FleetBoston Financial Corporation v. Jung Y. Lee

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

FleetBoston

Financial Corporation v. Jung Y. Lee

Case No.

D2000-1771

1. The Parties

The Complainant is

FleetBoston Financial Corporation, with a place of business at 100 Federal

Street, Boston, Massachusetts 02110, U.S.A.

The Respondent is Jung

Y. Lee, with an address at R. Camomil 157, Pari, Sao Paulo, SP 03032-010, Brazil

2. The Domain Name and

Registrar

The domain name in

dispute is <fleetbostonfinancial.com>. The Registrar is Network

Solutions, Inc.

3. Procedural History

a) The Center

received Complainant's Complaint by e-mail on December 19, 2000, and by

hard copy on December 21, 2000. The Center, by an e-mail message to Network

Solutions, Inc., then sought verification of specific facts relevant to

the domain name registration from Network Solutions, Inc., and was informed,

inter alia, that according to the Registrar’s records, "the domain

name registration is currently in litigation and is under the control

of the United States District Court for the District of Massachusetts."

By letter of January

4, 2001, the Center advised Complainant that the Complaint was deficient

in that the domain-name holder did not submit in its Registration agreement

(NSI Service Agreement 4.0) to the jurisdiction of the court at the location

of the principal office of the Registrar for adjudication of disputes

concerning or arising from the use of the domain name, - and that accordingly,

Complainant had to submit, with respect to any challenges to a decision

in the administrative proceeding cancelling or transferring the domain

name, to the jurisdiction of the court at the location of the domain-name

holder’s address, as specified in the Rules, Para 1 and Para 3(b)(xiii).

By amendment dated

January 8, 2001, Complainant agreed to submit, only with respect to any

challenge that may be made by Respondent to a decision of the Administrative

Panel to transfer or cancel the domain name in dispute, to the jurisdiction

of the Court at Respondent’s address.

After receipt of

the Complaint and the Amendment dated January 8, 2001, in accordance with

paragraph 4(a) of the Rules for the Uniform Domain Name Dispute Resolution

Policy (the "Rules") and paragraph 5 of the WIPO Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"),

the Center confirmed on January 11, 2001, it had verified that the Complaint

satisfied the formal requirements of the ICANN Uniform Domain Name Dispute

Resolution Policy (the "Policy"), the Rules and the Supplemental Rules,

and further that the payment in the required amount to the Center had

been made by Complainant. The formal date of the commencement of this

Administrative Proceeding is January 11, 2001.

b) On January

11, 2001, Notification of Complaint and Commencement of Administrative

Proceeding was forwarded to Respondent by post/courier with enclosures,

and to its administrative, billing and technical contacts by facsimile

and e-mail without attachments, at the addresses given on the Registrar’s

listing of the domain name. A copy was forwarded to Complainant's representative

at the e-mail address provided in the Complaint.

c) The Notification

of Complaint and Commencement of Administrative Proceeding stated the

formal date of the commencement of the administrative proceeding was January

11, 2001, and that the last day for Respondent to send his Response to

Complainant and to the Center was January 30, 2001, and that in the event

of his failure to file such a Response by the due date he would be considered

in default. In the event of such a default, an Administrative Panel would

still be appointed which would have the discretion but not the obligation

to consider a late filed Response.

d) No response

was received by the Center.

e) On February

2, 2001, by Notification of Respondent Default, the Center notified Respondent

and his administrative, billing and technical contacts and Complainant's

authorized representative, at the respective addresses as above indicated,

that Respondent had failed to comply with the deadline indicated in the

Notification of Complaint and Commencement of Administrative Proceeding

for the submission of his Response.

f) The Center

proceeded to appoint the Administrative Panel, consisting of a single

member, Joan Clark. The Panelist had previously submitted a Statement

of Acceptance and Declaration of Impartiality and Independence to the

WIPO Arbitration and Mediation Center . The projected decision date was

February 27, 2001.

g) On February

14, 2001, the Center forwarded to Complainant and to Respondent Notification

of Appointment of Administrative Panel and projected decision date.

h) By an e-mail

message to the Center dated February 21, 2001, the Panel requested, pursuant

to Rule 12 of the Rules, clarification of issues arising from the allegations

in the Complaint, including the relationship between Complainant and FleetBoston

Corporation.

i) Complainant’s

Further Statement dated March 12, 2001, was forwarded to the Center on

March 13, 2001, and by the Center to the Panel on March 14, 2001. A page

missing from Complainant’s Further Statement, apparently omitted during

transmission, was forwarded to the Panelist on April 19, 2001.

j) The deadline

for forwarding the Panel’s decision was extended to April 27, 2001.

