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WIPO Arbitration and Mediation Center

Complainant is SFX Entertainment, Inc., a Delaware corporation located at 650 Madison Avenue, New York, New York 10022. Respondent is Medfield Builders, an unincorporated business entity whose business address is 201 Maple Street, Needham, Massachusetts 02492.

The Domain Name is FLEETBOSTONPAVILION.COM. The Registrar is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, U.S.A.

On June 2, 2000, Complainant submitted a Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP Policy") implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, under the rules for the UDRP Policy implemented by ICANN on the same date ("UDRP Rules"). The Complaint was submitted to the World Intellectual Property Organization and Mediation Center ("the Center") by e-mail and courier service. The Complaint and exhibits were received by the Center on June 5, 2000. The Center acknowledged receipt of the Complaint by e-mail on June 6, 2000.

In an e-mail to the Center dated June 8, 2000, Network Solutions, Inc. ("NSI") confirmed that it received the Complaint from the Complainant, that it is the Registrar for the domain name FLEETBOSTONPAVILION.COM, and that Medfield Builders, the Respondent in this proceeding, is the current Registrant for the domain name.

On June 20, 2000, the Center issued a Notification of Complaint and Commencement of Proceeding, forwarding a copy of the Complaint to the Respondent by e-mail, facsimile and courier. The Center set the deadline for filing a Response as July 10, 2000.

On July 10, 2000, WIPO received a hard copy of the Response signed by Jonathan S. Helman, representative for Medfield Builders, and by Matthew Borrelli, owner of Medfield Builders.

On July 29, 2000, the Center forwarded a Request for Statement of Acceptance and Declaration of Impartiality and Independence to this Panel. This Panel signed and returned the Statement of Acceptance and Declaration of Impartiality and Independence to the Center on August 7, 2000, by facsimile.

On August 8, 2000, the Center issued a Notice of Appointment of Administrative Panel. It set the projected decision date for this proceeding as August 22, 2000.

On August 15, 2000, the Center forwarded to the parties by e-mail this Panel’s Interim Order No. 1, requesting additional submissions from the parties. Specifically, the Panel requested that Complainant provide evidence of its rights in the asserted trademarks. The Respondent was then provided an opportunity to respond to the Complainant’s supplemental submission. A copy of Interim Order No. 1 is annexed hereto as Appendix A.

On August 25, 2000, Complainant forwarded its supplemental submission to the Center. The Center received the supplemental submission on August 28, 2000, and forwarded it to the Panel on August 29, 2000. On August 31, 2000, the Respondent forwarded the Center its response to Complainant’s submission, which the Center forwarded to the Panel that same day.

Complainant’s subsidiary, the Don Law Company (also known as DLC Corporation), operates a five thousand seat open-air amphitheater concert venue in Boston, Massachusetts, USA. The concert venue is currently named The FleetBoston Pavilion, pursuant to a Naming Rights and Sponsorship Agreement (the "Agreement") between Complainant’s subsidiary and a predecessor in interest to the FleetBoston Financial Corporation, BankBoston, N.A. Complaint, paragraphs 16 and 17.

Respondent is an unincorporated business entity, and apparently is a small builder which registered the domain name FLEETBOSTONPAVILION.COM on March 15, 1999.

1. Complainant

Complainant bases its complaint upon the service mark and trade name FLEETBOSTON PAVILION, which Complainant uses in connection with the above-mentioned concert venue pursuant to the Agreement. Complaint, paragraph 11. The Complaint is also based upon the service mark FLEETBOSTON, which is the subject of U.S. Service Mark Application No. 75/719,481, and the service mark FLEET, which is the subject of U.S. Service Mark Registration No. 1,258,836. Id. This Panel notes that these registrations are owned not by Complainant, but by Fleet Financial Group, Inc.

Complainant claims that FleetBoston Financial Corporation and its predecessor in interest, Fleet Financial Group, have used the mark FLEET in connection with banking and financial services since 1982. Complaint, paragraph 15. Complainant claims the FLEET house mark is highly distinctive and has become famous in the fields of banking and financial services, and is the subject of some 26 U.S. trademark and service mark registrations and 7 pending applications. Id. Complainant annexed these registrations and applications to the Complaint. This Panel notes that these registrations and applications are owned not by Complainant, but by Fleet Financial Group, Inc. The sole exception is Application Serial No. 74/240,183, for the mark FFC Fleet Financial Corporation and Design, which is owned by Fleet Financial Corporation of Longwood, Florida.

