WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chittenden Corporation v. Kiumars Parvin (aka Kevin Parvin)
Case No. D2001-1079
1. The Parties
Complainant is Chittenden Coporation ("Chittenden") A corporation which is a registered bank holding company, having a principal place of business at Two Burlington Square, Burlington, VT 05402, USA. Respondent is Kiumars Parvin (Aka Kevin Parvin) at 123 June Street, P.O. Box 888, Worcester, MA 01602, USA.
2. The Domain Name and Registrar
This dispute concerns the following domain name, ("Domain Name"). The registrar with which the domain name is registered is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complaint by e-mail and in hard copy on August 30, 2001, and September 6, 2001, respectively. 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is September 7, 2001.
Issuance of Complaint
The Complaint indicates that NSI WHOIS ("NSI") records for the Domain Name lists Respondent Kiumars Parvin at the following address: 123 June Street, PO Box 888, Worchester, MA 01602. Complainant sent a copy of the Complaint by e-mail to Respondent. Kevin Parvin is the Administrative and Billing contact for the Domain Name.
Confirmation of Registration Details
On September 3, 2001, the Center transmitted, via e-mail to NSI, a request for registrar verification in connection with this case. On September 4, 2001, NSI transmitted by e-mail to the Center, their verification response confirming the domain name is registered through NSI and that KIUMARS PARVIN is the Registrant and that Kevin Parvin is the Administrative Contact.
Notification of Complaint
On September 7, 2001, the Center transmitted to the Respondent, Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by September 27, 2001.
Filing of Response
On September 27, 2001, Respondent filed a Response by e-mail and sent a hardcopy on October 2, 2001.
Supplemental Submissions
Complainant submitted to the Center a Reply to Respondent�s Response, dated September 28, 2001. On the Panel�s request the Center furnished to the Panel electronic files of this supplemental submission.
Constitution of Administrative Panel
On October 15, 2001, the Center notified the parties via e-mail that the Administrative Panel would consist of a single member, Mr. David Everett Wagoner as the Sole Panelist.
Compliance with the formalities of the Policy and the Rules
Upon review of the file, the Panel concludes that the Center has fully complied with the formalities of the Policy and Rules, that Respondent was given adequate notice of this proceeding, and that Respondent has been accorded due process.
4. Factual Background
(1) On December 27, 1987, Flagship Bank and Trust Company was incorporated in the Commonwealth of Massachusetts as a state-chartered Massachusetts bank, and began rendering banking services to the public using the name and service mark "FLAGSHIP BANK." On February 29, 1996, Chittenden Corporation, Complainant herein, acquired Flagship Bank and Trust Company and created a new entity having the same name, Flagship Bank and Trust Company, which was a state-chartered Massachusetts bank which has continued to operate under the name and service mark FLAGSHIP BANK, and which has continued to do so up to and including the present.
(2) Complainant has filed an Application to Register FLAGSHIP BANK as a service mark in the United States Patent & Trademark Office. This application is U.S. application Serial No. 78/062,130, having a filing date of May 4, 2001. In that application, Complainant has sworn that it has used the FLAGSHIP BANK service mark in connection with banking services since December 27, 1987, and in interstate commerce since 1988.
(3) Complainant's Flagship Bank is a community and an Internet bank. Complainant has operated banks bearing the FLAGSHIP BANK name in many different locations in Worcester, Massachusetts and elsewhere since 1987.
(4) Respondent Parvin lives in Worcester, Massachusetts. Respondent has no connection with Complainant or with any bank or financial institution of any kind. Respondent does not provide banking services. Respondent�s service is to provide internet users with a list of internet banks.
(5) Complainant's attorney sent a letter dated May 14, 2001, to Respondent, explaining the situation, and requesting that Respondent cease all use of his domain name , and that he transfer the registration to Complainant.
(6) After unsuccessful negotiations, Complainant filed a Complaint in the U.S. District Court for the Central District of Massachusetts, entitled Chittenden Bank v. Parvin, Civil Action No. 01-40136-NMG. The basis of the Complaint was the Cyberpiracy Prevention Act, Title 15, U.S.C. 1125(d). This federal suit was filed on July 24, 2001. Respondent has not filed any response to the Complaint.
5. Parties� Contentions
A. Complaint
The Complaint alleges that the Domain Name is nearly identical and confusingly similar to the Complainant�s service mark, that Respondent registered the Domain Name in bad faith and that Respondent has no rights or legitimate interests in respect of the Domain Name.
B. The Response
Respondent alleges that the domain name is not identical or confusingly similar to any trademark held by Complainant in which Complainant has rights, that Respondent has legitimate interests in respect of the Domain Name and that Respondent has neither registered nor used the domain name in bad faith.
