WIPO Arbitration
and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boardwalk Bank v. Patrick Thorogood
Case No. D2000-0213
1. The Parties
Complainant is Boardwalk Bank, a New Jersey corporation with a place of business
at 201 Shore Road, Linwood, NJ 08221, U.S.A. (Boardwalk). Respondent is Patrick
Thorogood, with an address at 300 Norwood, Deal, NJ 07723, U.S.A. (Thorogood).
2. Domain Name and Registrar
The domain name in issue is "BOARDWALKBANK.COM". The registrar is
Network Solutions, Inc.
3. Procedural History
On March 27, 2000, Boardwalk transmitted a copy of its complaint to Thorogood
by electronic mail and Federal Express (Complaint, Paragraph 17).
The WIPO Arbitration and Mediation Center (the Center) received Boardwalk’s
complaint on March 28, 2000, (electronic version) and on March 30, 2000, (hard
copy version). The Center verified that the complaint satisfies the formal requirements
of the ICANN 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). Boardwalk made the required payment to the Center. The formal date of
the commencement of this administrative proceeding is April 4, 2000.
The complaint (Paragraph 7) provides the following contact information regarding
Thorogood:
Patrick Thorogood
C/o Tucker Anthony
623 River Road
Fair Haven NJ 07704
(732) 758-1400
fax (732) 747-2078
[email protected].
On March 29, 2000, the Center transmitted via email to Network Solutions a
request for registrar verification in connection with this case. On April 3,
2000, Network Solutions transmitted via email to the Center Network Solutions’
Verification Response, confirming (a) the registrant is Thorogood, at "300
norwod, DEAL, NJ 07723, US," (b) the administrative contact and billing
contact is Thorogood, (c) "Network Solutions’ 4.0 Service Agreement is
in effect," and (d) "The domain name BOARDWALKBANK.COM is in ‘Active’
status."
On April 4 and 5, 2000, the Center transmitted Notification of Complaint and
Commencement of Administrative Proceeding, together with a copy of the Complaint,
via post/courier (April 5), facsimile (April 5), and email (April 4), to Thorogood,
and via email (April 4) to counsel for Boardwalk. The Notification stated that
the Policy "is incorporated by reference into your Registration Agreement
with the Registrar of your domain name, pursuant to which you are required to
submit to and participate in a mandatory administrative proceeding ...".
On April 7, 2000, the Center received an email from Thorogood inquiring:
"... how can a proceeding commence against me based upon the policy adopted
on oct. 24th 1999 when 5mths earlier on may 20th 1999 (date i registered name
in dispute) no such law existed ... please respond."
On April 10, 2000, the Center responded via email:
"According to the Registrar, the dispute policy terms of your agreement
may be modified, upon 30 days notice. It is our understanding that your Registrar
sent such a notice which indicated it would apply the UDRP and that its registrants
would be subject to the dispute resolution policy in effect at the time of the
dispute."
On April 25, 2000, the Center advised Thorogood and Boardwalk via email of
the receipt on April 19, 2000, of Thorogood’s response to the complaint.
On May 8, 2000, the Center advised Thorogood and Boardwalk via email that David
W. Plant, Esq. had been appointed as the panelist in this proceeding.
4. Factual Background; Parties’ Contentions
a. The Trademarks
The complaint avers (Paragraph 12, 4th page) that Boardwalk has adopted "BOARDWALK"
and "BOARDWALK BANK" as its service marks.
b. The Factual Contentions of the Parties
Because the parties address the relevant events in relative detail in their
respective pleadings, i.e. the complaint and the response, we first set out
here a rough chronology of events gleaned from the complaint and from the response.
Next, we set out the parties’ contentions in light of the averments as to the
relevant events.
i. Relevant Events
During "its organization in early 1999," Boardwalk adopted the name
and service mark "Atlantic Bank" for its Internet and community banking
services (Complaint, Paragraph 12, 4th page).
In about April 1999, Boardwalk changed its name to "Boardwalk Bank"
and adopted the two service marks here in issue (Complaint, Paragraph 12, 4th
page).
Boardwalk avers this change was to satisfy requirements of state banking regulators
and to move away from use of the term "Atlantic" "which is common
in the banking field" (Id.).
Thorogood responds (Response, page 5):
"How would complainant provide Internet banking services under the name
Atlantic Bank when that name had been in use by another bank since 1996."