Complainant asserts that in December of 1998, BankBoston, N.A. of Boston, Massachusetts entered into the Agreement with Complainant’s subsidiary, in which BankBoston paid for the right to have a five thousand seat concert venue previously known as "Harbor Lights Pavilion" renamed and promoted as the "BankBoston Pavilion." Complaint, paragraph 16.

Complainant announced the "christening" of the new facility as the BankBoston Pavilion in a press release about March 2, 1999. Complaint, paragraph 18. On March 15, 1999, BankBoston announced that it planned to merge with the Fleet Financial Group, Inc. to form the FleetBoston Financial Group. Complaint, paragraph 19. That same day, Respondent registered its domain name FLEETBOSTONPAVILION.COM. Complainant asserts that Respondent’s "haste" in registering the domain name immediately upon announcement of the merger "indicates that Respondent anticipated that the domain name would be of interest to Complainant or parties affiliated with Complainant, and knowingly attempted to block Complainant’s use of the term and extort payment from Complainant." Complaint, paragraph 20.

On March 20, 2000, counsel for Complainant sent a cease and desist letter to Respondent protesting Respondent’s registration of the domain name, and requesting that the Respondent confirm it would voluntarily transfer the domain name to Complainant. Complaint, paragraph 21. Complainant asserts that at least until March 20, 2000, the domain name did not resolve to an active website. Id.

Complainant asserts that Respondent’s counsel then requested additional time to respond to Complainant’s cease and desist letter, and Complainant agreed. Complaint, paragraph 22. Counsel for the parties had several follow-up conversations, but Respondent would not confirm whether it would transfer voluntarily the domain name FLEETBOSTONPAVILION.COM. Complaint, paragraph 22.

On April 5, 2000, Complainant discovered that the domain name FLEETBOSTONPAVILION.COM resolved to a website purporting to sell cigars. Complaint, paragraph 23. Complainant attached a printout from this website to its Complaint, which reads in part:

The Cigar Club

Welcome to the Boston Pavilion of cigars where you can find fleets of your favorite smokes! Thanks for stopping by! Improvements coming soon.

***

Cigar enthusiasts who have visited the club since March 13, 1999: 5529.

We are NOT associated with Fleet Bank (TM), BankBoston (TM), FleetBoston Financial (TM), or any bank, venue or arena.

Complainant asserts that this disclaimer signifies that "Respondent knew it would be likely to confuse consumers and receive web traffic intended for Complainant." Id. Complainant also asserts that the "hit count box" showing the number of visitors is false, since the domain name was not even registered until March 15, 1999--two days after the date listed in the website. Complaint, paragraph 24,

Complainant contacted Respondent directly by e-mail on April 25, 2000, to negotiate a private resolution. Respondent asserted that

"it never occurred to me that anybody would be interested in my domain name....I am very interested in my cigar business and have received many guests with which I have built a target audience and potential customer base. I am however, open to discuss business matters. If you are interested in my business along with the domain name, please let me know of your proposal."

Complainant attached copies of this correspondence to the Complaint. In response, Complainant asserted that Respondent’s

"contention that it never occurred to you that anybody would be interested in the domain name strikes me as absurd. There is no coincidental use of FleetBoston Pavilion and cigars. We will offer you $200. You have 48 hours to accept. Should you fail to accept within that time frame, SFX and Fleet Bank will proceed to institute litigation."

Complainant cites an article from the May 29, 2000 edition of the Boston Globe about the dispute between the parties herein. The salient portions of the article relied upon by Complainant were the opinion of its author, who is not a party to the case. The Panel finds this unverified opinion testimony merely cumulative of Complainant’s own arguments, and will neither discuss this article nor repeat it in this decision. Although Respondent’s administrative contact was quoted in the article, these quotations were not germane to this Panel’s decision.

