WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Plymouth Savings Bank v. Telmex Management Services
Case No. D2001-1333
1. The Parties
The Complainant is Plymouth Savings Bank of 151 Campanelli Drive, P O Box 1439, Middleborough, Massachusetts 02346-1439, USA. It is represented by Leslie Meyer-Leon Esq. IP legal Strategies Group P.C. of 901 Main Street, P O Box 280, Osterville, MA 02655-0280, USA.
The Respondent is Telmex Management Services, of Pasae Estate, Road Town, Tortola, British Virgin Islands, VG 15303265139.
The Respondent�s Administrative, Technical and Billing Contact is Antoinne Rousseau, of the same address as the Respondent and an email address at: e-mail-telmex@.
2. The Domain Name and Registrar
The domain name, which is the subject of this Complaint, is �
The Registrar is InterCosmos Media Group, Inc., d.b.a. directNIC.com of 650 Poydras Street, Suite 2311, New Orleans, Louisiana 70130, USA ("directNIC").
3. Procedural History
On November 7, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Uniform Domain Name Dispute Resolution Policy implemented by ICANN ("the Rules"). The Complainant elected to have the dispute decided by a three-member Administrative Panel.
The Center sent a Request for Registrar Verification to directNIC on November 12, 2001, by email. directNIC responded on November 19, 2001, and confirmed: (1) that it was in receipt of a copy of the Complaint, (2) that it was the Registrar for the disputed domain name, (3) that the Respondent, Telmex Management Services, was the current Registrant of the contested domain name, (4) that the Respondent�s contact details as set out above were correct, (5) that the UDRP applied to the contested domain name, (6) that the current status of the contested domain name was �locked�, (7) that the language of the agreement was English, and (8) that pursuant to the Policy the venue for court-related proceedings pursuant to the registration agreement was the State or federal courts located in Orleans Parish, State of Louisiana.
On November 21, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier and e-mail, as well as to its Administrative, Technical and Billing contact. Copies were also sent to the Complainant by email, to ICANN and to directNIC.
This was acknowledged by Mr. A Rousseau on behalf of the Respondent by email on December 3, 2001, and by hard copy on December 7, 2001.
The Center sent a Notification of Respondent Default to the Respondent on December 19, 2001.
On December 19, 2001, the Respondent queried in what way it had �defaulted� since it had responded to the Complaint on December 3, 2001. The Center replied on December 20, 2001, that there had been no official Response in accordance with the Rules. At the same time it invited the Respondent to nominate three persons for the Administrative Panel.
On December 21, 2001, the Complainant asked for clarification of the schedule for the proceedings under the Rules.
On December 24, 2001, Helen Bradbury on behalf of the Respondent again queried in what way it had �defaulted� since it had responded to the Complaint by the due date.
On January 8, 2002, the Center replied to the Respondent, acknowledging receipt of its Response by e-mail on December 3, 2001, and in hard copy by courier on December 7, 2001.
On February 11, 2002, the Center sent out a Notification of Appointment of Administrative Panel to all the parties, including the three appointed panelists, giving a Projected Decision Date of February 25, 2002.
4. Factual Background
Activities of the Complainant
The Complainant is a Massachusetts-chartered savings bank which was originally organized in 1847. It is now owned by Plymouth Bancorp, Inc., a mutual holding company established in 1998. It is a community focused savings bank, which accepts deposits and provides a full range of loan products and financial services to its customers, including residential real estate loans and retirement planning services.
The Respondent
The Respondent has supplied no information about itself other than the letter referred to under 5B below.
The Complainant�s Trademarks
The Complainant owns a US registered service mark for the words Plymouth Savings which are accompanied by the device of a Quaker. It was registered on February 3, 1976, under No. 1,032,520 for banking services in class 36 and a copy was annexed to the Complaint. The Complainant asserts it has provided financial services under, and has held common law (unregistered) trademark rights to the mark PLYMOUTH SAVINGS BANK, which has been in commercial use continually since 1847.
5. The Parties� Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its registered service mark "Plymouth Savings and Design" and the mark PLYMOUTH SAVINGS BANK, which it has used continuously since March 12, 1847, and it contends that as a result it has common law trademark rights in this name. Annexed to the Complaint as proof of this use was a copy of the front cover of one of the Complainant�s brochures offering retirement services under the mark PLYMOUTH SAVINGS BANK with the Quaker device.
In addition, the Complainant annexed to the Complaint a copy of a pending US service mark application for the words PLYMOUTH SAVINGS BANK which had been filed on November 1, 2001, by the Complainant in respect of financial services in Class 36 claiming March 12, 1847, as the date of first use.
The Complainant contends that the Respondent has no legitimate interests in the contested domain name. The Complainant is aware of no evidence that the Respondent uses, has used or ever intends to use, or to offer goods or services under the contested domain name nor, the Complainant contends, has it made any legitimate non-commercial or fair use of the contested domain name. The Respondent is known by the name Telmex Management Services and it does not appear to have acquired any trademark or service mark rights in the contested domain name. Indeed it has neither applied for nor owns any US registered trademarks.
The Complainant contends that the Respondent has registered the contested domain name in bad faith, by intentionally using it to divert customers to its own website at , by offering to sell the contested domain name to the Complainant for excessive financial gain, and by knowingly tarnishing and thereby lowering the value and the goodwill of the Complainant�s marks.