Thorogood refers to his Exhibit A, a Network Solutions WHOIS printout, which
shows "atlanticbank.com" was registered October 25, 1996, by Atlantic
Bank in South Portland, Maine.
Since April 1999, (a) Boardwalk has taken steps to make its name and service
marks known to "the relevant financial professionals and public,"
(b) Boardwalk’s regulatory filings have been under the name "Boardwalk
Bank", and (c) Boardwalk has answered its telephone as "Boardwalk
Bank" (Complaint, Paragraph 12, 4th page).
Thorogood responds (Response, page 6):
"It is now spring of 2000 and this ‘Internet Bank’ can not be found on
the search engine Yahoo. (see exhibit B) In addition this ‘Internet Bank’ has
apparently never bothered to register with any of the online Internet Bank directories.
(see exhibit C)."
In April 1999, Boardwalk posted the following announcement on the Internet:
"BOARDWALK Internet and Community Bank. Welcome to the virtual branch
of Boardwalk Bank. We are putting the finishing touches on our Grand Opening
Event. Please check back soon." (Complaint, Paragraph 12, 4th page)
On April 26, 1999, Boardwalk submitted the "Boardwalk Bank" name
to the Department of Banking in New Jersey (Complaint, Paragraph 12, 4th page).
On May 18, 1999, Boardwalk’s "advertising agency and website developer"
informed Boardwalk Bank that the domain name "boardwalkbank.com" was
available (Complaint, Paragraph 12, 5th page).
Thorogood responds (Response, pages 6 - 7):
"Complainant seems to suggest that an ‘Internet Bank since early ‘99’
would wait until 5/18/99 to ascertain whether the all important domain name
was available and then when informed of its availability waited at least 3 days
before determining that it was worth the $70.00 fee to secure the name. Finally,
not until the last week in June (5 weeks later) did Boardwalk Bank, the ‘Internet
Bank since early ‘99’ determine that maybe they should of [sic] spent the $70.00
on 5/18/99. I surely wish they had."
On May 20, 1999, Thorogood registered BOARDWALKBANK.COM with Network Solutions
(Complaint, Exhibit A; Response, page 6).
At an unspecified date, after receiving instructions from Boardwalk Bank, "the
website developer" tried to register the domain and was informed that Thorogood
had registered the domain name (Complaint, Paragraph 12, 5th page).
On May 27, 1999, the Bergen County Record published an article announcing the
change of name from "Atlantic Bank" to "Boardwalk Bank"
(Complaint, Paragraph 12, 4th page). A copy of the article appears at Exhibit
C to the complaint. It states in part:
"... Boardwalk Bank, a start-up in Linwood, near Atlantic City."
"Devlin [Boardwalk’s CEO] said he was forced to rename the yet-to-be-opened
bank after he got a call from ... Atlantic Bank in New York ...".
* * *
"Two weeks ago [sic], Devlin and his management team settled on Boardwalk
Bank, which is similar to the name of a fondly remembered local bank that was
bought out ... years ago."
Thorogood notes (Response, page 6) that he had registered the domain name one
week prior to the newspaper article.
On about June 24, 1999, Boardwalk was informed by "its advertising firm"
that Thorogood had registered the domain name (Complaint, Paragraph 12, 5th
page).
On June 28, 1999, Boardwalk applied to the U. S. Patent and Trademark Office
to register the service marks "Boardwalk" and "Boardwalk Bank"
(Response, Exhibit E).
At an unspecified time (but apparently before July 20, 1999), Devlin telephoned
Thorogood (Complaint, Paragraph 12, 5th page). Thorogood reportedly stated he
was "wondering when he would receive a call" from Boardwalk (Id.).
Devlin asked Thorogood what he intended to do with the domain name (Id.) Thorogood
allegedly answered he had seen an announcement of the change from "Atlantic
Bank" to "Boardwalk Bank", and "when checking the availability
of the name, was surprised that it had not been registered as a domain name,"
and therefore decided to register the domain name "for Boardwalk Bank"
(Id.). Allegedly, Thorogood stated there would be no problem in transferring
the domain name to Boardwalk on the implied condition that Boardwalk does some
brokerage business and transactional work with Thorogood (Id.). Devlin allegedly
advised Thorogood that Devlin was not interested in discussing the brokerage
business and that Devlin would have Boardwalk’s attorney call Thorogood to arrange
for the forms for transfer (Id.).
