling variation). We do not claim to be the American Banker. In fact, as of this date, we have not announced our plans for the use of AmericanBankersOnline.com.

 

Respondent has established a website at americanbankeronline.com that is titled "BankersOnline.com"  The site, in addition to stories on compliance, lending, operations, security, marketing and technology, includes advertisements for vendors. The site appears to be geared, in large part, to enabling users to shop for products and services offered by Respondent and its partners.


We have our established web site at BankersOnline.com. As noted above, we redirect this new domain name to our primary site.

For example, the site notes: "BOL Vendor Connect makes it easy for you to plug in to the best products and services available for the financial services industry."  Indeed, it is clear that the site is nothing more than an effort to redirect customers for Complainant's information services to Respondent’s competing services and to profit from the initial interest confusion created by its use of Complainant's well known AMERICAN BANKER mark.

 

BOLVendorConnect.com is a separate, and related, web site to BankersOnline.com. It consists of an online directory of providers of banking-related products and services. There is most definitely cross-linking between these two related websites (BankersOnline.com and BOLVendorConnect.com). In fact, TFP (Thomson Financial Publishing, owner of American Banker) maintains an enhanced listing in this directory. And they also list and sell some of their products in the Banker Store on BankersOnline.com.

 

When a customer clicks on the “contact us” link on the home page of americanbankeronline.com its browser is redirected to bankersonline.com/aboutus.html. The home page of americanbankeronline.com is identical to the bankersonline.com homepage. Indeed, with the exception of buttons at the top of the page, all the hyperlinks to content or related pages redirect a user to the bankersonline.com site.  Even as to the buttons for "compliance" "lending" and "operations" which do link to another page within the americanbankeronline.com domain, the resulting page is clearly identified as BankersOnline.com.  The page for lending is the same page that is reached, with the root domain bankersonline.com when a user clicks the “lending” link that appears at the bankersonline.com home page.  Thus, Respondent is clearly using the americanbankeronline.com domain only as a means of directing users to its BankersOnline website.

 

The browser is redirected to BankersOnline.com. The ‘Contact Us’ link is on BankersOnline.com and nowhere is there any attempt to trade off the American Banker name. The Exhibits that they provided do not reflect what actually happens. When a user types ‘www.americanbankeronline.com’ in the address bar of their browser, they are redirected to www.bankersonline.com and the address bar reflects that.

 

Since we have not advertised AmericanBankersOnline at this point, it is highly unlikely that a) anyone comes to us in this manner or b) that anyone would try to go the AmericanBanker.com site by typing the additional word “online”.

 

[c.] The Respondent Acted in Bad Faith

 

The Respondent should be considered as having registered the domain name “americanbankeronline.com” in bad faith, based on the following:

 

Respondent’s use of the americanbankeronline.com domain as outlined above is an intentional attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Accordingly, Respondent’s use of the mark is in bad faith per Paragraph 4(b)(iv) of the ICANN Domain Name Dispute Resolution Policy.

 

Respondent was clearly aware of the Complainant’s marks when it registered the Domain. A former employee of Thomson was instrumental in creating Respondent’s website. Moreover, Respondent has failed to transfer the domain. Although the Respondent replied by telephone to a letter dated September 17, 2002, it indicated that it would not relinquish the domain because it believed its use of the mark was a fair use and merely descriptive.  The Respondent however, failed to give specific examples of any use that would support this position. Although Complainant's counsel sent a further letter on January 15, 2004 explaining why Respondent's use was not a fair use and was not permitted under the UDRP, Respondent replied again by phone, but did not agree to transfer the domain name. A final demand sent February 2, 2004 received no response.  Thus, in addition to hosting a site that appears only to be a front for its own goods and services, Respondent has failed to offer any evidence to support its claimed basis for using Complainant’s mark.

 

In summary, Complainant has trademark rights in the marks AMERICAN BANKER and AMERICAN BANKER ONLINE. Respondent registered the identical “americanbankeronline.com” domain name and has posted a site that purports to provide information on the banking industry – the same information that Complainant provides through its print and online publications under the mark AMERICAN BANKER and AMERICAN BANKER ONLINE. However, Respondent makes no legitimate business use of the marks at its site which appears constructed to compete with Complainant and redirect users to bankersonline.com for Respondent's commercial benefit. Complainant asks that bad faith use of the domain registration be found, and that the domain name “americanbankeronline.com” be transferred to the Complainant to remedy the harm resulting from Respondent’s bad faith use of the domain name.