Complainant asserts that the domain name FLEETBOSTONPAVILION.COM is virtually identical and confusingly similar to the service marks FLEETBOSTON PAVILION and FLEETBOSTON. Complaint, paragraph 27. Complainant asserts that the commercial impression conveyed by the domain name and Complainant’s marks is the same, and that any associated services would be viewed as sponsored, endorsed or affiliated with Complainant. Complaint, paragraph 28. Complainant asserts that the "Respondent’s chosen domain name represents a false designation of origin or sponsorship for any associated goods or services, and was unmistakably chosen by Respondent in an effort to undermine the launch of Complainant’s FLEETBOSTON PAVILION by taking the most obviously desirable Internet domain name that could possibly be used in connection therewith, to Complainant’s great damage." Complaint, paragraph 28.

Complainant asserts that Respondent cannot demonstrate any legitimate interest in the domain name, Complaint, paragraph 29; that Respondent is not commonly known as FLEETBOSTON PAVILION nor has it acquired any trademark or service mark rights in FLEETBOSTON, id.; that Respondent has recently begun displaying online images of cigars and related links "in a transparent attempt to retroactively justify its registration of the domain name," id. Complainant requests that the domain name FLEETBOSTON.COM be transferred to it.

Complainant asserts that Respondent’s "attempt to fashion a trademark usage that would provide a legal fig-leaf for its bad faith registration of the domain name FLEETBOSTONPAVILION.COM constitutes an act of unfair competition and willful infringement of the valuable service marks in which Complainant has rights." Id. Complainant has requested that the domain name FLEETBOSTONPAVILION.COM be transferred to Complainant.

2. Respondent

Respondent asserts that the "Complainant has never produced true evidence to the Respondent of the service mark and trade name of the domain name (sic.)." Response, paragraph 11. Respondent also asserts that its registration and use of the domain name "predated Complainant’s use, service mark or trade name of the domain name." Id.

Respondent agrees that "FLEET" is well known in the fields of banking and finance, but denies this has any significance in relation to Respondent’s domain name, since FLEET is not known in the field for which the domain name is used by Respondent. Response, paragraph 15. Respondent asserts there is no connection between Complainant’s use of the name and Respondent’s use of the name, and asserts that Respondent’s website contains a disclaimer regarding the domain name and the name "FLEET." Id.

Respondent denies that it has attempted to prevent Complainant from using the domain name or that it has sought to extort any money from the Complainant. Response, paragraph 20. Respondent asserts that "at no time did [it] ever initiate contact with Complainant for the purpose of selling or leasing the domain name." Id.

Respondent confirms that it advised Complainant that it was not interested in relinquishing the domain name, Response, paragraph 22. Respondent denies that the disclaimer from Respondent’s website constitutes an admission that Respondent knew it would confuse consumers or that it would receive web traffic intended for the Complainant. Response, paragraph 23.

Respondent denies that Complainant attempted to resolve this matter amicably, asserting instead that Complainant’s offer of money in exchange for the domain name "was insulting and offensive to the Respondent." Response, paragraph 25. Respondent asserts that its domain name FLEETBOSTONPAVILION.COM, as used and registered by Respondent for its cigar display website, creates no confusion with the marks FLEETBOSTON PAVILION or FLEETBOSTON. Response, paragraph 27. Respondent asserts that it does not object to Complainant’s use of the similar domain name FLEETBOSTONPAVILION.NET, which Complainant has registered. Response, paragraphs 27 and 20.

Respondent asserts that its website does not convey any commercial impression "in as much as it does not present any product for sale." Response, paragraph 28.

Respondent asserts that it registered its domain name prior to any use by Complainant of the name "FleetBoston Pavilion," and therefore Respondent has a superior claim to the domain name. Response, paragraph 29. Respondent asserts that "it is a ludicrous statement that small home-town Medfield Builders could ever unfairly compete with a behemoth of world commerce such as FleetBoston," Id.; and that Respondent did not and could not have infringed on Complainant’s service mark because Respondent’s registration and use of its domain name preceded the Complainant’s service mark, Id. Respondent denies that it ever acted in bad faith. Response, paragraph 32.

3. Additional Information Requested by the Panel

As mentioned briefly above, this Panel sought additional information from the parties related to Complainant’s ownership and right to use the marks asserted in the Complaint. Although Complainant specified that it had the right to use the name FleetBoston Pavilion in accordance with the Agreement, Complainant did not attach a copy of the Agreement to the Complaint. Furthermore, Complainant asserted as the basis for the Complaint several registrations and applications owned by Fleet Financial Group; however, Complainant did not specify by what authority Complainant could assert these registrations as a basis for its Complaint.