Thorogood responds (Response, page 7):
"It is true that I saw an announcement regarding Boardwalk Bank sometime
in June ‘99. I wondered at that time (weeks after I registered the name) when
I would be contacted by the bank. I never contacted the bank, nor made any attempts
to do so until I was contacted by Mr. Devlin sometime near the end of June ‘99.
"It is true that I answered Mr. Devlin that transferring the name would
not be a problem as I have never sold nor transferred any domain names to anyone
at any time. It is true I never offered to sell this name nor any other domain
name to anyone at anytime. Mr. Devlin was not interested in creating any goodwill."
Also at an unspecified time (probably in June or July 1999), Boardwalk’s attorney,
Karol Kepchar, telephoned Thorogood and informed Thorogood of "Boardwalk’s
rights in the ‘BOARDWALK BANK’ mark and name under the law" (Complaint,
Paragraph 12, 5th page). Kepchar allegedly stated that Boardwalk was prepared
to be accommodating and was willing to pay Thorogood’s out of pocket expenses
incurred in registering the domain name in exchange for the domain name to Boardwalk
(Id.). Thorogood allegedly became angry and terminated the conversation (Id.).
Thorogood responds (Response, page 8):
"Karol Kepchar did telephone me regarding the law and informed me that
its [sic] a crime in N.J. to be a ‘bank without a license.’ At no time during
that conversation did Ms. Kepchar verbally, nor in writing communicate to me
that they were ‘prepared to be accommodating’ and were willing to pay me the
actual out of pocket expenses ($119.00). It was not until I failed to sign the
release that I conveyed to Mr. Devlin his lack of consideration in neglecting
to at least offer the $119.00 for the inconvenience."
On about July 20, 1999, Devlin called Thorogood "again .. at the place
of his new employer" (Complaint, Paragraph 12, 6th page). Thorogood allegedly
stated he would not transfer the domain name under any circumstances (Id.).
Thorogood responds (Response, page 8):
"Having been harassed and threatened by Devlin and Kepchar for 3 weeks
straight, including but not limited to; letters to N.J. Banking Commission accusing
me of committing felonies; and certified letter to my new place of employment
alleging crimes and other misdoings, I came to the conclusion that I would not
have any further dealings with either of the above."
In an undated (circa July 16), hand-written note addressed to a "Michael
Sheridan" (Complaint, Exhibit D), Thorogood apparently wrote, inter alia:
"I buy domain names through Network Solutions as a hobby. I have never
attempted to profit from my hobby. I have not created any web sites of any kind
for any of the domain names that I own.
"I believe I have legally registered approximately 18 domain names with
the word ‘Bank or banker or banking or trust’ in the domain name. ... I have
never used the domain name boardwalkbank.com in any form or fashion.
* * *
"Mr. Michael Devlin & his counsel Karol Kepchar have harassed me repeatedly
in to giving them my legally registered domain name ... without any reimbursement
($119.00 registration cost). They were so rude and obnoxious to me that I’m
inclined to sit on this legally registered domain name & combine it with
other Monopoly [sic] board game names ie (ParkplaceBank.com) ... ."
Thorogood contends (Response, page 9) Boardwalk misleadingly paraphrased a
portion of the last paragraph quoted above as "part of a pattern of distorting
the facts to fit the fiction." Thorogood continues that his
"... plan for boardwalkbank.com was to combine it with other monopoly
board names such as parkplacebank.com, communitychestbank.com, etc. The marketing
of non-legal tender currency or cybercash could be then used through these sites
(i.e. monopoly money) that could later be exchanged for coupons or other marketing
promotions."
As of July 23, 1999, Thorogood had registered the following domain names, inter
alia, in addition to the domain name in issue here (Complaint, Exhibit E):
NJBANK.ORG
COUMMUNITYNETBANK.COM
PABANKS.COM
NJBANKSTOCK.COM
PABANKERS.COM
NYBANKERS.COM
NJBANKS.COM
UNITYNETBANK.COM
OYSTERBAYBANK.COM
NYBANKS.COM
NYAPPLEBANK.COM
GLENHEADBANK.COM
On about July 28, 1999, Boardwalk launched its community banking services (Complaint,
Paragraph 12, 5th page).
