WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
UPIB, Inc. v. Texas Internet
Case No. D2004-0073
1. The Parties
The Complainant is UPIB, Inc., Hamilton, Bermuda, United Kingdom of Great Britain and Northern Ireland, represented by Wyatt, Tarrant & Combs, United States of America.
The Respondent is Texas Internet, Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 28, 2004. On January 29, 2004, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On January 29, 2004, Intercosmos Media Group d/b/a directNIC.com 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 but pointing out that the Respondent has not submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 24, 2004, in which it agrees to submit to the court jurisdiction at the location of the domain holder's address. The Center verified that the Complaint together with the amendment to 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 February 24, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 1, 2004.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on April 20, 2004. 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.
On April 23, 2004, the Respondent sent to the Case Manager of this case an e-mail which was immediately sent to the Panel. Even if the reply of the Respondent has not been sent in the scheduled time, this Panel, at its sole discretion, decides to accept it.
No further submissions were presented to the Panel or the Center.
4. Factual Background
The following uncontested facts are found by the Panel and established as true.
UIPB owns USA trade mark application "UNION PLANTERS BANK" applied on June 24, 2002, with the first usage date July 9, 1929, and the registered trademark "SOLUTION: UNION PLANTERS BANK" since June 1, 1998, with the first usage date October 12, 1997, and licenses these trademarks with other common law trademarks exclusively to Union Planters Corporation and its subsidiaries and affiliates.
Union Planters Corporation is one of the largest financial institutions in the United States of America and manages more that $32 billion in assets.
The UNION PLANTERS trademark has been used in connection with a wide variety of financial services and products since 1929. The UNION PLANTERS marks symbolize high quality of banking.
The disputed domain name is registered in the name of the Respondent on June 3, 2000, and renewed.
5. Parties' Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the domain name subject of this dispute.
In relation to element (i) of paragraph 4(a) of the Policy, the Complainant contends that the domain name in dispute is simply identical or confusingly similar to the "UNION PLANTERS" trademarks. It is irrelevant that the Respondent has deleted one letter from the UPIB's trademarks, because the confusion between the trademark and the domain name is not alleviated.
The Complainant has rights in the UNION PLANTERS trademark and this mark has been used in connection with a wide variety of financial services since 1929, and has owned the domain name since April 27, 1996.
In relation to element (ii) of paragraph 4(a) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect to the domain name. The Complainant has never assigned, licensed or granted permission to the Respondent to commercially utilize its UNION PLANTERS trademark or any other trademark that incorporates the famous UNION PLANTERS mark.
The Respondent is not making legitimate noncommercial or fair use of the contested domain name. In fact the Respondent used the domain name in dispute to link to a website sponsored by Western Union, a competitor of UPIB's licensees. After receiving the cease-and-desist letter from the Complainant, the Respondent uses the domain name in dispute to advertise an "Internet Searchlight" and to provide links to dozens of businesses, including many which offer financial services and which are competitors of Union Planters Corporation and its subsidiaries and affiliates.
The Complainant states that the Respondent does not own any registered or common law trade mark containing the terms "UNION PLANTERS" or any similar derivation. Moreover, the Respondent has not been commonly or legitimately known by the contested domain name.
In relation to element (iii) of paragraph 4(a) of the Policy, the Complainant contends that evidence of bad faith registration and use is established by the following circumstances.
The Respondent at the time of the registration of the contested domain name was surely aware of the trademark of the Complainant taking into consideration that the UNION PLANTERS marks had been in use for more that seventy years prior to the Respondent's registration of the domain name and also that the Complainant registered __ as domain name in 1996, and it is using it for an active website that advertises the bank's services and goods.
The proof of the bad faith of the Respondent is provided by the fact that the Respondent is using the mark to advertise services that are competitive with the services provided by the Complainant's licensees.
Furthermore, the bad faith is also demonstrated by the fact that the Respondent gave a fake address and phone number when registered the contested domain name.
The Complainant requests the Panel to transfer the disputed domain name to it.
B. Respondent
The Respondent did not reply to the Complainant's contentions in the scheduled time. It sent an e-mail to the Case Manager of this case on April 23, 2004, which only says "This company does not have a trademark. They should not be entitled to our domain. This could be constructed as reverse-domain hijacking."
6. Discussion and Findings
Enforceable Trademark Right
The Respondent contests that the Complainant does not own a registered trademark.
