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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fifth Third Bancorp v. Mr. Jay Hopkins d/b/a The 5^th3rd Music Theory Website

Case No. D2006-0701

 

1. The Parties

The Complainant is Fifth Third Bancorp of Cincinnati, Ohio, United States of America, represented by Mr. John C. Greiner of Graydon Head & Ritchey, LLP, United States of America.

The Respondent is Mr. Jay Hopkins of Muncie, Indiana, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <5th3rd.com> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2006. On June 7, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On June 7, 2006, Tucows 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 the June 12, 2006 notification by the Center that the Complaint was administratively deficient because it did not give the Respondent’s complete identification, the Complainant filed a corrective Amendment to the Complaint on June 14, 2006. The Center verified that the Complaint together with the Amendment 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 June 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2006. The Response was filed with the Center on June 19, 2006.

The Center appointed Dennis A. Foster as the sole panelist in this matter on July 4,2006. 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

The Complainant, Fifth Third Bancorp, is a bank based in the state of Ohio. The Complainant has used the service mark FIFTH THIRD for several decades. The Complainant owns many United States registered FIFTH THIRD service marks, such as: registration no. 2366546 dated July 11, 2000, in international class 036 for investment consultation and stock brokerage services; and registration no. 1645502 dated May 21, 1991, in international class 036 for banking services (Complaint Annex 5).

The Respondent is an individual who operates a website that deals with music and is in turn connected to the website “www.amazon.com”. At this latter website one can find many advertisements for goods and services, including music, but also including financial services. On March 8, 2006, the Respondent filed an application with the United States Trademark Office for the trademark “5TH3RD ” for musical instruments, international class 015. It is not yet apparent what will be the outcome from this application (Response Annex 1).

The Respondent registered the disputed domain name <5th3rd.com> on February 13, 2000. The Complainant and the Respondent have corresponded about the Respondent’s right to use the disputed domain name over the past several years. The Complainant submitted a draft license to the Respondent in the recent past that would have required the Respondent to (a) place a disclaimer on the Respondent’s website disavowing any connection with the Complainant; and (b) not allow the Respondent’s website to be connected to any other website that offers financial services. The license agreement was never executed.

 

5. Parties’ Contentions

A. Complainant

- In 1968, the Complainant adopted and has continuously used since then the inherently distinctive marks FIFTH THIRD BANK and FIFTH THIRD for banking services, investment consultation and stock brokerage services.

- The service mark FIFTH THIRD BANK was first used by the Complainant in 1968.

- The Respondent’s domain name <5th3rd.com>is identical or confusingly similar to the Complainant’s federally registered service mark FIFTHTHIRD.COM for banking services. The Respondent’s use of numerals instead of letters does not distinguish it from the Complainant’s marks and affiliation with the Complainant. Banque Bruxelles Lambert S.A. v. AIB and M123 Multimedia Inc., WIPO Case No. D2000-1818, March 13, 2001; Option One Mortgage Corp. v. Horoshiy, Inc., WIPO Case No. D2004-0874, December 20, 2004.

- If a domain name wholly incorporates a trademark, it is confusingly similar for purposes of the Policy.

- The Complainant is unaware of any trademark registrations owned by the Respondent for FIFTH THIRD or 5th3rd. The Complainant is further unaware of the Respondent holding itself out as FIFTH THIRD BANK.

- In the absence of any license or permission from the Complainant for the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, the Respondent has no rights or legitimate interests in the disputed domain name.

- Any Internet user who accesses the disputed domain name will discover that the Respondent’s website is a mere shell that serves as a conduit to third party websites such as “privatelessons”, “cincymusic” and Amazon. None of these websites make any mention of the Complainant.

- The Respondent is believed to be an individual by the name of Jay Hopkins. Mr. Hopkins has no connection to the Complainant, and is not known by the Complainant’s name.

- The Respondent has made use of the Complainant’s well-known trademark, presumably for the purpose of trading upon the good will of the Complainant by diverting those users familiar with the Complainant to the Respondent’s website. The Respondent’s use of the domain name falsely suggests some affiliation with or sponsorship by the Complainant.

- The Complainant asserts that the Respondent has registered <5th3rd.com> and is using the domain name in bad faith. The Respondent’s action is in clear violation of the Policy ,paragraph 4(b)(iv). The Respondent has attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. See First Tennessee National Corporation v. R.S. Potdar, WIPO Case No. D2002-0247; Fifth Third Bancorp v. Domain Active Pty. Ltd., WIPO Case No. D2003-0884; Fifth Third Bancorp v. Ashley Khong, WIPO Case No. D2005-1360.