On August 2, 1999, Boardwalk commenced an action against Thorogood in the United
States District Court for the District of New Jersey for trademark infringement
(Complaint, Paragraph 16, 7th page, and Exhibit F).
On October 25, 1999, Boardwalk launched its Internet banking services at "boardwalkbank.net"
(Complaint, Paragraph 12, 5th page).
ii. Summary of Contentions in Light of Foregoing Events
Boardwalks’s Contentions and Thorogood’s Responses --
Boardwalk contends that Thorogood’s registration agreement with Network Solutions
incorporates the Policy (Complaint, Paragraph 10, 3d page) 1.
Thorogood contends (Response, Paragraph 9.a., page 4):
"I agree to be bound by any applicable regulations that were in place
and current at the time I registered the domain name on May 20th 1999."
Boardwalk contends (Complaint, Paragraph 12, 4th and 5th pages):
"As a result of Boardwalk Bank’s efforts, the relevant banking regulators
and public have come to recognize ‘Boardwalk Bank’ as a mark and name of Boardwalk
Bank, and no other person or entity. Such recognition accrued even before Boardwalk
Bank opened its door to the public and began providing banking services over
the Internet."
Thorogood does not specifically address this contention.
Boardwalk contends also (Complaint, Paragraph 11, 3d and 4th pages; Paragraph
12, 6th page):
(1) The domain name is identical or confusingly similar to a service mark in
which Boardwalk has rights.
Thorogood contends Boardwalk did not file a trademark application until six
weeks after he registered the domain name (Response, page 4), and "there
are scores of trademark names (360) filed prior to complainants [sic] registration
that are ‘confusingly similar in sound, appearance, meaning, and connotation
of the Boardwalk and Boardwalk Bank marks’ (see exhibit E)." Exhibit E
includes copies of U. S Trademark Electronic Search System printouts regarding
Boardwalk’s applications to register with the U. S. Patent and Trademark Office
"Boardwalk Bank" and "Boardwalk" as service marks. Those
printouts refer, e.g., to "Record 20 out of 360". Other pages refer to
"BoardWALK", a volunteer leadership training program, "Boardwalk
Financial Services, Inc.", and "Boardwalk Financial Corporation".
(2) Thorogood has no rights or legitimate interests in respect of the domain
name.
Thorogood avers he has legitimate interests in every domain name he ever registered
(Response, page 5).
Thorogood further challenges (Response, pages 11 - 12) Boardwalk’s averments
as to (a) Thorogood having no rights or legitimate interests and (b) the domain
was registered and is being used in bad faith, as follows:
"In sum, Respondent has rights and legitimate interests in respect to
any domain name registered legally and Respondent has never ‘used the domain
name comprising its mark and name;’ Respondent has not used bad faith because
Respondent did not know of Boardwalk Bank when he registered the name. Respondent
further demands that complainant proves [sic] the allegations that respondent
‘proceeded to register the name for no other purpose than to sell, rent, or
otherwise transfer the domain name registration to Boardwalk Bank or a competitor
of Boardwalk Bank.’"
"Complainant alleges respondent has a business consisting of 75 domain
names that respondent registered for no other purpose than to be used in bad
faith. Why then has no other intended victim of bad faith identified themselves?
And: because the other 74 names were not registered with ‘no other purpose that
[sic] to sell (never happened) rent or otherwise transfer (never happened)’."
"The bad faith has always been generated from the side of Complainant.
Complainant has lied from the beginning about its origins of its ‘Internet Bank.’
All relevant and verifiable facts suggest a bank ignorant and oblivious to the
Internet. Note attached exhibits proving a non-existent Internet presence even
to this date." Thorogood then reviews the "absurd time line"
followed by Boardwalk with regard to ascertaining whether or not its name was
available for registration as a domain name.
(3) The domain name was registered and is being used in bad faith.
In addition to the foregoing assertions, Thorogood avers that Boardwalk "alleges
the mere fact that I own many hypothetical self created domain names with the
word bank in it [sic] constitutes bad faith. In addition to Boardwalkbank.com
I also own Parkplacebank.com, NJBanks. com, NYBanks.com, and estatebanking.com
among others" (Response, page 5).
Boardwalk contends further (Complaint, Paragraph 12, 6th page):
(4) Thorogood does not currently provide banking services and has never provided
banking services.
