The Complainant is Fifth Third Bancorp, Cincinnati, Ohio, United States of America, represented by Graydon Head & Ritchey, LLP, United States of America.
The Respondent is Joseph Robinson, Chicago, Illinois,
United States of America.
2. The Domain Name and Registrar
The disputed domain name <fifththirdonlinebanking.com>
is registered with Melbourne IT, Ltd., doing business as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2006. On September 15, 2006, the Center transmitted by email to Melbourne IT a request for registrar verification in connection with the domain name at issue. On September 18, 2006, Melbourne IT transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 the Respondent of the Complaint, and the proceedings commenced on September 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2006.
The Center appointed Steven L. Snyder as the sole
panelist in this matter on October 23, 2006. 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
When the Third National Bank and the Fifth National Bank merged in 1908, the new entity adopted a rather unusual name, “The Fifth Third National Bank of Cincinnati.” While Complainant does not explain why it chose this name, one author suggests that the prohibitionist movement in America influenced the new entity. Rather than being called “Third Fifth,” which could be construed as a reference to “three fifths” of alcohol (or to the infamous three-fifths compromise of 1787), the bank went with “Fifth Third.” See Cecil Adams, What Gives With Fifth Third Bank?, The Straight Dope(January 18, 2002).
Customers apparently have not resented the unusual name and the institution now has branches across much of the eastern United States of America. Complainant also has a tidy portfolio of registered trademarks and domain names that incorporate the “Fifth Third” service mark, including: FIFTH THIRD BANK for “banking services” (reg. no. 1645502); FIFTH THIRD, for “investment consultation and stock brokerage services” (reg. no. 2366546); <fifththird.com>; <fifththird.info>; <fifththird.biz>; <fifththirdbank.info>; and <fifththirdbancorp.com>.
On March 4, 2006, long after the FIFTH THIRD mark became well-known for banking services, Joseph Robinson registered the domain name <fifththirdonlinebanking.com> with Melbourne IT. This domain name leads to a website that lists a number of links to banking institutions, including Complaint and several of Complainant’s competitors.
Complainant instituted this proceeding on September 13, 2006,
and requested that the domain name <fifththirdonlinebanking.com> be transferred
to Complainant. Mr. Robinson did not respond.
5. Parties’ Contentions
A. Complainant
Regarding the first element a complaint must establish to prevail under the Policy, Complainant contends that the domain name <fifththirdonlinebanking.com> is identical or confusingly similar to a service mark in which the Complainant has rights, namely the “federally registered service mark FIFTHTHIRD.COM for banking services.” Complainant also argues that the addition of “online banking” does not distinguish the disputed domain name from “Complainant’s marks and from affiliation with Fifth Third Bancorp.”
As to the second element, Complainant asserts that Respondent has no rights or legitimate interest in the disputed domain name. Complainant asserts that it has no “association or affiliation” with Respondent, that Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services, that Respondent is not commonly known by the disputed domain name and that diverting Internet users to competitors’ sites does not constitute a legitimate use of the domain name.
Complainant asserts, in relation to the third element, that Respondent has registered the domain name <fifththirdonlinebanking.com> and is using this domain name in bad faith. Complainant contends that it is “a nationally known financial institution, with a distinctive mark and name,” that Respondent’s website is designed “to capitalize on Complainant’s stature and reputation” and to “lure” Internet users “who believe they are accessing a Web site affiliated with Complainant, to Respondent’s unaffiliated, unendorsed shell Web site.”
For its remedy, Complainant requests that the domain name <fifththirdonlinebanking.com> be transferred from Respondent to Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
To prevail in this proceeding, the Complainant must establish that:
(i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent 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.
See Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The peg upon which Complainant seeks to hang its hat
does not exist. Complainant claims that “<fifththirdonlinebanking.com>
is identical or confusingly similar to Complainant’s federally registered
service mark FIFTHTHIRD.COM for bankingservices.” The United States
Patent and Trademark Office (“USPTO”) does not reflect an application
or a registration for FIFTHTHIRD.COM. But this does not mean that Complainant’s
hat hits the dirty floor. The USPTO’s records reflect a portfolio of FIFTH
THIRD marks registered to Complainant. See, e.g., FIFTH THIRD (reg. no. 2366546).
In addition to the rights established by registration, Complainant has longstanding
common-law rights in its mark.See National Football League Players
Association, Inc. v. Cayman Trademark Trust d/b/a Trademark, WIPO
Case No. D2005-0234 (recognizing common law marks as protected under Policy).
Given Complainant’s rights in FIFTH THIRD, the
only question is whether the domain name <fifththirdonlinebanking.com>
is confusingly similar to FIFTH THIRD. The only sensible answer to this question
is “yes.” The addition of descriptive terms to a trademark does
not create anything new and different – especially when those terms merely
describe the services commonly offered under the trademark. See F. Hoffmann-La
Roche AG v. N/A, WIPO Case No. D2006-0512 (“The
mere fact that the Respondent has added to this mark the common word “pure”
does not affect the essence of the matter: the contested domain name wholly
incorporates the Complainant’s registered trademark TAMIFLU and this,
by itself, is sufficient to establish the criterion of similarity for purposes
of the Policy.”).
Complainant has proved the first element required under the Policy.
B. Rights or Legitimate Interests
Though trademark owners may not like it, there are legitimate reasons for a respondent to use a complainant’s trademark in a domain name. A respondent may be a merchant who sells the complainant’s goods; a respondent’s name may be the same as the complainant’s trademark; a respondent may wish to offer legitimate criticism of the complainant’s services. See Policy, paragraph 4(c). Complainant asserts that Respondent does not fit into any of those categories and does not have a legitimate reason to use FIFTH THIRD in <fifththirdonlinebanking.com>. The evidence strongly supports Complainant’s contention.
The disputed domain name leads to a website that offers
links to a number of financial institutions, including Complainant and its competitors.
Respondent’s use of Complainant’s trademark to promote the goods
or services of Complainant’s competitors does not establish Respondent’s
rights or legitimate interest in the domain name. See Harry and David v.
Jill Wasserstein, WIPO Case No. D2005-1332;
ESPN, Inc. v. XC2, WIPO Case No. D2005-0444;
Lexar Media, Inc. v. Michael Huang, WIPO
Case No. D2004-1039.
Complainant has proved the second element required under the Policy.
C. Registered and Used in Bad Faith
The Policy offers four examples of a domain name that is registered and used in bad faith. SeePolicy, paragraph 4(b). Last, but not least, is evidence that a respondent “intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site 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] web site ...” Id.
Complainant argues that “[t]he only conceivable
purposes of Respondent’s use of the disputed domain name is to divert
traffic intended for Complainant or to extort significant money from Complainant
in bad faith.” Though Complainant offers no proof that Respondent has
tried to extort money in “bad faith” (or good), it does present
a compelling argument: Respondent’s website. After all, Respondent could
hardly have acted in good faith when it took Complainant’s trademark,
slipped it into a domain name, and then linked the domain name to a website
that offered the services and products of Complainant and its competitors. See
Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig
Miller, WIPO Case No. D2006-0536 (“Respondent’s
website actually directs users to the range of gambling services, including
on-line casinos, which directly compete with Complainant’s business. This
conduct of diverting traffic for the purpose of disrupting the business of a
competitor for monetary gain is clearly considered bad faith under the Policy.”).
Complainant has proved the third and final element
required under the Policy.
7. Decision
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 <fifththirdonlinebanking.com> be transferred to the Complainant.
Steven L. Snyder
Sole Panelist
Dated: November 6, 2006
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