4. Factual Background

and Parties’ Contentions

The Complaint and Complainant’s

Further Statement

Complainant FleetBoston

Financial Corporation describes itself in the Complaint as the eighth largest

financial holding company in the United States with over 181 billion dollars

in assets. It claims to be a global financial company with more than 20,000,000

customers in more than 20 countries and territories around the world, including

customers in the country of Brazil where Complainant and its predecessor

in interest Bank Boston Corporation, have done business for more than 50

years. Complainant asserts that it is highly active in the Brazilian banking

and financial community, and considers itself well-known to the Brazilian

public. This fact appears to be emphasized in view of the fact that Respondent

is located in Sao Paulo, Brazil.

The Complaint also

explains that, since 1982, Complainant and its predecessor in interest have

substantially, continuously and exclusively used, in connection with their

business, the mark FLEET alone and as a component of composite marks incorporating

the word "Fleet".

Complainant states

that, effective October 1, 1999, Bank Boston Corporation merged into and

with Fleet Financial Group, Inc and that the resulting entity was Fleet

Boston Corporation. The Complaint further states that, by a press release

issued by the two merging corporations on March 14, 1999, there was a public

announcement of the impending merger between Fleet Financial Corporation

and Bank Boston Corporation. The announcement stated that the merged entity

would be named "FleetBoston Corporation". Press reports were published beginning

the day after the announcement reporting that the merged entity would do

business under the name "FleetBoston Corporation".

Although the press

release refers to Fleet Financial Corporation, the Panel notes that the

correct name of one of the merging entities was Fleet Financial Group, Inc.

The Complaint further

states that on March 15, 1999, the day following the announcement on March

14, 1999, of the merger of Fleet Financial Corporation and Bank Boston Corporation

which stated the merged entity would be known as FleetBoston Corporation,

Respondent registered the internet domain name <fleetbostonfinancial.com>.

Complainant’s Further

Statement explains that the name of the merged entity Fleet Boston Corporation

was changed to FleetBoston Financial Corporation, the present name of Complainant,

on April 19, 2000.

Complainant asserts

that it is the registered owner of the trademark FLEET, registered in the

United States in 1983 for banking services, and is also the owner of numerous

other trademarks registered over the years since 1983, involving the word

"fleet" as the first component of composite marks incorporating the word

"fleet", for banking, financial, investment and related services. These

trademarks are herein referred to as the Fleet Family of Marks.

The Complaint states

that Complainant owns several other common law trademarks incorporating

the term "FLEET" and that, on June 2, 1999, Fleet Financial Group, Inc.

(prior to the effective date of the merger) applied to register the mark

FLEETBOSTON for banking services and financial services.

The Complaint further

states that on October 25, 1999 (that is after the effective date of the

merger) Fleet Financial Group, Inc. (the merged entity) applied to register

the mark FLEETBOSTON FINANCIAL.

The Panel found no

evidence in the Complaint or documents submitted in support of the Complaint

that Complainant, or indeed any of the other entities referred to such as

Fleet Financial Corporation, Bank Boston Corporation, Fleet Boston Corporation

and Fleet Financial Group, Inc., had used the mark FLEETBOSTON FINANCIAL

prior to Respondent’s registration of the domain name <fleetbostonfinancial.com>.

The particular combination

of "Fleet", "Boston" and "Financial" appears, according to the Complaint

and evidence in support thereof, to have been first used by Respondent in

registration of his domain name.

The Complaint asserts

that the domain name in issue is identical to Complainant’s FLEETBOSTON

FINANCIAL mark and confusingly similar to Complainant’s FLEET mark and Fleet

Family of Marks.