According to the UDRP, it is not necessary that a complainant must hold rights specifically in a registered trademark or service mark. Instead, it provides only that there must be "a trademark or service mark in which the complainant has rights", without specifying how these rights are acquired. Therefore, if the complainant proves that its common law or unregistered trademark has achieved sufficient secondary meaning or association with the Complainant, it will have satisfied the first condition of the UDRP (see FleetBoston Financial Corporation v. Albert Jackson, WIPO Case No. D2003-0915; Fifth Third Bancorp. v. Domani Active Pty. Ltd., WIPO Case No. D2003-0884; Sealite Pty Limited v. Carmanah Technologies, Inc., WIPO Case No. D2003-0277; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784).
As results by the documents lodged, the Complainant has owned a registered trademark which includes the words "Union Planters" since 1999, with the first usage date October 12, 1997, and asimilar trademark application applied for on June 24, 2002, with the first usage date July 9, 1929.
The Complainant has proven that its common law marks "UNION PLANTERS" are well known marks, have been used by the Complainant and its licensees in connection with a wide variety of financial services and products continuously since 1929, and appear to be distinctive trademarks as confirmed also in UPIB, Inc. v. Domains Asia Ventures, WIPO Case No. D2004-0020. Therefore, this Panel finds that the Complainant enjoys the rights of a common law mark in the trademark UNION PLANTERS.
A. Identical or Confusingly Similar
The present dispute pertains to the domain name
The Complainant is the owner of common law trademark "UNION PLANTERS" which is not exactly identical to the domain name in dispute. However, the only difference is the missing letter "s" at the end of the domain name. This is a typical case of "typo-squatting" where the infringing name is one letter less than or different from the Complainant's mark. This such misspelling or typographical variation leaves the mark confusingly similar to the Complainant's mark and it is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's trademark; such domain name is likely to mislead customers into believing that the Respondent is somehow associated with the Complainant such as affiliated, sponsored or otherwise endorsed (see Ticktmaster Corporation v. Dotsan, WIPO Case No. D2002-0167; Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094).
The addition of the generic top level domain extension ".com" does not eliminate the confusion.
There is no doubt that the domain name is confusingly similar to the trademarks of the Complainant. Therefore, the Panel finds that Complainant has satisfied the first element in demonstrating abusive domain name registration and use.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no right or legitimate interests in the domain name based on the Complainant's prior use. The Respondent, even if it filed a late response, did not dispute this contention nor did it provide information as to its interests to use the domain name. There is no prima facie indication of any rights or legitimate interests on the part of the Respondent in the domain name. Quite the contrary, the evidence suggests that the Respondent is using the contested domain name for commercial gain, and that such use of the domain name may tarnish the Complainant's mark.
According to the evidence submitted by the Complainant, the Respondent is not making a legitimate non-commercial or fair use of the domain name in dispute. In fact, the domain name, incorporating the Complainant's trademark in its entirety, is used to provide links to dozens of businesses, including many which offer financial services and which are competitors of Union Planters Corporation and its subsidiaries and affiliates.
Further, the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademarks or service marks or to apply for or to use the domain name incorporating the said marks.
Under these circumstances, the Administrative Panel finds that the Respondent has no rights or legitimate interest in the domain name, and therefore the Complainant has satisfied the second element in demonstrating abusive domain name registration and use.
C. Registered and Used in Bad Faith
Based on its common law right, the Complainant has acquired exclusive rights to use the "UNION PLANTERS" mark in conjunction with goods and services which the Complainant has been providing under that mark since 1929. The Respondent registered the domain name, which is identical to the Complainant's mark, in bad faith.
The Panelist assumes that only someone who was familiar with the Complainant's mark would have registered the identical domain name, especially because it was used by the Respondent in the same sector, namely banking. The circumstance that the Respondent in its response did not indicate any good faith use of the disputed domain name confirms the statement of the Complainant.
Moreover, the Respondent is using the disputed domain name for commercial purposes creating likelihood of confusion with the Complainant's marks. Internet users who visit the contested domain name find links to several businesses including many which offer the same service and products of the Complainant.
This Panel believes that the Complainant has satisfied the third element in demonstrating bad faith registration and use of the domain name.
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 be transferred to the Complainant.
Nicoletta Colombo
Sole Panelist
Dated: May 3, 2004
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