Thorogood appears to agree that he has never used the domain name in issue
as a web site.
(5) Thorogood is not currently authorized under the applicable banking regulations
to conduct business using the term "Bank" and has not applied to do
so.
Thorogood does not specifically address this contention.
(6) Thorogood registered "BOARDWALKBANK.COM" with knowledge of "Boardwalk
Bank", with the expectation he could exchange the domain name for services
he hoped to provide to Boardwalk.
Thorogood responds (Response, pages 9 - 10):
"Has anyone at anytime offered any proof that ‘respondent registered the
boardwalkbank.com domain name with knowledge of Boardwalk Bank?’ Has anyone
at any time offered any proof that respondent has ever had ‘the expectation
that he could exchange the domain name for services he hoped to provide to Boardwalk
Bank[’] or any other bank. I repeat, I have never exchanged, sold, nor bartered
any domain name with anyone at any time."
(7) Thorogood has refused to transfer the domain name and has demanded payment
of $10,000.
Thorogood responds (Response, pages 10 - 11):
"The pattern of deceit continues." The $10,000 number arose in response
to an inquiry by the judge in the New Jersey Federal Court. "I do recall
receiving a phone call from someone (who never acknowledged his official capacity
in regard to this matter, see exhibit D [two telephone message slips]) who said
something to the affect [sic] of ‘What would it take to resolve the Boardwalk
Bank issue?’ I responded that what I told the federal judge in our only courtroom
appearance still stands despite the fact that many more days have been lost
from this ordeal."
(8) Thorogood has registered more than 75 domain names.
See page 12 of Thorogood’s Response quoted supra, pag
e 8.
(9) Boardwalk has not agreed or consented to Thorogood’s use or registration
of a domain name comprising its mark and name.
Thorogood does not challenge this contention.
(10) Thorogood registered the domain name for no other purpose than to sell,
rent or otherwise transfer the domain name registration to Boardwalk or a competitor
of Boardwalk.
See Thorogood’s pages 9 - 10 and 12 of Thorogood’s Response, summarized in
his words supra.
(11) Thorogood has refused to cooperate with Boardwalk to resolve the instant
domain name dispute.
See Thorogood’s various contentions, summarized above, as to communications
between Boardwalk’s representatives and Thorogood.
Boardwalk avers (Complaint, Paragraph 16, 7th page) a decision in this proceeding
may permit Boardwalk to forego seeking further relief in Federal court in the
United States.
Boardwalk requests that the domain name be transferred to Boardwalk (Complaint,
Paragraph 13, 7th page).
Thorogood’s Contentions –
Thorogood challenges (Response, page 5) Boardwalk’s averment (Complaint, Paragraph
12, 4th page) that it is an Internet Bank, as follows:
"The prior administrative actions by complainant would suggest something
other than an Internet Bank. Question: Would an Internet Bank that posted
an announcement on the Internet in April 1999 wait until May 18th 1999 to determine
if the domain name was available? I think not."
Thorogood further challenges (Response, page 13) Boardwalk’s contentions, as
follows:
" ... the Internet part of this ‘Internet and Community[’] bank was nothing
more than a [sic] after thought that the bank now wishes to address."
Thorogood lists four "wishes" Boardwalk has:
Boardwalk wishes it had registered "the name" before Thorogood.Boardwalk
wishes it had filed its trademark registration before Thorogood’s registration.
Boardwalk wishes Thorogood had previously sold or transferred domain names.
Boardwalk wishes "law signed in the fall of ‘99" [the Policy] was
the law on May 20th, 1999.
In addition, Thorogood avers (Response, pages 13 - 14) that approximately 10
banks began operation in New Jersey within one year of Boardwalk’s commencement,
and less than half have a domain name that is the same as their "traditional
bank". Thorogood adds that Boardwalk’s use of its name a few days before
Thorogood registered the domain name "does not give Complainant a permanent
reserve pass on the domain name BoardwalkBank.com."
Thorogood adds (Response, page 14):
"My interpretation is that until I generate revenue from my Internet marketing
ideas, the IRS says it is a hobby, not a business."
"I have many, many marketing ideas for all domain names but until I determine
the best course of action I maintain my right that property bought legally by
me prior to any domain name registration and prior to any trademark applicant
can not forcibly be taken from me."