The Complaint also

asserts that Respondent has no rights or legitimate interests with respect

to the FLEET or FLEETBOSTON FINANCIAL marks or the Fleet Family of Marks,

or the domain name <fleetbostonfinancial.com>, and further that there

is no evidence that <fleetbostonfinancial.com> comprises the legal

name of Respondent or a name by which Respondent was commonly known.

The Complaint states

that Respondent did not, prior to the notice of the dispute, use the domain

name or a trademark corresponding to the domain name in connection with

a bona fide offering of goods or services and adds that Respondent

has not made a bona fide non-commercial fair use of the domain name.

The Complaint further

states that the internet domain name in dispute does not currently resolve

to an active web site, and never has. When the domain name is entered into

any commercial internet browser, the Complaint states that a web page appears

that states "Coming soon… we recently registered our domain name at Register.com."

Finally, the Complaint states that Respondent registered the disputed domain

name in bad faith in order to prevent Complainant from reflecting its FLEET

and FLEETBOSTON FINANCIAL marks in a corresponding domain name.

In its overall presentation,

the Complaint lays great emphasis on its trademark FLEET and the Fleet Family

of Marks which Complainant says are well-known and have a strong reputation,

Complainant being one of the largest financial holding companies in the

United States with over 181 billion dollars in assets, over 20,000,000 customers

in more than 20 countries and territories around the world.

The Complaint states

that Complainant has a wide reputation in the word "fleet" in relation to

financial and banking services around the world, and asserts it is not possible

to conceive of a plausible circumstance in which Respondent could legitimately

use the domain name <fleetbostonfinancial.com>.

The Complaint requests

that the disputed domain name <fleetbostonfinancial.com> be

transferred to Complainant.

5. Discussion and Findings

Pursuant to paragraph

4(a) of the Policy, Complainant must prove each of the following in order

that Respondent be required to submit to a mandatory administrative proceeding:

(i) The domain

name in issue is identical or confusingly similar to a trademark or

service mark in which Complainant has rights, and

(ii) Respondent

has no rights or legitimate interests in respect of the domain name,

and

(iii) The

domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the

Policy sets out four illustrative circumstances which, for the purpose of

paragraph 4(a)(iii) above, shall be evidence of the registration and use

of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the

Policy sets out three illustrative circumstances, without limitation, each

of which, if proven, shall demonstrate Respondent’s rights or legitimate

interests in the domain name for purposes of paragraph 4(a)(ii) above.

a) Identity or

confusing similarity of the domain name to a trademark or service mark

in which Complainant has rights

The domain name in

issue is: <fleetbostonfinancial.com>.

In the opinion of the

Panel, the suffix ".com" should not be taken into consideration when considering

the identity or confusing similarity of a domain name to a trademark or

service mark.

Complainant is the

owner of the trademark FLEET and numerous other trademarks in which FLEET

is the first and primary component (the Fleet Family of Marks). The marks

are for banking, financial, investment and related services. The first registrations

submitted in evidence by Complainant were registered in 1983.

These trademarks which

include FLEET as the first and principal component are herein referred to

as the Fleet Family of Marks.

The Panel finds that

the disputed domain name is confusingly similar to Complainant’s trademark

FLEET, as well as to its Fleet Family of Marks. "fleet" is the first and

primary component of the disputed domain name, and the third word in the

domain name is "financial" which specifically describes the services for

which FLEET and the Fleet Family of Marks have been registered, two of them

for nearly two decades.

While the insertion

of "boston" as the second component of the domain name is relevant under

criteria 2 and 3 below, the Panel notes that the trademarks and service

marks of Complainant did not include the word "boston" until the effective

date of the merger on October 1, 1999. Accordingly, the Panel is of the

view that the inclusion of "boston" is not a factor to be taken into account

as contributing to the confusing character of the domain name.

It is true that, on

March 14, 1999, a day before Respondent registered the domain name <fleetbostonfinancial.com>,

Complainant’s predecessors in title, the parties to the merger, had announced

that upon the merger, they would be known as Fleet Boston Corporation. However,

they had not as of that time made use of the corporate name or trade name

Fleet Boston Corporation, and therefore their reference to the projected

use of the name Fleet Boston Corporation cannot be taken into account in

a strict interpretation of criterion 1. Similarly, the application on June

2, 1999, by one of the parties to the merger, Fleet Financial Group, Inc.,

to register FLEET BOSTON and later on October 25, 1999, to register FLEET

BOSTON FINANCIAL as service marks in association with banking services,

cannot be taken into account as contributing to the confusing character

of the domain name, since these marks were applied for on the basis of ITU,

that is, as proposed marks with an intention to use and, as such, must be

deemed not to exist as of the date of the filing of the applications.