In its Interim Order (annexed as Appendix A to this Decision), the Panel requested Complainant to provide a copy of the Naming Rights and Sponsorship Agreement, and to provide evidence that it has rights in the asserted trademarks and service marks. This Panel provided Respondent an equal opportunity to address this issue.

Complainant’s submission consisted of the aforementioned Naming Rights and Sponsorship Agreement, as well as the Declaration of an officer of FleetBoston Financial Corporation. The Declaration stated that FleetBoston Financial Corporation was formed in November, 1999 by merger of BankBoston, N.A. and Fleet Financial Group, Inc. Declaration, paragraph 2. FleetBoston Financial Corporation’s predecessor, BankBoston, N.A., entered into an agreement in December, 1998 with DLC Corporation, a subsidiary of Complainant, to rename a concert venue as the "BankBoston Pavilion." Declaration, paragraph 3. The Declarant asserted under the Naming Rights and Sponsorship Agreement, which was entered in December, 1998, the name of the venue could be changed if BankBoston, N.A.’s corporate name changed. Declaration, paragraph 4.

The Declarant notes that paragraph 16 of the Agreement bound the parties, their successors and assigns. Declaration, paragraph 5. The Declarant asserts that the merger of Fleet Financial Group and BankBoston, N.A. was reported March 15, 1999, Declaration, paragraph 8; and that DLC Corporation and its parent company, Complainant SFX Entertainment, Inc. approved the change of name of the concert venue to "The FleetBoston Pavilion." Declaration, paragraph 9.

The Declarant asserts that FleetBoston Financial Corporation owns all right, title and interest in and to the service marks FLEETBOSTON and FLEET, and has granted DLC Corporation the exclusive right to use the marks FLEETBOSTON and FLEET as a part of the name for the concert venue, namely the FLEETBOSTON PAVILION. Declaration, paragraph 12. The Declarant asserts that FleetBoston Financial Corporation is fully aware of this proceeding, and has authorized its prosecution by Complainant, SFX Entertainment, Inc. Declaration, paragraph 13.

The Agreement itself is a contract between Complainant’s subsidiary DLC Corporation and BankBoston, N.A., in which BankBoston paid a fee to DLC for the right to name the concert venue previously known as the "Harbor Lights Pavilion." Agreement, paragraphs 1 and 4. The Agreement requires DLC to rename the concert venue as the "BankBoston Pavilion," and to use that name in connection with advertising, promotion and signs for the concert venue. Agreement, paragraph 2. Under the Agreement, BankBoston and its assignees have the right to change the name of the venue under certain circumstances. Id. BankBoston did not grant, nor did DLC receive, any right to the name FleetBoston Pavilion, or to any mark including the term FLEET. This is only logical, since the Naming Rights and Sponsorship Agreement dates from December, 1998, while the merger of Fleet Financial Group and BankBoston, N.A. was not announced until March of 1999.

In response, Respondent asserted that the Declaration fails to establish that the alleged mark belongs to the Complainant; that no proof established the relationship between DLC Corporation and SFX Entertainment, Inc.; that Complainant provided no proof that FLEETBOSTON PAVILION was registered or owned by anyone prior to Respondent’s registration of that domain name on March 15, 1999; and that the Naming Rights and Sponsorship Agreement has no effect on Respondent, since BankBoston’s decision to change the venue’s name cannot have any retroactive effect. Response to Declaration, paragraphs 1-5.

1. Applicable Policy Provisions

The UDRP Policy requires the Complainant to prove each of the following three elements, in order to prevail in this proceeding:

1. That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2. That the Respondent has no rights or legitimate interests in respect of the domain name; and

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

UDRP Policy, Section 4.a.

In order to prevail, a Complainant cannot prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bossman, Case No. D99-0001; Robert Ellenbogen v. Mike Pearson, Case No. D2000-0001.

In order to establish bad faith, a Complainant may provide evidence including but not limited to the following:

(i) Circumstances indicating that [the Registrant has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) [the Registrant has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Registrant has] engaged in a pattern of such conduct; or

(iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location.