- The Respondent could have chosen any number of combinations of numbers for a simple time signature, which is a common music term, but instead chose one that is identical to the Complainant’s well-established trademark for his domain name. Further, the time signature that the Respondent chose is not one commonly known or used.

- This bad faith registration is made clearer by the Respondent’s refusal to disclaim an affiliation with the Complainant or to agree not to link to the Complainant’s competitors. The Respondent’s website links directly to “www.amazon.com”, which web page includes a prominent logo linking to one of the Complainant’s competitors, Fidelity Investments. On March 7, 2006, the Respondent’s website also prominently displayed the logo of Chase Bank, a subsidiary of J.P. Morgan Chase & Co., which is also a main competitor of the Complainant. (Complaint Annexes 8 and 10).

B. Respondent

- The 5TH3RD used in <5th3rd.com>is not a registered trademark of the Complainant. An electronic search of the United States Patent and Trademark Office shows only one registration sought for this string of letters and numerals, and that is to the Respondent (Response Annex 1).

- The domain name <5th3rd.com> has been in use in commerce in the area of music and music theory since February 13, 2000. (Response Annex 1).

- The Respondent has rights and legitimate interests in respect of the domain name <5th3rd.com>. The Respondent registered and has used the domain name to offer musical goods and services since February 13, 2000.

- Prior to these proceedings, the Complainant acknowledged that the Respondent has rights and legitimate interests in the disputed domain name. The Complainant proposed to the Respondent license agreements allowing use of the <5th3rd.com>domain name in connection with goods and services related to music theory. (Response Annex 2).

- From February 13, 2000 to the present, the <5th3rd.com> website shows that it has been used only to sell musical merchandise and offer information on music theory. These goods include books, video tapes and instruments. (Response Annex 3).

- The Respondent has been commonly known as “The 5th3rd Music Theory Website” since February 13, 2000. The Respondent is listed as “The 5th3rd Music Theory Website” as registrant per current WHOIS information. (Response Annex 4).

- The Respondent now maintains the website for the non-commercial use of providing music instruction and musical links. The <5th3rd.com>website has never been used to mislead, divert customers, or tarnish trademarks of the Complainant. Correspondence between the Complainant and the Respondent shows that the Respondent has in fact agreed to provide a disclaimer and also not to link to the websites of competitors of the Complainant. (Response Annex 5).

- The Respondent did not register the domain name in bad faith, and is not using the domain name in bad faith. The domain name was registered because a 5^th and a 3^rd are well known musical terms for intervals of a scale. These well known musical terms can be found in any dictionary. (Response Annexes 6 and 7).

- The <5th3rd.com> website has never linked to any financial or banking websites. The <5th3rd.com>website does link to the website “www.amazon.com”, but only as a means to purchase music theory related items (Response Annex 8).

- The Respondent does not have control over the content of “www.amazon.com”.

- Contrary to the accusation of bad faith by the Complainant, the Respondent has proven good faith by (a) contacting the Complainant six years ago in June 2000, and offering to forward misdirected email; (b) offering to put disclaimers on the <5th3rd.com>website; and (c) honoring the Complainant’s request to not link to financial service websites, or competitors of the Complainant. (Response Annex 9).

- The Respondent has never sought any relationship with the Complainant. It is the refusal by the Respondent to enter into a business agreement with the Complainant that has brought about this UDRP proceeding (Response Annex 11).

- The <5th3rd.com>domain name was not registered in order to prevent the Complainant from reflecting any mark or domain name. The Respondent has never engaged in a pattern of such conduct.

- The Complainant and the Respondent are not competitors. The Complainant is a banking and financial service provider, whereas the Respondent’s interests are only in the field of music instruments and music theory products and information.

- The <5th3rd.com>website was not created to attract Internet users by creating a likelihood of confusion. Internet users who visit the website can clearly tell that the <5th3rd.com>website is related to music and music products, and that it has nothing to do with banking or financial services. In an effort of good faith, the Respondent has offered multiple times to place a disclaimer on the <5th3rd.com>website to further make clear the distinction, and has agreed not to link to any of the Complainant’s competitors’ websites. (Response Annex 12).

Reverse Domain Name Hijacking

The Respondent respectfully requests from the Panel a finding of reverse domain name hijacking and abuse of the WIPO administrative proceeding by the Complainant. The Respondent submits as evidence of reverse domain hijacking the correspondence between the Respondent and the Complainant over the past six years since June of 2000. (Response Annex 11). After the repeated refusals by the Respondent to transfer the domain name to the Complainant or to enter into a business agreement with the Complainant, the Complainant is knowingly attempting to acquire the domain name by abusing the UDRP administrative proceeding.

 

6. Discussion and Findings

In order for the Complainant to prevail and have the disputed domain transferred to it, the Complainant must show per the Policy, paragraphs 4(a)(i-iii):

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the 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.