While the Panel concludes

that the use of "boston" in the domain name does not contribute to the confusing

character of the domain name, the Panel also considers that the word "boston"

does not detract from the confusing character of the domain name.

As the Panel has found

confusing similarity between the domain name in dispute and Complainant’s

registered trademark FLEET and the Fleet Family of Marks, the criterion

of paragraph 4(a)(i) has been met.

b) Rights or legitimate

interests of Respondent in the domain name

According to the evidence

filed by Complainant, there having been no response or evidence filed by

Respondent, the Panel concludes that Respondent has no rights or legitimate

interests in the domain name.

There is no evidence

that Respondent has used or made demonstrable preparations to use the domain

name in connection with the bona fide offering of goods or services.

On the contrary, the web page which appears when Respondent’s domain name

is accessed shows that the web site under this domain name is in preparation

and is "coming soon". Any other written material on the page of that web

site appears to refer to advertisement or promotion of services available

by the Registrar.

There is no evidence

that Respondent has been known by the domain name. Nor is there any evidence

that Respondent is making a legitimate, non-commercial or fair use of the

domain name. In fact, there is no indication that Respondent is making any

use whatsoever of the domain name.

Accordingly, the Panel

finds that there is no evidence that Respondent has any rights or legitimate

interests in the domain name.

The criterion of paragraph

4(a)(ii) of the Policy has therefore been met.

c) Registration

and use of the domain name in bad faith

Paragraph 4(b) of the

Policy contains examples which shall be evidence of the registration and

use of a domain name in bad faith. The examples listed are not limitative,

and do not exhaust the situations in which a Panel may find bad faith.

There is no evidence

which has been submitted to the Panel to the effect that Respondent intended

or attempted to sell his web site to Complainant or to anyone else. However,

the mere fact of the registration by Respondent of a web site which includes

the words "fleet" and "boston" being the first and primary words in the

names of two entities whose merger was announced the day before the registration

of the domain name, indicates an attempt by Respondent to take advantage

of the proposed merger and, if not to offer the domain name for sale, then

to attract to its web site customers who were aware of either or both Fleet

Financial Group and Bank Boston Corporation. It is to be noted that Respondent’s

address is in Sao Paulo, Brazil, a country where Bank Boston Corporation,

one of the merging entities, had done banking business for many years and,

according to the Complaint, was well-known.

The Panel concludes

that the disputed domain name was registered in bad faith. While there is

no indication that it has been actively used, the fact of its continued

existence on the web is a passive use which has been considered in numerous

decisions to constitute use as required by paragraph 4(b) (WIPO Case No.

D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows; WIPO Case

No. D2000-0862 The McGraw-Hill Companies, Inc. v. Amit Dhir). The Panel

has no hesitation in concluding that Respondent was aware of the announcement

of the merger of Fleet Financial Corporation and Bank Boston Corporation,

the merger of same to be initially known as FleetBoston Corporation.

In view of this, the

Panel concludes that Respondent has intentionally attempted to attract internet

users to its web site by creating a likelihood of confusion with Complainant’s

marks, and that the only conceivable purpose of Respondent in so doing was

for commercial gain.

The criterion of paragraph

4(a)(iii) of the Policy has therefore been met.

6. Decision

(1) The Panel

decides, in accordance with the Uniform Domain Name Dispute Resolution

Policy, paragraph 4:

- that the

domain name <fleetbostonfinancial.com> is confusingly

similar to the trademark FLEET and the Fleet Family of Marks of Complainant;

- that Respondent

has no rights or legitimate interests in respect of the domain name;

and

- that it

has been registered and is being used in bad faith.

(2) The Panel accordingly

requires that the domain name <fleetbostonfinancial.com> be transferred

forthwith to Complainant FleetBoston Financial Corporation.

Joan Clark

Sole Panelist

Dated: April

26, 2001

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