The Respondent offers a female escort service at its website where it offers to "provide women", including "CEO Model Executive Lover Friend Associate Fantasy Maid Secretary Date Escort Host Companion Guest Dinnerdate Wife Consultant Temp Gift & Exhibition Staff". Internet users entering the contested domain name are immediately diverted to this site, a copy of which, dated November 1, 2001, was annexed to the Complaint. Also annexed to the Complaint was a copy of the InterCosmos source code which shows that all hits to the contested domain name are automatically redirected to .
The Complainant�s Senior Vice President sent an email to the Respondent on October 29, 2001, saying that she had discovered the above link and asked that it be discontinued. The next day, Helen Bradbury, on behalf of the Respondent, replied asking whether the Complainant would like to buy the contested domain name. The proposed purchase price was $5,000 whereas it is the Complainant�s contention that the Respondent�s out-of-pocket expenses were only $15, because it annexed to the Complaint a copy of the directNIC Price list which quotes $15 as the price for obtaining a domain name registration in the TLD for 1 year
Lastly the Complainant contends that the Respondent is a reseller of domain names because its email address is associated with another domain name and a WHOIS reprint of this domain name (which was annexed to the Complaint) identifies the Respondent as a �Sponsoring Reseller�.
B. Respondent
The Respondent�s only response to the Complaint and to the allegations made therein
was in its initial emailed acknowledgement of the Complaint to the Center. In this it stated as follows:
"May I also inform you that we consider we have the legitimate right to the said domain, purchased on behalf of our BVI Trust company who are to launch a banking portal in the United Kingdom during 2002, for various cities, one of which, is the city of Plymouth, England.
Furthermore I would like to add that the complainant, offered to buy the said domain in an email communiqué dated 30th October2001, from Karen Quinn Vice President of the Plymouth Savings Bank (USA), which we have considered.
At no time have we attempted to pass-off as the complainants bank OR indeed have activated the said domain for it�s intended purposes."
6. Discussion and Findings
Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving that all of three elements are present in its Complaint, namely:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the 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.
(i) Identity or Confusing Similarity of the Domain Name to a Trademark or Service Mark in Which Complainant Has Rights
While the Respondent has stated, in correspondence produced by the Complainant, that "there are a number of Plymouth�s in the world", there is evidence of only one Plymouth Savings Bank which, according to the undisputed evidence of the Complainant, has provided financing services under its common law trademark since 1847.
The Panel finds that the disputed domain name is confusingly similar to the Complainant�s registered service mark PLYMOUTH SAVINGS and Design, and also to the Complainant�s unregistered mark PLYMOUTH SAVINGS BANK.
The Complainant has therefore satisfied the conditions for the first element to be successful.
(ii) Absence of Rights or Legitimate Interests of the Respondent in the Domain Name
The Respondent has not shown any use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services. Nor has the Respondent shown that it has been commonly known by the domain name. In addition, the Respondent has not shown that it is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain.
The statement by the Respondent in its informal Response, being a letter dated December 3, 2001, that the domain name was purchased "on behalf of our BVI Trust Company who are to launch a banking portal in the United Kingdom during 2002, for various cities, one of which, is the city of Plymouth, England" is in fact evidence at most of a proposed use of the domain name, and is not evidence of any actual use or even of demonstrable preparations to use the domain name in connection with the bona fide offering of goods or services. The Respondent has indeed stated "At no time have we � activated the said domain name for its intended purpose."
The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name and that the conditions for the third element have been satisfied.
(iii) Registration and Use of the Domain Name In Bad Faith
The Panel finds there is no logical explanation for the choice of "plymouthsavingsbank" as a domain name, except to associate it with the registered service mark and unregistered trademark of the Complainant.
When the Complainant wrote to the Respondent requesting it to discontinue use of the domain name in question, the Respondent offered to sell the domain name to the Complainant, but for a price of $5,000 which is a consideration greatly in excess of what would be reasonable out-of-pocket costs directly related to the domain name.
The Respondent has further shown its bad faith by intentionally attempting to attract to its website, for commercial gain, viewers who would be confused into thinking they were gaining access to a website of the Complainant.
While the Respondent, by its own statements, has not "activated" the disputed domain name, "for its intended purpose", the very existence of the website under the domain name constitutes a passive use of the domain name.
Numerous decisions have held that passive use, as well as active use, of a domain name would constitute "use" as referred to in the third element (registration and use in bad faith), provided other examples of bad faith are present (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO D2000-0003). In this case, not only does the Respondent describe himself as a reseller of domain names, not only has he attempted to sell the contested domain name for far more than his out-of-pocket expenses, but he has also attempted to divert genuine Internet users to his own website from what they could honestly have believed to have been the site of the Complainant.
The Panel concludes that the domain name in dispute has been registered and is being used in bad faith.
The conditions for the third element are therefore satisfied.
7. Decision
In the result, the Panel has found that the domain name registered by the Respondent is confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith. The Complaint therefore succeeds.
Accordingly, the Panel directs that the registration of the domain name be transferred to the Complainant.
Joan Clark
Presiding Panelist
Tom Arnold
Panelist
David H. Tatham
Panelist
Dated: February 27, 2002
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