"I have proved the fact that it was both possible and probable that the
domain Boardwalkbank.com could be registered by someone without any prior knowledge
of Boardwalk Bank (the complainant). I refer to the registration of Boardwalkbank.org
that was registered by someone not affiliated by the bank (exhibit F) one week
prior to my registration." 2
5. Discussion and Findings
Paragraph 4.a. of the Policy directs that Boardwalk must prove, with respect
to each domain name in issue, each of the following:
(i) The domain name in issue is identical or confusingly similar to the corresponding
Boardwalk service marks, and
(ii) Thorogood has no rights or legitimate interests in respect of the domain
name, and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4.b. of the Policy sets out four illustrative circumstances, which
for purposes of Paragraph 4.a.(iii) above shall be evidence of the registration
and use of a domain name in bad faith.
Paragraph 4.c. of the Policy sets out three illustrative circumstances which,
if proved by respondent, shall demonstrate respondent’s rights or legitimate
interests to the domain name for purposes of Paragraph 4.a.(ii) above.
a. Identity or Confusing Similarity
Boardwalk bears the burden to prove this element, as well as the other two
elements, set out in Paragraph 4.a. of the Policy. Boardwalk urges that the
domain name in issue is "identical and/or confusingly similar to the "BOARDWALK
BANK" mark and name. Thus, Boardwalk must prove either identity or confusing
similarity between the domain name in issue and a Boardwalk service mark.
The significant portion, i.e. BoardwalkBank, of the domain name is issue is
undeniably identical with the alleged service mark and name of Boardwalk.
Moreover, on its face, the domain name is for purposes of this dispute confusingly
similar to the Boardwalk service marks. The domain name in issue suggests a
web site that the ordinary consumer would likely believe was operated or sponsored
by Boardwalk or otherwise affiliated with Boardwalk. It is immaterial that Boardwalk
was less than sophisticated, apt, and timely in establishing a web site under
its service marks or trade name. The issue here is whether or not the domain
name in issue is identical with or confusingly similar to Boardwalk’s service
marks. Accordingly, the ordinary consumer would likely believe that, if the
consumer were to visit the web site, whatever services or information were (or
were not) provided at the BOARDWALKBANK.COM web site were (or were not) provided
by or with the approval of Boardwalk.
That other organizations have used "Boardwalk", or a variant, as
trademarks or trade names (see Response Exhibit E) is alone not sufficient to
detract from the conclusion of identity and confusing similarity between the
domain name in issue and Boardwalk’s service marks. At best, from Thorogood’s
standpoint, such other uses may affect the strength and reach of Boardwalk’s
service marks. Such uses do not, on this record, invalidate the service marks.
If Thorogood’s averments as to the date of Boardwalk’s applications to register
its service marks are meant to challenge Boardwalk’s right to "Boardwalk"
and "Boardwalk Bank" as service marks, Thorogood misses the target.
In the United States, rights in trademarks and service marks arise primarily
through use, not only registration. It is not disputed that Boardwalk uses "Boardwalk"
and "Boardwalk Bank" as service marks. It is also not disputed that
Thorogood has not used either mark in commerce in a conventional trademark sense.
As far as use for trademark purposes is concerned, on this record, Boardwalk
was first vis-a-vis Thorogood.
b. Rights or Legitimate Interests
On this record, it is plain that Thorogood has had no rights or legitimate
business interest in the domain name in issue. Thorogood has acquired and registered
dozens of domain names, some of which are identical or closely similar to names
of banks. Asserting that he is holding these domain names as a hobby in light
of IRS requirements in no way supports Thorogood’s contention that he is collecting
and holding the domain names, including the domain name here in issue, for legitimate
reasons. This unsupported explanation neither excuses nor justifies his conduct.
It is much more likely, as reflected in the parties’ averments as to their
1999 telephone conversations and in Thorogood’s own business interests as a
stock broker, that Thorogood acquired this domain name, as well as others, for
the purpose of transferring those domain names to the owners of the corresponding
trademarks in return for money or a business relationship -- here, for example,
either $10,000 or a relationship in which Thorogood would perform services for
Boardwalk for remuneration.
Thorogood’s speculations as to hypothetical and ill-defined marketing ideas
(e.g. Thorogood’s idea to generate cybercash) do not demonstrate any right or
legitimate interest of Thorogood in the domain name in issue here, at least
vis-a-vis Boardwalk.
