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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

America’s Community Bankers Corporation v. Charles R. Wing and Wing Broadcasting, Inc.

Case No. D2000-1780

 

1. The Parties

Complainant is America’s Community Bankers Corporation, an Illinois corporation with its principal place of business located at 900 19^th Street, NW, Suite 400, Washington, DC, 20005, USA.

Respondents are Charles R. Wing and Wing Broadcasting, Inc. (individually and collectively, "Respondent"). Respondent’s address is listed as 5219 Brooke Farm Drive, Dunwoody, Georgia, 30338, USA.

 

2. The Domain Names and Registrars

The domain names at issue are <acbanks.com>, <americascommunitybanks.com>, <americascommunitybanks.net>, and <americascommunitybanks.org> (the "Domain Names"). The registrar of the domain names <acbanks.com>, <americascommunitybanks.net>, and <americascommunitybanks.org> is Network Solutions, Inc. ("NSI"). The registrar of the domain name <americascommunitybanks.com> is Domain Bank Inc. ("Domain Bank").

 

3. Procedural History

On December 21, 2000, Complainant submitted its Complaint under the Uniform Domain Name Dispute Resolution Policy ("UDRP"), and the required filing fee for a single-member Panel, to the World Intellectual Property Organization ("WIPO") Arbitration and Mediation Center.

On December 28, 2000, WIPO sent an Acknowledgment of Receipt to Complainant, and copied Respondent.

On December 28, 2000, WIPO sent a Request for Registrar Verification via email to NSI and Domain Bank. On December 28, 2000, Domain Bank confirmed via email to WIPO that the domain name <americascommunitybanks.com> is currently registered to respondent and is in "active" status. On December 29, 2000, NSI confirmed via email to WIPO that the domain names <acbanks.com>, <americascommunitybanks.net>, and <americascommunitybanks.org> are currently registered to Respondent and are in "active" status. NSI also stated that those domain names are subject to NSI’s Service Agreement Version 4.0.

On January 3, 2001, WIPO sent a Complaint Deficiency Notification to Complainant. On January 5, 2001, Complainant submitted an Amended Complaint, correctly identifying NSI as the registrar of the domain name <acbanks.com> and selecting the Mutual Jurisdiction as the jurisdiction of the domain name holder’s address, as required by NSI’s Service Agreement Version 4.0.

On January 9, 2001, WIPO completed a Formal Requirements Compliance Checklist. The Panel has independently determined and agrees with WIPO’s assessment that the Complaint is in formal compliance with the requirements of the UDRP, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.

On January 10, 2001, WIPO issued the Notification of Complaint and Commencement of Administrative Proceeding.

On January 27, 2001, Respondent submitted its timely Response to the Complaint. On January 29, 2001, WIPO sent an Acknowledgement of Receipt of Response to Complainant and Respondent. On February 19, 2001, Respondent submitted a Supplemental Filing to WIPO.

On February 19, 2001, WIPO sent to Complainant and Respondent a Notification of Appointment of Panel, appointing David M. Kelly as presiding Panelist. WIPO scheduled March 4, 2001 as the date for issuance for the Panel’s decision.

On February 21, 2001, WIPO informed the Panel that Respondent preferred the Panel to disregard the Supplemental Filing rather than communicate it to Complainant. Accordingly, the Panel has disregarded the Supplemental Filing.

 

4. Factual Background

Complainant owns the service marks and trademarks ACB, AMERICA’S COMMUNITY BANKER, and AMERICA’S COMMUNITY BANKERS, which are registered with the United States Patent and Trademark Office. Complainant’s mark ACB is registered on the Principal Register, whereas Complainant’s marks AMERICA’S COMMUNITY BANKER and AMERICA’S COMMUNITY BANKERS are registered on the Supplemental Register.

Complainant uses its marks ACB and AMERICA’S COMMUNITY BANKERS to identify its information bulletins, books and magazines for financial institutions, and educational services for personnel of financial institutions. Complainant’s educational services include seminars, workshops, and the distribution of publications in connection therewith, in the field of financial, marketing and management operations of financial institutions. Complainant also uses its marks ACB and AMERICA’S COMMUNITY BANKERS to identify its association services furthering the interests of the financial institutions industry. Complainant’s mark AMERICA’S COMMUNITY BANKER identifies Complainant’s magazines dealing with financial institutions.

