WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KeyCorp v. BruceB
Case No. D2004-0234
1. The Parties
The Complainant is KeyCorp, Cleveland, Ohio, United States of America, represented by Thompson Hine LLP, United States of America.
The Respondent is BruceB, Seattle, Washington, 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 March 25, 2004. On March 26, 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 March 26, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 1, 2004. 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 April 7, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2004. The Response was filed with the Center on April 27, 2004. Complainant followed with a Supplemental Filing which was received by the Center on April 30, 2004. The Supplemental Filing was filed in a timely manner upon the Complainant receiving new information and therefore was considered by the Panel.
The Center appointed Sandra Franklin as the sole panelist in this matter on May 4, 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.
4. Factual Background
Complainant is KeyCorp, a bank holding company which owns the trademark KEYBANK, and holds several U.S. trademark registrations for KEYBANK. The earliest registration was issued in 1992, and shows use going back to 1980. The domain name was registered by Complainant in 1995. Respondent registered on May 9, 2001.
5. Parties' Contentions
A. Complainant
Complainant makes the following assertions:
1. Respondent's domain name is identical and confusingly similar to a trademark in which the Complainant has rights.
2. Respondent has no rights or legitimate interests in respect to the domain name .
3. The domain name was registered and is being used in bad faith.
B. Respondent
Respondent states the following:
1. The public will not be confused by the similarity of his domain name to the trademark KEYBANK.
2. Respondent has a legitimate fair use interest in the domain name .
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established rights in the KEYBANK mark through U.S. registrations and continuous use since at least 1980.
The disputed domain name is identical to the KEYBANK mark because Respondent has incorporated Complainant's mark in its entirety and merely added a top-level domain name to the mark, which has consistently been found a non-distinguishing factor. See Autosales Incorporated v. Don Terrill, WIPO Case No. D2001-1341 (February 24, 2002), finding that incorporation of a mark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. See Kabushiki Kaisha Toshiba v. Shan Computers, WIPO Case No. D2000-0325 (June 27, 2000) finding that is identical to Complainant's TOSHIBA trademark; see also Nike, Inc. v. William Coleman, WIPO Case No. D2000-1120 (November 6, 2000) finding identical to Complainant's famous NIKE mark; see also Little Six, Inc. v. Domain For Sale, NAF Case No. 96967 (April 30, 2001) finding identical to Complainant's MYSTIC LAKE trademark and service mark.
Complainant does not have to show "likelihood of confusion," as in trademark law, and certainly does not have to show actual confusion. It does not help Respondent's case that consumers will eventually figure out who sponsors a particular site. Under paragraph 4(a)(i) of the Policy, the evaluation as to similarity of a trademark to a domain name is made purely on a comparison between the trademark and the alphanumeric string which makes up the domain name. For that holding, see Autosales Incorporated v. Don Terrill, WIPO Case No. D2001-1341 (February 24, 2002) and Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (January 29, 2001).
The Panel finds that Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Respondent states that he is not deriving any commercial gain from the web site at . The copies of web site pages, however, show banner ads for Site Racer and for the host of the domain name, directNIC. Banner ads are a common source of economic benefit to the owners of the web sites displaying them.
Respondent also states that the site is for commentary on Key Bank. However, when Complainant went to the site at , they found political content pertaining to John Kerry. Respondent asserts that this was just temporarily-posted content, accidentally left on the "www." site. When one visits "www." now, three links are provided: one is a blank email reply form, one is a link to "Complaints about Key Bank on R," which is "under construction," and the third is a link to a typed stream of complaints. Regarding the latter, there is nothing to identify the date or source of the complaints for all but one of them. One of the complaints shows the name "Joshua Lippiner, VP/Director, O" at the bottom. An investigation of shows that there is no person or content identified in connection with but only an email contact. The domain name is for sale for $1288.00.
Furthermore, in its Supplemental Filing, Complainant states that the content pertaining to Key Bank was only posted after this proceeding commenced and after Respondent offered to sell the domain name to Complainant for $1000.
This Panel notes that the domain name was registered three years ago, yet has very little legitimate content on it, and none which can be traced to an independent party. It had much more developed political content, despite Respondent's characterization of the political content as a "beta version," at the "www." site. This leads the Panel to conclude that the more likely purpose of registering the domain name was to reroute traffic to Respondent's political site using a well-established trademark, or to sell the domain name.
Respondent asserts that he "has a history of creating public forum web sites that engage in astute political and social commentary," yet his only proof of that is a page from the one site regarding John Kerry. This Panel finds that it is insufficient evidence to support Respondent's claim.
Finally, Respondent states that "Until becoming a `defendant' in this domain dispute [he] had never had any direct contact interaction with KeyCorp." This Panel finds it unlikely that Respondent would randomly launch a web site for complaints about a corporation it had no interaction with, one of only two web sites of Respondent's in the record.
None of the factors noted in paragraph 4(c) of the Policy are available to support Respondent's allegation of a legitimate interest in the domain name. Respondent made no demonstrable preparations to make fair use of the domain name prior to notice of this dispute. Respondent is not known by the domain name. There is evidence that Respondent intended to and did obtain commercial gain from the domain name, and that Respondent knowingly diverted consumer traffic to his web site by using a well-known trademark.
For all of the foregoing reasons, this Panel finds that the Respondent has not established legitimate rights in the domain name and that Policy, paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, various indications of bad faith are listed, including two, which apply to this case:
(i) Circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit, and
(iv) Using the domain name to attract, for commercial gain, Internet users to Respondent's web site by creating a likelihood of confusion with the trademark owner's mark.
Respondent has not contested Complainant's allegation that he offered to sell the domain name for $1000. See The Board of Regents of the University of Nebraska v. Bill Saedlo, WIPO Case No. D2000-0154 (April 20, 2000), stating "it is now well established that the act of registering a trademark as a domain name and then offering to sell the name to the rightful trademark owner constitutes commercial use" and bad faith. See also Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d 264 (4th Cir. 2001), affirming summary judgment against a registrant who acted in bad faith when it offered for sale to the VW mark owner.
Additionally, Respondent admitted that he was aware of Complainant's trademark rights and knew or should have known that registration of was likely to violate Complainant's rights, held as evidence of bad faith in JVC Americas Corp. v. MaCafee, CPR No. 007, November 10, 2000; see also Digi Int'l v. DDI Sys., NAF Case No. 124506 (October 24, 2002) ("there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant's trademarks, actually or constructively").
This Panel also finds the after-the-fact attempt to develop the appearance of fair use to be disingenuous and further evidence of bad faith. The factors listed in paragraph 4(b) of the Policy are intended to be illustrative and non-exclusive of other factors that may lend the inference of bad faith registration and use to a panel. Thus, circumstances outside the expressly outlined factors may be considered by the Panel in reaching its conclusions. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000) ("the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive"); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, WIPO Case No. D2000-0397 (June 19, 2000) ("[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.")
The Panel finds that Complainant has established Policy, paragraph 4(a)(iii).
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.
Sandra Franklin
Sole Panelist
Dated: May 15, 2004
Full & Egal Universal Law Academy