First Tennessee National Corporation v. R.S. Potdar

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

First Tennessee National Corporation v. R. S. Potdar

Case No. D2002-0247

1. The Parties

1.1 The Complainant in this administrative proceeding is First Tennessee National

Corporation, a Delaware corporation, having its principal place of business

in Memphis, Tennessee, United States of America.

1.2 According to information received from Bulkregister.com’s Whois database,

the Respondent in this administrative proceeding is R. S. Potdar, Dotsan, Sunder Mahal,

Mumbai, 400021 India.

2. The Domain Name and Registrar

2.1 The Domain Name, the subject of this dispute, is <firsttennesseebank.com>.

2.2 The Domain Name is registered with Bulkregister.com, 10 E. Baltimore Street,

Suite 1500, Baltimore, MD, United States of America.

3. Procedural History

3.1 The Complaint was initially filed electronically on March 14, 2002

and by hardcopy on March 18, 2002.

3.2 The Complainant elected to have the dispute decided by a single-member

Administrative Panel.

3.3 No legal proceedings have been initiated, as yet. (Rules for Uniform Domain

Name Dispute Resolution Policy ("Rules"), paragraph 3(b)(xi)).

3.4 As required by the Rules and the WIPO Supplemental Rules, payment in the

amount of USD 1,500.00 has been made, payable to the World Intellectual Property

Organization.

3.5 The Complainant agreed that its claim and remedies concerning the registration

of the Domain Name, the dispute, or the dispute’s resolution shall be solely

against the Domain Name holder and waived all such claims and remedies against

(a) the WIPO Arbitration and Mediation Center and Panelists, except in the case

of deliberate wrongdoing, (b) the concerned Registrar, (c) the Registry Administrator,

(d) the Internet Corporation for Assigned Names and Numbers, as well as their

directors, officers, employees and agents.

3.6 On March 20, 2002, the WIPO Arbitration and Mediation Center ("the

Center") transmitted via e-mail to Bulkregister.com, a request for registrar

verification in connection with this case. The Center received a verification

response from the Registrar that same day.

3.7 Notification of the Complaint and Commencement of Administrative Proceeding

was sent to Respondent by the Center on March 21, 2002.

3.8 On April 11, 2002 the Center determined that Respondent was in default

and notification of such default was issued.

3.9 On April 15, 2002, correspondence to Center from "LowerMyBills.com"

was received, stating that LowerMyBills.com has no relationship with the Respondent.

3.10 In accordance with paragraph 15 of the Rules, the single Panel member,

Cecil O.D. Branson, Q.C., submitted a Statement of Acceptance and Declaration

of Impartiality and Independence, and was duly appointed on April 19, 2002.

The Panel was required to forward its decision to the Center by May 3, 2002

3.11 The Panel finds that it was properly constituted and appointed in accordance

with the Rules and the Supplemental Rules.

4. Factual Background

What follows are the assertions of the Complainant. Where verified by documentary evidence in Annexes to the Complaint, this is indicated.

4.1 The Complainant is a national diversified financial services institution.

It provides services in the fields of retail banking, insurance, investments,

consumer finance and credit cards, amongst others, and is one of the fifty largest

bank holding companies in the United States. (Complainant provided a copy of

its Annual Report as Annex III.) One of the Complainant’s largest affiliates

is First Tennessee Bank, N.A. Complainant is also the registrant of the

domain name <firsttennessee.com>. This web site provides detailed information

about Complainant and its palette of services.

4.2 Complainant has used the trademarks FIRST TENNESSEE and FIRST TENNESSEE

BANK since at least 1974 in relation to general banking services and a variety

of other financial products and services. The mark FIRST TENNESSEE has

been federally registered in the United States of America since the year 2000.

(Copies of Complainant’s federal registrations of the mark FIRST TENNESSEE were

attached as Annex IV.)

4.3 Upon information and belief, Respondent is an Indian national, residing

in Mumbai, India. Respondent registered the disputed domain name <firsttennesseebank.com>

with Bulkregister.com on August 25, 2001. (The source for this information

was in Annex I.)

4.4 Any internet users who access the disputed domain name are immediately

directed to the web site <lowermybills.com>. Upon investigation, Complainant

discovered that the web site <lowermybills.com> is registered to Matthew R. Coffin

("Coffin"), a U.S. national residing in California. Also, as of March 13, 2002,

users who access the disputed domain name are directed to the web site <smartprice.com>.

Complainant has discovered that <smartprice.com> is registered to SmartPrice.Com,

Inc. ("SmartPrice"), a U.S. corporation located in Texas. (The

Network Solutions, Inc. ("NSI") Whois database listings for Lowermybills.com

and SmartPrice.com were attached as Annex V.) Coffin’s web site ostensibly offers

services, such as debt relief, credit cards, vehicle insurance and other financial

services, many of which are offered by Complainant. SmartPrice’s web site ostensibly

offers customers information regarding utility services.

4.5 No Response having been filed on behalf of the Respondents, this Panel

accepts the aforesaid as facts.

