Fifth Third Bancorp v. Domain Administration Limited
Case No. D2006-1207
1. The Parties
The Complainant is Fifth Third Bancorp, Ohio, United States of America, represented by Graydon Head & Ritchey, LLP, United States of America.
The Respondent is Domain Administration Limited, c/o
David Halsted, Auckland, New Zealand.
2. The Domain Name and Registrar
The disputed domain name <fifth-third.com> is
registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2006. On September 20, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 21, 2006, eNom 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 Respondent of the Complaint, and the proceedings commenced on September 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 26, 2006.
The Center appointed James McNeish Innes as the sole
panelist in this matter on November 10, 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
Complainant Fifth Third Bankcorp is an Ohio Corporation with a principal office situated in Cincinnati, Ohio, United States of America. It is a multi bank holding company engaged in banking and investment services through its various subsidiaries.
Complainant owns the rights to the registered service marks FIFTH THIRD BANK, for banking services, and FIFTH THIRD, for investment consultation and stock brokerage services. The service mark FIFTH THIRD BANK was first used by Complainant in 1968. Service mark applications for FIFTH THIRD BANK and FIFTH THIRD were filed in the United States of America on June 25, 1990 and October 19, 1999, respectively. The service mark FIFTH THIRD BANK was registered in the United States of America as Registration Number 1645502 on May 21, 1991 and the service mark FIFTH THIRD was registered in the United States of America as Registration Number 2366546 on July 11, 2000.
Complainant also owns a number of other trademarks
and service marks in the United States incorporating the terms “FIFTH
THIRD” and “53” for general banking services and a variety
of other financial products and services. The disputed domain name was first
registered by Respondent on June 23, 2002.
5. Parties’ Contentions
A. Complainant
Complainant’s contentions include the following:
(i) Respondent’s domain name <fifth-third.com> is identical or confusingly similar to Complainant’s federally registered service mark FIFTHTHIRD for banking services. Respondent’s insertion of a single hyphen and the addition of a “.com” does not distinguish it from the Complainant’s marks and from affiliation with Fifth Third Bankcorp. The domain name <fifth-third.com> is therefore confusingly similar in all material aspects to Complainant’s mark and trade name.
(ii) Respondent has no rights or legitimate interest in the disputed domain name. Complainant has absolutely no association or affiliation with Respondent. Respondent has never corresponded with Complainant with respect to the use of Complainant’s corporate name or marks. In addition, Complainant asserts that Respondent’s name does not incorporate the domain name. Complainant is unaware of any trademark registrations owned by Respondent for FIFTHIRD or 53 marks. Complainant is further unaware of any holding out by Respondent as Fifth Third Bank.
(iii) Respondent has registered <fifth-third.com> and is using the domain name in bad faith. Respondent’s action is in clear violation of Paragraph 4(b)(iv) of the Policy. Respondent has intentionally attempted to attract, for commercial
gain, Internet users to its Website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s Website.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) That the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Two separate issues arise. They are (1) does Complainant have rights in the
mark and (2) is the domain name identical or confusingly similar to any such
mark. Complainant has produced evidence that has established continued commercial
usage of its marks since 1968. The record also confirms that Complainant has
registered rights in the mark FIFTH THIRD BANK among others. As to the second
question the disputed domain name is composed from the words FIFTH and THIRD.
Numerous Panels in the past have found that the use of a hyphen in a domain
name to separate a mark does not alter the mark. In a similar way the addition
of a “.com” does not alter the mark. The disputed domain name is
identical and confusingly similar to the Complainant’s marks. See Fifth
Third Bankcorpv. Domain Activity Pty. Ltd., WIPO
Case No. D2003-0884 and the cases refered to therein. The Panel finds that
paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4 (c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the Panel to be proved based upon its evaluation of the evidence presented shall demonstrate a Respondent’s rights or legitimate interests in the domain name for the purpose of Paragraph 4(a)(ii):
(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has not submitted a Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of Respondent. The Panel finds that Respondent has no rights or legitimate interests in the domain name. The Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions for “Evidence of Registration and Use in Bad Faith”. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark form reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your Website or other on-line location, by creating a likelihood of confusion with the endorsement of your Website or location or of a product or service on your Website or location.
There is a case in support of the situation set out in Paragraph 4(b)(iv). Complainant’s submissions assert that Complainant is a nationally known financial institution, with a distinctive mark and name. Complainant also asserts that Respondent is seeking to capitalize on Complainant’s stature and reputation and lure Internet users who believe they are accessing a website affiliated with Complainant, to Respondent’s unaffiliated, unendorsed shell website. Complainant states that the 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.
The contentions are accepted by the Panel. The Panel
finds that the paragraph 4(a)(iii) of the Policy has been satisfied.
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 <fifth-third.com> be transferred to Complainant.
James McNeish Innes
Sole Panelist
Dated: November 24, 2006
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