The Panel has independently verified that Respondent registered the domain names <acbanks.com>, <americascommunitybanks.com>, <americascommunitybanks.net>, and <americascommunitybanks.org> on January 12, 2000, September 29, 1999, November 3, 1999, and November 3, 1999, respectively.

 

5. Parties’ Contentions

A. Complainant

Complainant alleged that the Domain Names are identical or confusingly similar to Complainant’s marks ACB, AMERICA’S COMMUNITY BANKER, and AMERICA’S COMMUNITY BANKERS. The domain names <americascommunitybanks.com>, <americascommunitybanks.net>, and <americascommunitybanks.org> contain Complainant’s trademark subtracting only the "-er" or "-ers" word endings. The domain name <acbanks.com> contains the mark ACB and appears to be an abbreviated version of Complainant’s trademark AMERICA’S COMMUNITY BANKERS. Furthermore, Complainant’s web site uses the domain name <acbankers.org>.

Complainant alleged that Respondent uses the domain name <acbanks.com> to intentionally attempt to attract Internet users, for financial gain, to its site, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the location of Respondent’s web site. Complainant alleged that Respondent contacted Complainant on September 5, 2000 and requested that Complainant register its member banks on their community bank Internet directory. Complainant alleged that Respondent intended to attract, for financial gain, increased Internet traffic and advertising revenues based on new registrations of Complainant’s member banks.

Complainant stated that Respondent has not used the domain names <americascommunitybanks.com>, <americascommunitybanks.net>, and <americascommunitybanks.org>, and alleged that Respondent acted in bad faith under Section 4(b)(ii) of the UDRP.

On January 20, 2000, Complainant sent a letter to Respondent requesting that Respondents cease using Complainant’s marks ACB and AMERICA’S COMMUNITY BANKERS on Respondent’s <americascommunitybanks.com> website and domain name. In that letter, Complainant demanded that Respondent remove four items from its <americascommunitybanks.com> website: (1) a graphic that had been in use on Complainant’s website for approximately three years, (2) the title "America’s Community Banks," (3) a link to Complainant’s competitor, and (4) any and all usage of the mark ACB.

B. Respondent

Respondent is a director and owner of a community bank. Respondent denied Complainant’s allegations, stating that its <acbanks.com> website was established for the purpose of assisting consumers in locating a community bank in a specific zip code. Respondent stated that it was not a direct competitor of Complainant, because Respondent’s services are targeted at consumers while Complainant’s services are targeted at financial institutions.

Respondent stated that its <acbanks.com> website was being used to assist community banks in promoting to the general public the values of using a community bank. Respondent denied that it sold advertising for its <acbanks.com> website, and instead explained that it charges banks registration fees to be listed in Respondent’s web directory. Respondent stated its registration fees are $190 a year for a main bank branch and $10 for each additional branch of the bank. Respondent’s <acbanks.com> website receives an estimated 800,000 hits per year.

Respondent explained that the domain name <acbanks.com> stands for Access Community Banks, a description which is also available on Respondent’s website. Respondent alleged that Complainant was harassing Respondent because Complainant did not identify its objections to other domain names such as <acbank.com>, <americancommunitybank.com>, and <acommunitybk.com>.

On February 18, 2000, Respondent replied to Complainant’s cease and desist letter, stating that the term AMERICAS COMMUNITY BANKS was a generic term available for use by Respondent. Respondent denied any wrongdoing, but did abide by the requests in Complainant’s letter by removing the offending items. Additionally, Respondent discontinued use of the domain name <americascommunitybanks.com> for its website.

Respondent stated that it planned to use the domain names <americascommunitybanks.com>, <americascommunitybanks.net>, and <americascommunitybanks.org> for future expansion of North Atlanta National Bank. Respondent stated that its goal is to own several banks organized under those domain names, and speculated that it may become a member of Complainant’s association in the future. Respondent stated that it had never registered or acquired any of its domain names for the purpose of selling, renting, or transferring the names to the Complainant or any other party.