5. Parties’ Contentions

A. Complainant

5.1 The domain name <firsttennesseebank.com> is identical or confusingly

similar to Complainant’s federally registered trademark FIRST TENNESSEE.

5.2 Respondent’s registered domain name is materially identical to Complainant’s

registration. The dominant and memorable portion of both Complainant’s mark

and Respondent’s domain name is "Firsttennessee".

5.3 Respondent’s inclusion of the word "bank" does not serve to distinguish

it from Complainant’s mark. "Bank" is a generic term for a financial

institution that offers retail financial services, the inclusion of a generic

term in a mark or domain name has nil distinguishing value. Moreover, "First

Tennessee Bank" is the name of Complainant’s banking services affiliate.

The domain name <firsttennesseebank.com> is therefore identical in all

material aspects to Complainant’s mark.

5.4 Respondent does not have any legitimate rights or interests with respect

to the domain name: Complainant has absolutely no association or affiliation

with either Respondent, Coffin or SmartPrice. Neither Respondent, Coffin, nor

SmartPrice have ever corresponded with Complainant with respect to the use of

Complainant’s corporate name or mark, nor is there any evidence of either Respondent’s,

Coffin’s or SmartPrice’s connection to Complainant, or to the state of Tennessee.

There is no evidence, pursuant to paragraph 4(c) of the Policy that Respondent

has:

(i) made demonstrable preparations to use the disputed domain name in connection

with any bona fide services.

Any internet user that accesses the disputed domain name will discover that, far from any bona fide services, Respondent’s web site is a mere shell that serves as a link to Coffin’s web site <lowermybills.com> and, as of March 13, 2002, SmartPrice’s website <smartprice.com>. Neither Coffin’s nor SmartPrice’s web sites make any mention of "First Tennessee" or Complainant.

(ii) Respondent is not commonly known by the domain name.

As aforementioned, Respondent is an individual, residing in India. He has no connection to Complainant, and is not known by Complainant’s name; and

(iii) Respondent is not making legitimate use of the domain name.

Respondent’s sole intention in using the domain name is to misleadingly divert internet users to Coffin’s web site <lowermybills.com> and to SmartPrice’s web site <smartprice.com>, or to falsely suggest some affiliation or sponsorship with Complainant. Respondent, Coffin and SmartPrice seek to trade upon the good will of Complainant by diverting those users familiar with Complainant to their web sites.

5.5 Respondent has registered and is using the domain name in bad faith:

The Complainant contends that there is ample evidence to support a finding of bad faith in this instance. This is not the first matter in which Coffin has directed internet users to his web site via a shell web site confusingly similar to the trademark or corporate name of a well-known United States financial institution. Here, too, Respondent’s use of the disputed domain name merely serves to immediately direct internet users to Coffin’s web site.

Respondent’s action is in clear violation of Paragraph 4(b)(iv) of the Policy. Respondent has intentionally attempted to attract, for commercial gain, internet users to Coffin’s <lowermybills.com> web site, and to SmartPrice’s <smartprice.com> web site, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s, Coffin’s or SmartPrice’s web sites. Neither Coffin’s nor SmartPrice’s web sites and services are in any way affiliated with Complainant.

Complainant is a nationally known financial institution, with a distinctive mark and name. Respondent, Coffin, and SmartPrice, seeking to capitalize on Complainant’s stature and reputation, lure internet users who believe they are accessing a web site affiliated with Complainant, to Coffin’s and SmartPrice’s unaffiliated, un-endorsed web sites.

Such actions violate the Policy by which Respondent’s registration of the domain name is governed and also constitute dilution of Complainant’s mark and a violation of United States Federal Cybersquatting and Trademark Acts.

The only conceivable purpose of Respondent’s, Coffin’s and SmartPrice’s use of the disputed domain name is to divert traffic intended for the Complainant.

B. Respondent

5.6 Respondent has failed to respond to Complainant’s contentions as found

in the Complaint.

C. No Other Submissions

5.7 The Panel has not received any other requests from Complainant or Respondent

regarding further submissions, waivers or extensions of deadlines, and the Panel

has not found it necessary to request any further information from the Parties

(taking note of the Respondent’s default in responding to the Complaint).

5.8 Under Rule 5 of the ICANN Rules for Uniform Domain Name Dispute Resolution

Policy, if a Respondent does not submit a Response, in the absence of exceptional

circumstances, the Panel shall decide the dispute based upon the Complaint.

6. Discussion and Findings

6.1 The Complaint was submitted on the basis of the provisions of the Registration

Agreement in effect between the Respondent and Bulkregister.com, which incorporates,

by reference, the Uniform Domain Name Dispute Resolution Policy (the "Policy")

by way of Bulkregister’s domain name dispute policy in effect at the time of

the dispute. The policy requires that domain name registrants such as Respondent

submit to a mandatory administrative proceeding regarding third-party allegations

of abuse of domain name registration (Policy, paragraph 4(a)).

6.2 Such administrative proceedings are conducted by ICANN-approved dispute

resolution service providers such as the Center. The Policy provides an administrative

means for resolving disputes concerning allegations of abuse of domain name

registration, without prejudice to referral of the dispute to a court of competent

jurisdiction for independent resolution (Policy, paragraph 4(a)).