 

During our initial phone conversation, we offered to transfer the AmericanBankerOnline.com domain name to them only if they would agree never to contest our use of AmericanBankersOnline.com. Not only was that offer refused, it was stated that if we did such a thing, American Banker would contend that we had no right to use AmericanBankersOnline.com either. At what point, then, are they able to absorb the BankersOnline.com name as being confusingly similar to the AmericanBankersOnline.com they seem to want?

Given that our online presence, using recent traffic numbers, is vastly larger than theirs, this move to officially rename themselves in an intentionally confusing manner can only be seen as a move to benefit from the high level of traffic we have achieved. Again, look at their logo on their current homepage graphic (AmericanBanker.online). Without access to this disputed domain name for the last two years, they have persisted in leaving the image up there in a manner that clearly confuses their online presence with ours. Respectfully, they have a stronger domain name with AmericanBanker.com than they do with AmericanBankerOnline.com. This is merely an attempt to capitalize on our success.

 

And, as a final indication about where the bad faith may lie, check out the previous owner of the domain name MyBankersOnline.com. Several weeks ago, they chose not to renew that domain name (which they had owned since early 2001). Then, just after letting that domain name go, they lodged this complaint. Again, we are not bringing any action or grievance based on that maneuver, but it does show who is trying to infringe on whom.

 

Thank you for allowing our side of the issue to be heard.

 

 

FINDINGS

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.

 

I find each element to be satisfied in this matter.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

First of all, both parties agree <americanbankeronline.com> is confusingly similar to AMERICAN BANKER.  Both parties further agree AMERICAN BANKER is a well known and well respected mark in banking.

 

Complainant has established rights in the AMERICAN BANKER mark through registration of the mark with the United States Patent and Trademark Office on January 15, 1963 (Reg. No. 743,818).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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).

 

The disputed domain name is confusingly similar to Complainant’s AMERICAN BANKER mark because the domain name fully incorporates the mark and merely adds the generic term “online.”  Complainant argues that the addition of the generic word “online” is insufficient to distinguish the domain name from the Complainant’s mark.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).  Furthermore, Complainant has applied for a trademark registration mark for AMERICAN BANKER ONLINE (although it has not been issued yet).  Complainant has been using the AMERICAN BANKER ONLINE mark since 1996.

 

The addition of the generic top-level domain name “.com” in the domain name is irrelevant in determining whether the domain name is confusingly similar to Complainant’s mark.  See Sony Kabushiki Kaisha v. Inja, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶4(a)(i) is satisfied); see also 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).

 

Rights or Legitimate Interests

            Respondent lacks rights and legitimate interests in the domain name because the domain name is confusingly similar to the mark and is used to provide services that are similar and compete with Complainant.  Respondent even employs one of Complainant’s former employees.  Moreover, Respondent’s use does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

             Respondent is not commonly known by the <americanbankeronline.com> domain name and therefore lacks rights and legitimate interests in the domain name pursuant to Policy ¶4(c)(ii).  See Tercent Inc. v. 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).  In fact, the <americanbankeronline.com> domain name forwards viewers directly to Respondent’s BankersOnline.com web site.

             Once Complainant makes a prima facie case for this element, the burden shifts to Respondent to establish rights or legitimate interests in the domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that 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).

             It should be noted the Panel was very concerned Respondent registered <americanbankeronline.com> on May 16, 2002.  Normally the Panel would suggest Complainant slumbered on its rights, allowing Respondent to acquire rights to the domain name by using it (see UDRP ¶4(c)(i)).  Under the facts of this particular case, that did not happen because:

 

1.                  Respondent actually knew about Complainant’s mark before registering the <americanbankeronline.com> domain name. 

2.                  Complainant was objecting in writing to Respondent’s domain name registration at least by September 17, 2002.  Respondent did not erect a web site at the domain (or make other use of the domain) because the domain was (and still is) being forwarded to another web site. 

3.                  Respondent showed no present preparations to use <americanbankeronline.com> in the future.  Without evidence of actual preparations to use the domain name in the future (or even an announcement of anticipated use), Respondent does not acquire any interest in the domain name, Hugh Jackman v. Peter Sun Claim Number: FA 248716 (Nat. Arb. Forum May 10,2004).

 

Registration and Use in Bad Faith

Respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iii) because Respondent is using the domain name, which is confusingly similar to Complainant’s mark, to compete with Complainant’s business.  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered and used the domain name <eebay.com> in bad faith where Respondent has used the domain name to promote competing auction sites). 

 

Further, Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶4(b)(iv) as Respondent is using the <americanbankeronline.com> domain name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website.  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also 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 State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).

 

 

DECISION

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

 

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

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: June 18, 2004

Hit Counter