Respondent disputed Complainant’s characterization of its September 5, 2000 letter, stating that it was addressed to Mr. Donald Glass, President of the Community Bank League of New England, which is not owned or operated by Complainant. Respondent explained that The Community Bank League of New England is one of 36 state organizations that assist community banks in their marketing and legal affairs.

Respondent included copies of an undated invoice and a November 14, 2000 marketing letter to demonstrate that it used the business name <AccessCommunityBanks.com>, and copies of two emails from its customers to demonstrate that it provided a bona fide offering of goods and services prior to the Complainant's charges.

 

6. Discussion and Findings

Paragraph 4(a) of the UDRP directs that the complainant must prove each of the following: (1) 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; (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 used in bad faith.

Complainant’s marks AMERICA’S COMMUNITY BANKER and AMERICA’S COMMUNITY BANKERS are registered on the Supplemental Register, whereas Complainant’s mark ACB is registered on the Principal Register. The Trademark Act provides for the registration of trademarks on either the Principal or Supplemental Registers. "Generic" terms are not registrable on either Register. PTO Trademark Manual of Examining Procedure ("TMEP") § 1209.01(c). "Descriptive" marks, those that immediately convey information about a quality or characteristic of a product or service, are registrable on the Supplemental Register. TMEP § 202.02(b). The Principal Register is designed for arbitrary and suggestive terms, and for "descriptive" marks that have acquired distinctiveness. Id. The Supplemental Register is reserved for marks "capable of distinguishing applicant’s goods or services not registrable on the principal register . . ." 15 U.S.C. § 1091(a). Unlike Principal Register registrations, Supplemental Register registrations do not enjoy any prima facie or conclusive presumptions of validity or exclusive right to use the mark. 15 U.S.C. § 1115(a). Registration of a mark on the Supplemental Register has been held to constitute an admission that the mark is merely descriptive. E.g., Clairol Inc. v. Gillette Co., 389 F2d 264 (2d Cir. 1968). However, registration of a mark on the Supplemental Register does not constitute an admission that the mark has not acquired distinctiveness. 15 U.S.C. § 1095.

Complainant has neither alleged in its Complaint nor submitted any evidence that its admittedly descriptive marks AMERICA’S COMMUNITY BANKER and AMERICA’S COMMUNITY BANKERS have acquired distinctiveness. Relying solely upon Complainant’s registrations on the Supplemental Register, the Panel must conclude that Complainant’s marks AMERICA’S COMMUNITY BANKER and AMERICA’S COMMUNITY BANKERS are descriptive terms that have not acquired distinctiveness. Accordingly, the Panel finds that Complainant has not proven the first prong of the UDRP, which provides that the complainant must have rights in the mark upon which the complaint is based. For this reason, the Panel need not examine whether the Domain Names are confusingly similar to Complainant’s marks AMERICA’S COMMUNITY BANKER and AMERICA’S COMMUNITY BANKERS. Consequently, the Panel need not examine whether Respondent has any rights or legitimate interests in the domain names <americascommunitybanks.com>, <americascommunitybanks.net>, and <americascommunitybanks.org>, or whether Respondent registered and used those domain names in bad faith. The Panel’s finding under UDRP Section 4(a)(i) does not mean that Complainant’s marks AMERICA’S COMMUNITY BANKER and AMERICA’S COMMUNITY BANKERS have not acquired distinctiveness, but rather simply means that no evidence of acquired distinctiveness has been presented to the Panel.