UDRP Policy, Section 4(b).

2. Opinion of the Panel

The Panel finds that Complainant has proved part (ii) of the UDRP Policy test under Paragraph 4.a., but has not proved parts (i) and (iii). Therefore this Panel must deny the relief sought by Complainant.

1. Ownership of a trademark or service mark

Complainant has not proved that as of the date the Respondent registered its domain name, Complainant had any rights in the trademark or service mark FLEETBOSTON PAVILION. None of the materials submitted by Complainant assert the date on which Complainant first used the mark FLEETBOSTONPAVILION. It is Complainant’s burden to establish its rights in and to a mark, and Complainant was provided a second opportunity to do so. Complainant has not come forward with any evidence that it used the marks FLEETBOSTON or FLEETBOSTON PAVILION prior to registration of the domain name.

The Naming Rights and Sponsorship Agreement does not help Complainant, since the only mark the Agreement refers to is BANKBOSTON PAVILION. The Agreement makes no reference whatsoever to FLEETBOSTON PAVILION, or to any mark including FLEET. Although the Agreement gives BankBoston and its assignees the right to seek a change of the venue’s name, no trademark or service mark rights would have been created until the changed name was actually being used in commerce. The record is devoid of any evidence when FLEETBOSTON PAVILION was first used in commerce.

Furthermore, although Complainant bases its Complaint on a registration for the service mark FLEET and an application for the service mark FLEETBOSTON, Complainant is neither the owner of these trademarks and service marks, nor has it proved any rights to use them under the Agreement or otherwise. FleetBoston Financial Corporation could apparently assert rights under these marks, but FleetBoston is not a party to this proceeding. This Panel finds Complainant had no rights to a trademark or service mark as of the date that Respondent registered its domain name.

2. Respondent’s rights or legitimate interests in respect of the domain name

Here the Panel finds in favor of the Complainant. Respondent has made no effort to prove it has any rights or legitimate interest in respect of the domain name. The only logical connection between Respondent’s cigar web site and its domain name is the following sentence from Respondent’s website: "Welcome to the Boston Pavilion of cigars where you can find fleets of your favorite smokes!" It is apparent this sentence was written not for the benefit of Respondent’s potential customers, but in anticipation of this proceeding. The same can be said for the disclaimer appearing at the bottom of the site. If Respondent truly believes there is no connection between its domain name and the identically-named concert venue, why would it need a disclaimer? Respondent similarly failed to explain why the "hit-counter" in its website predates both the merger announcement and its own domain name registration. Respondent having made no further effort to present arguments or evidence on this issue in its Response, the Panel decides it in Complainant’s favor.

3. Registration and use of the domain name in bad faith

This Panel also agrees with Complainant that Respondent has used and registered the domain name in an effort to block Complainant from reflecting its trademark or service mark in a domain name. Respondent’s registration coincided exactly with the merger announcement for FleetBoston Financial Corporation. This Panel takes notice of the fact that Respondent herein is also the owner of registrations for THEBANKBOSTONPAVILION.COM, BBPAVILION.COM, TWEETER-PAVILION.COM, THETWEETERPAVILION.COM, FLEETBOSTON-PAVILION.COM, TWEETERPAVILION.COM, and BANKBOSTON-PAVILION.COM. This pattern of registrations makes clear that Respondent is seeking to obstruct FleetBoston Financial Corporation and its predecessors, and SFX, from reflecting the name of their concert venues in a domain name.

Nevertheless, Complainant had no trademark or service mark rights when the domain name was registered. This Panel believes a case could be made by FleetBoston Financial Corporation itself, based upon its registration for the mark FLEET and ownership of the BankBoston names which were the subject of the Respondent’s other domain name registrations. Neither FleetBoston nor these allegations are before this Panel. In these circumstances, the Panel cannot find there was bad faith as against the Complainant.

This Panel decides that the Complainant has not proven each of the three elements in Section 4(a) of the UDRP Policy in the present proceeding. Therefore, pursuant to paragraph 4(i) of the UDRP Policy, and paragraph 15 of the UDRP Rules, this Panel must deny the Complaint. The domain name shall remain registered with the Respondent.

Jordan S. Weinstein
Presiding Panelist

Dated: September 12, 2000