6.3 The Panel is satisfied that the Center took all steps reasonably necessary

to notify the Respondent of the filing of the Complaint and initiation of these

proceedings, and that the failure of the Respondent to furnish a reply or participate

in any other fashion is not due to any omission by the Center (see Procedural

History, supra).

6.4 The Policy, and the Rules establish procedures intended to ensure that

respondents are given adequate notice of proceedings commenced against them,

and a reasonable opportunity to respond (see e.g. paragraph 2(a), Rules).

6.5 Paragraph 15(a) of the Rules addresses the principles to be used in rendering

a decision:

"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

6.6 Failure on the part of a Respondent to file a Response to the Complaint

permits an inference that Complainant’s allegations are true and that the Respondent

knows its web site is misleading. Where Respondent has not filed a Response

to the Complaint, in the absence of exceptional circumstances, under paragraph

5(e) of the Rules, the Panel shall decide the dispute based on the Complaint.

It may also permit a Panel to infer that the Respondent does not deny the facts

which the Complainant asserts nor the conclusions which the Complainant asserts

can be drawn from those facts. (See: Harrods Limited v. Harrod’s Closet,

WIPO Case No. D2001-1027.)

In order to obtain the relief requested under the Policy, Complainant must prove in the Administrative Proceeding that each of the three elements of paragraph 4(a) are present:

(i) that the Domain Name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and

6.7 The uncontradicted evidence of the Complainant satisfies the Panel that

the Respondent has registered the Domain Name <firsttennesseebank.com>,

which is identical or confusingly similar to the Complainant’s registered trademark.

It has been held that the addition of a generic term to a trademark in which

a Complainant has rights does not operate as a distinguishing feature. See The

Vanguard Group, Inc. v. Venta, WIPO Case

No. D2001-1335. Also, when a name incorporates, in its entirety, a distinctive

mark, this creates a sufficient similarity between the mark and the Domain Name

to render it confusingly similar. See Microsoft Corp. v. Mehrota, WIPO

Case No. D2000-0053; Nintendo of America Inc. v. Pokeman, WIPO

Case No. D2000-1230.

The Panel therefore finds that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(ii) that the Respondent has no rights or legitimate interests in respect of

the Domain Name; and

6.8 The Respondent has not asserted any rights or legitimate interests in respect

to the Domain Name in question. While the burden of proof in this regard is

on the Complainant, the Panel may draw an inference that Complainant’s allegations

are true where the Respondent has failed to submit a Response. An inference

in favor of the Complainant may be drawn in this regard where there is no evidence

that the Respondent has been commonly known by the Domain Name. In the absence

of any license or permission from a complainant for a respondent to use any

of its trademarks or to apply for or use any domain name incorporating any of

those marks it has been found to be evidence of the lack of a respondent’s rights

or legitimate interests in a domain name. (See Harrods Limited v. Harrod’s

Closet, WIPO Case No. D2001-1027.)

It should be noted that the Complainant proved that it had absolutely no association

or affiliation with the Respondent, neither did it ever correspond with the

Complainant with respect to use of the Complainant’s corporate name or mark,

nor is there any evidence of Respondent’s connection with Complainant. Further

there is no evidence pursuant to paragraph 4(c) of the Policy that the Respondent

has:

"(i) before any notice to you of the dispute, your use of, or demonstrable

preparations to use, the domain name or a name corresponding to the domain name

in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue."

The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name <firsttennesseebank.com>.

(iii) that the Domain Name has been registered and is being used in bad faith.

6.9 This Panel agrees with the comment of the Complainant that there is ample

evidence for a finding of bad faith in this case, in that Respondent’s action

is in violation of paragraph 4(b)(iv) of the Policy as the Respondent is intentionally

attempting to attract for commercial gain Internet users to Coffin’s <lowermybills.com>

web-site and to SmartPrice’s <smartprice.com> web-site by creating a likelihood

of confusion with Complainant’s mark as to the source, sponsorship, affiliation

or endorsement of Respondent’s, Coffin’s or SmartPrice’s web-sites and services

which are not in any way affiliated with Complainant. See The Toronto-Dominion

Bank v. Boris Karpachev, WIPO Case No.

D2000-1571; NCRAS Management LP v. Cupcake City, WIPO

Case No. D2000-1803; Disney Enterprises Inc. v. John Zuccarini, d/b/a

Cupcake City and Cupcake Patrol, WIPO

Case No. D2001-0489.

I agree with the assertion of the Complainant that the only conceivable purpose of the Respondent’s use of the disputed Domain Name is to divert traffic intended for the Complainant.

This Panel therefore finds that the Respondent has registered and is using the disputed Domain Name <firsttennesseebank.com> in bad faith.

7. Decision

7.1 This Administrative Panel decides that the Complainant has proved each

of the three elements in paragraph 4(a) of the Policy. Accordingly, this Administrative

Panel requires that the Domain Name <firsttennesseebank.com> be transferred

to the Complainant.

Cecil O.D. Branson, Q.C.

Sole Panelist

Dated: April 24, 2002

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