In contrast, Complainant’s mark ACB, as evidenced by its registration on the Principal Register, is inherently protectable. The Panel finds that the domain name <acbanks.com> fully incorporates, and therefore is confusingly similar to, Complainant’s mark ACB. Because trademark owners often "telescope" their marks (i.e. expand the mark by using the last letter of the first term also as the beginning letter of a second term), Complainant’s mark ACB could logically be expanded into ACBANKS (i.e., ACB BANKS), which is what Respondent has done. As proved by Respondent’s copying of a graphic from Complainant’s website at approximately the same time that Respondent registered the domain name <acbanks.com>, Respondent had actual knowledge of Complainant and its ACB mark when it registered that domain name. Respondent could have chosen another name for its business, but instead chose to play off of Complainant’s ACB mark, a circumstance unmitigated by Respondent’s subsequent explanation that the domain name <acbanks.com> stands for AccessCommunityBanks.com. The Panel finds Respondent’s explanation undermined in particular by Respondent’s failure to: (1) allege that it used the term "Access Community Banks" before receiving Complainant’s cease and desist letter dated January 20, 2000; (2) display the term "Access Community Banks" on the home page of Respondent’s website; (3) state when it added the explanation of "What does ‘ACBANKS’ stand for?" on the "About Us" page of its website; and (4) register the domain name <accesscommunitybanks.com>, which is currently available for registration.

Under the UDRP, the respondent’s rights or legitimate interests to a domain name are established by demonstrating any of the following three conditions: "(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."

Respondent did not offer its web directory services at the <acbanks.com> website prior to receiving Complainant’s objection to Respondent’s unauthorized use of Complainant’s marks. Additionally, the Panel notes that Respondent’s use of the name <acbanks.com> for its website was never independent of that name’s confusing similarity to Complainant’s ACB mark. Therefore, the Panel finds that Respondent’s use of the domain name <acbanks.com> for its website directory service does not constitute a bona fide offering of services under the UDRP.

Respondent stated that it identifies itself on all written correspondence and invoices by the business name AccessCommunityBanks.com. Respondent did not allege, nor does the record conclusively prove, that Respondent has been commonly known by the business name <ACBANKS.COM>. The Panel therefore finds that Respondent failed to demonstrate its rights in the domain name <acbanks.com> under Section 4(c)(ii) of the UDRP.

Respondent’s admitted use of the domain name <acbanks.com> for financial gain renders moot Respondent’s ability to demonstrate its rights under Section (4)(c)(iii) of the UDRP. Accordingly, the Panel finds that Respondent does not have a legitimate right or interest in the domain name <acbanks.com>.

Complainant and Respondent are both involved in the business of promoting community banks. Although Respondent’s website may well be used by consumers, Respondent’s paying customers are community banks, which pay Respondent to list their information in Respondent’s web directory. Complainant, a trade association of community banks, is dedicated to promoting the interests of community banks, which includes advertising the benefits of community banks. In addition, Internet users can go to Complainant’s website and conduct a search for the member community bank closest to them. Despite Respondent’s claims otherwise, Respondent is a competitor of Complainant in the field of promoting community banks. The Panel finds that Respondent’s registration and use of the domain name <acbanks.com> meet the bad faith criteria defined in Paragraph 4(b)(iii) of the UDRP, because Respondent registered and used that domain name to disrupt the business of a competitor.

The Panel also finds that Respondent’s registration and use of the domain name <acbanks.com> meet the bad faith criteria defined in Paragraph 4(b)(iv) of the UDRP. The Panel could easily envision a situation where a community bank member of Complainant’s trade association might be misled into believing that Respondent’s directory services are affiliated with or endorsed by Complainant because of the similarity of Complainant’s mark ACB and Respondent’s domain name <acbanks.com>. Accordingly, the Panel finds that Respondent has ". . . intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location."

 

7. Decision

The Panel dismisses Complainant’s Complaint against Respondent’s registration and use of the domain names <americascommunitybanks.com>, <americascommunitybanks.net>, and <americascommunitybanks.org>

The Panel decides that (1) the domain name <acbanks.com> is confusingly similar to Complainant’s ACB mark; (2) that Respondent has no rights or legitimate interests in the domain name <acbanks.com>, and (3) that the domain name <acbanks.com> has been registered and used in bad faith.

Therefore, the Panel requires that the domain name <acbanks.com> be transferred to America’s Community Bankers Corporation, Complainant.

 

 

David M. Kelly
Sole Panelist

Dated: March 5, 2001