Also, that a Mr. Gittleman, apparently from New Jersey, registered the same
domain name in ".org", on May 13, 1999, a week before Thorogood registered
the domain name in ".com", does not avail Throrogood. It may suggest
only that Thorogood was not alone in attempting to benefit from "Boardwalk
Bank". Mr. Gittleson’s activities in no respect justify Thorogood’s
registration vis-a-vis Boardwalk.
In light of the record here, it is clear that Thorogood has no rights or legitimate
interest in the domain name BOARDWALKBANK.COM.
c. Bad Faith
Registration and use of the domain name in issue in bad faith are matters
of the appropriate inferences to draw from circumstantial evidence. Boardwalk
must prove both registration in bad faith and use in bad faith.
Notwithstanding Thorogood’s protests to the contrary, it defies reason to conclude
that Thorogood registered the domain name in issue here with absolutely no knowledge
of Boardwalk and its efforts to enter the banking market in New Jersey. Thorogood
surely was informed about Boardwalk’s activities in the regular course of his
business activities, especially in light of the undenied and unchallenged averments
of Boardwalk that (1) Thorogood dealt with banks in his brokerage business,
and (2) Thorogood asserted that transferring Thorogood’s registration to Boardwalk
would be no problem so long as Boardwalk used Thorogood’s services.
It is entirely reasonable to conclude that Thorogood acquired and held registrations
in this and other domain names solely for the purpose of enabling him to parlay
his registrations into business opportunities by way of transfers of the registrations
for consideration. COMMUNITYBANK.COM, NJBANKSTOCK.COM, NJBANK.COM, OYSTERBAYBANK.COM,
NYBANK.COM, NYAPPLEBANK.COM, and GLENHEADBANK.COM are not the acquisitions of
a mere hobbyist who simply wants to exhibit his domain name registrations as
monuments to his ingenuity with no intent of utilizing them to advance his brokerage
or other business interests.
d. Paragraph 4.c. Factors
With respect to each domain name in issue, Thorogood has failed to prove any
of the three circumstances set out in Paragraph 4.c. of the Policy. Indeed,
the facts relevant to each factor cut against Thorogood, viz.:
(i) Before any notice by Boardwalk to Thorogood of the dispute, Thorogood’s
use of or preparations to use the domain name was not in connection with
a bona fide offering of goods or services. Indeed, Thorogood agrees that he
has never used the domain name in issue as a website or made any other use of
the domain name.
(ii) Thorogood or a related entity has not been commonly known by the
domain name. Thorogood has made no attempt to establish that the contrary is
so.
(iii) Thorogood is not making 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." From Thorogood’s
own averments, it is difficult to envision as legitimate, fair or innocent Thorogood’s
"hobby" of acquiring and holding domain names which are identical
to names of pre-existing, active businesses and organizations. Indeed, at page
14 of his response, Thorogood makes it plain that it is a matter of his determining
"the best course of action" before he generates revenue from his Internet
marketing ideas -- none of which has advanced beyond the speculative, germinal
stage. This is not a legitimate or fair use.
e. Jurisdiction and Applicability of the Policy
Thorogood misreads his agreement with Network Solutions. This record reveals
that Network Solutions, pursuant to the relevant provisions of its agreement
with Thorogood, advised Thorogood that the Policy, adopted on October 24, 1999,
applied to Thorogood (Center’s April 10, 2000 email to Thorogood). Thorogood
has agreed to participate and has participated. Thorogood’s Network Solutions
agreement and Thorogood’s performance under the agreement confirm that the Policy
applies. This Panel clearly has jurisdiction of this dispute.
6. Decision
The panel has jurisdiction of this dispute.
In light of the foregoing, the Panel decides that (a) the domain name BOARDWALKBANK.COM
registered by Thorogood and in issue here is both identical with and confusingly
similar to the corresponding service marks of Boardwalk, (b) Thorogood has no
rights or legitimate interests in respect of the domain name in issue, and (c)
the domain name in issue has been registered and is being used in bad faith
by Thorogood.
Accordingly, the Panel requires that the registration of the BOARDWALKBANK.COM
domain name be transferred to Boardwalk.
David W. Plant
Presiding Panelist