6. Discussion and Findings
As a preliminary matter, the Panel accepts the supplemental Reply to Respondent�s Response submitted by Complainant. The Panel has discretion to accept supplemental submissions. In the present proceeding, Complainant�s Reply addresses facts asserted by Respondent that Complainant should not reasonably have been aware of when preparing its initial submission. There is sufficient basis for the Panel to accept Complainant�s supplemental submission.
Paragraph 4(a) of the Policy directs that Complainant must prove, with respect to the domain name in issue, each of the following:
(1) The domain name in issue is identical or confusingly similar to the Complainant�s trademarks or service marks; and,
(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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, any one of which for purposes of Paragraph 4(a)(iii), 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 any one of which, if proved, shall demonstrate Respondent�s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar Domain Name
Complainant has proved that Respondent�s Domain Name is confusingly similar to a service mark in which Complainant has rights.
Respondent alleges that Complainant does not have exclusive rights in the Domain Name. Respondent asserts that the service mark FLAGSHIP BANK is similar to names used by several other banks and financial institutions. Respondent cites a Florida bank with two federally registered marks and two other non-related Flagship Banks. Respondent indicates that several other banks and financial institutions have applied for trademark registration with the name Flagship Bank.
Complainant�s Reply indicates that two of the registrations state on their faces that they are expired and dead, that three of the trademark applications state on their faces that they are abandoned and dead, and that the remaining three registrations do not involve banks and state as dates of their first use many years subsequent to Complainant�s 1987 date of first use.
The Panel is of the opinion that the Policy limits its authority to determining rights between the parties to this proceeding and that this authority does not extend to consideration of the rights of third parties. Determination of third party rights is a matter for consideration at a different time and in a different forum.
The panel agrees with the Dissent of M. Scott Donahey in First American Funds, Inc. v. Ult.Search, Inc., WIPO Case No. D2000-1840:
"The Policy does not call upon the Panel to consider or to adjudicate the rights of parties not present in the proceeding. As a Panel, we are instructed to evaluate only the rights, interests, and conduct of the parties before us. To the extent that the majority opinion considers the rights and interests of third-party trademark registrants or business entities, I believe it acts outside the scope of the Panel�s authority." p. 12
The Domain Name was registered on October 17, 1999, and Complainant�s application for service mark registration was filed on May 4, 2001. The application indicates that Complainant used the service mark in connection with its banking services since December 27, 1987 and in Interstate Commerce since 1988. Since the dispute is between U.S. parties, Complainant has common law rights in the service mark.
There can be no question about the fact that Respondent�s Domain Name, is confusingly similar to Complainant�s service mark, FLAGSHIP BANK. Indeed they are virtually identical.
B. Domain Name Registered and Used in Bad Faith
C. Respondent�s Rights or Legitimate Interests in the Domain Name
Complainant has operated banks bearing the Flagship Bank name in many different locations in Worcestor, Massachusetts and elsewhere since 1987. Respondent lives in Worcestor, Massachusetts and must have known that Complainant was operating banks in that location bearing the Flagship Bank name.
With this knowledge Respondent registered a Domain Name which is nearly identical to the name being used by Complainant. Although Respondent has never provided banking services, registration of a domain name substantially similar to the name long used by Complainant in its banking business tends to be misleading.
Respondent is not authorized to use Complainant�s mark in connection with its business or to imply that there is an affiliation, association, or endorsement of its business by Complainant through its use of the Domain Name. Respondent�s Domain Name is likely to confuse customers to believe they have reached a website of the Complainant.
The fact that Respondent�s website contains a banner which disclaims affiliation with Flagship Bank and Trust Company does not cure the problem. The confusion created by Respondent�s use of a substantially identical name would mislead the consumer to go to Respondent�s website which is exactly what Respondent wants. The disclaimer comes too late.
The parties dispute whether Respondent registered the Domain Name for purposes of sale. Respondent�s own documentation contains a listing of the Domain Name registration which states: "Make an offer to get this domain." (Exhibit B, emphasis in original). It is not necessary to resolve this issue to find that Respondent has acted in bad faith in both the registration and use of the Domain Name.
Likewise Respondent has no legitimate rights or interests in the Domain Name. The Domain Name was inspired by and copied from Complainant�s service mark for the purpose of confusing internet users and trading upon a name in which Complainant had established common law rights.
7. Decision
In light of the foregoing, the Panel decides that:
(1) The Domain Name registered by Respondent and at issue here is confusingly similar to Complainant�s service mark; and
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name at issue; and
(3) The Domain Name at issue has been registered and is being used in bad faith by Respondent.
Accordingly, the Panel decides that the Registration of the Domain Name set forth in paragraph 2 of this Decision shall be transferred to Complainant.
David Everett Wagoner
Sole Panelist
Dated: November 9, 2001
Full & Egal Universal Law Academy