A. Identical or Confusingly Similar

The Complainant has exhibited copies of many of its FIFTH THIRD United States of America principal register service mark registrations, including registration no. 1645502 dated May 21, 1991, in international class 036 for banking services; and registration no. 2366546 dated July 11, 2000, in international class 036 for investment consultation and stock brokerage services. (Complaint Annexes 5 and 6).

The disputed domain name is <5th3rd.com>and, as the Complainant argues, is merely a different way of writing the same words that comprise the Complainant’s numerous FIFTH THIRD registered service marks. The Panel agrees that this means the disputed domain name is at best confusingly similar to the Complainant’s FIFTH THIRD service marks. Previous panels have made a similar finding. See Banque Bruxelles Lambert S.A. and One Two Trade S.A. v. AIB and M123 Multimedia Inc., WIPO Case No. D2000-1818, March 13, 2001, where the domain name “12trade.com” was found to be confusingly similar to the trademark ONE TWO TRADE. See also Option One Mortgage Corp. v. Horoshiy, Inc., WIPO Case No. D2004-0874, December 20, 2004, for a similar anaylsis involving the domain name “option1mortgage”.

The Panel thus finds the Complainant has sustained its burden of proof under the Policy at paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no license or permission to use the disputed domain name. The Complainant also asserts the Respondent is not making a bona fide offering of goods and services per the Policy, paragraph 4(c)(i), because the Respondent’s website at the disputed domain name is connected to websites that offer financial services that compete with the Complainant (Complaint Annex 10).

Although the Respondent, proceeding pro se, at times says he is making a non-commercial use of the disputed domain name website to offer materials and resources on music and music theory in particular, the Panel finds this is not correct. The Respondent in fact connects its music website at the disputed domain name to “www.amazon.com”. At this latter website of course there are music-related goods but also all other manner of goods and services being advertised, including financial services comparable to the Complainant’s. The Panel believes it fair to assume the Respondent has a commercial interest, as indeed many panels have assumed in similar circumstances. (For examples of panels finding that connecting the disputed domain name website to a commercial website precludes a noncommercial use, see F. Hoffmann-LaRoche AG v. Macalv e-dominios S.A., WIPO Case No. D2006-0451,; and Societe pour l’oeuvre et la memoire d’Antoine de Saint Exupery-Succession Saint Exupery-D’Agay v. The Holding Company, WIPO Case No. D2005-0165.

It is also true that for much of the time period since the disputed domain name, <5th3rd.com>was registered on February 13, 2000, the Respondent itself has offered for sale music videos and other goods at the website (Response Annex 3).

Contrary to what the Complainant asserts, the Panel concludes there is genuine musical content on the Respondent’s disputed domain name website, and the Respondent has shown through archived website copies over time that the disputed domain name has performed this function more or less continuously since it was created in 2000. (Response Annex 3).

As the Complainant argues, the Panel does find it curious that the Respondent’s disputed domain name, <5th3rd.com> should substantially correspond to the Complainant’s bank services trademark FIFTH THIRD. But the Respondent’s explanation that these are generic music intervals satisfies the Panel when taken together with the music materials on the website, and the fact that the Respondent has not tried to take advantage of the Complainant’s trademark in any material way during the six years the Respondent has owned the disputed domain name. The Panel considers that the occasional Amazon advertisements for financial services, among a myriad of other advertised goods and services, are of non-dispositive importance.

The Panel finds the Respondent’s use of the disputed domain name falls within the safe haven of the Policy ,paragraph 4(c)(i), i.e., before any notice to the Respondent of this dispute, the Respondent was using the disputed domain name to make a bona fide offering of goods and services.

The Complainant having failed to carry its burden of proof under paragraph 4(a)(ii) of the Policy, the Panel will not proceed to a discussion of bad faith.

C. Registered and Used in Bad Faith

Reverse Domain Name Hijacking

The Panel rejects the Respondent’s request that the Complainant be found to have attempted reverse domain name hijacking per the Rules, paragraph 15(e). The Respondent seems to believe reverse domain name hijacking obtains because the Complainant proposed a limited licensing agreement to the Respondent in April 2006. (Response Annex 2). However, in the Panel’s view, the Complainant was merely trying to circumscribe the activity of the Respondent, whom the Complainant views as a nuisance, at low cost. This decision in favor of the Respondent was not an easy one for the Panel to reach: It is a curiosity that a music website would have substantially the same name as a regional bank. However, the Respondent did provide enough evidence to convince the Panel this probably is a good faith co-incidence.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Dennis A. Foster
Sole Panelist

Dated: July 18, 2006