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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lotus Bancorp Inc. v. Centre Centre

Case No. D2007-0568

 

1. The Parties

The Complainant is Lotus Bancorp Inc., d/b/a LotusBank of Michigan, United States of America, represented by Mahesh K. Nayak, United States of America.

The Respondent is Centre Centre of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <lotusbank.com> is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2007. On April 16, 2007, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On April 17, 2007, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details . The Center verified that the Complaint 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 April 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2007. The Response was filed with the Center on May 14, 2007.

The Center appointed John Swinson as the sole panelist in this matter on June 4, 2007. 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 is a regional bank in the United States of America, with its headquarters in Novi, Michigan. The Complainant offers a range of banking services (including personal banking, consumer and commercial lending, mortgages and securities, financial planning and internet banking).

The Complainant has been using “Lotus Bank” in commerce in the United States of America “since at least August 2006.”

On September 1, 2006, the Complainant filed a trademark application for the word mark ‘Lotus Bank’ with the United States Patent and Trademark Office. The application for the service mark is in relation to banking and related services. As at the date of the Complaint, that trademark application was still pending and no final determination as to whether the mark will be registered has been made.

The Complainant operates a website at “www.lotusbank.net” which offers online banking services.

The Respondent registered the disputed domain name on June 29, 2006.

The Respondent is also known as Knowledge Centre and its website at “www.kcentre.com” states that it assists in the management, buying, selling or licensing of intellectual property including registered domain names.

The “www.lotusbank.com” website currently contains a “LOTUSBANK” logo with a picture of a lotus flower, and a disclaimer advising that:

“- We are Not a bank in America and have no connection to any such bank.

- We know nothing about a bank in America.

- We know nothing about an IPO and have no connection with an IPO.

- We can NOT offer you any investment advice.

- We do not take deposits of money.

- We do not reply to emails concerning the above matters.

- We will not provide an undertaking to delete emails sent to us in error DO NOT send us the emails in the first place.

- Please do not phone us, we can not provide any further information then what is above.”

The only active link on the “www.lotusbank.com” website is an email address to contact for further information.

 

5. Parties’ Contentions

A. Complainant

In summary, the Complainant makes the following arguments:

- The Complainant enjoys common law ownership rights in the ‘Lotus Bank’ name and has continuously and exclusively used the ‘Lotus Bank’ mark since at least August 2006. For example, the ‘Lotus Bank’ name currently appears on signage for the Complainant’s bank branch and the Complainant’s stationary (including letterhead, envelopes, withdrawal and deposit slips and other bank documents).

- The disputed domain name is identical and confusing similar to the Complainant’s common law trademark rights.

- Since the disputed domain name was registered, the “www.lotusbank.com” website has only contained a disclaimer that the website is not the Complainant’s website and has not contained any other information. It can be inferred that the Respondent only posted the disclaimer because visitors to the disputed domain name have been confused.

- There is no connection between the Respondent and the disputed domain name. The Respondent is not commonly known by the ‘Lotus Bank’ name, and has not purchased any trade mark rights or goodwill in relation to the disputed domain name.

- The Respondent is in the business of cybersquatting and does not have a legitimate purpose for the disputed domain name. There is no bona fide offering of goods or services on the “www.lotusbank.com” website.

- The Respondent has no link to banking and does not provide banking services.

- The Respondent acquired the disputed domain name in order to transfer it to the Complainant for valuable consideration in excess of out-of-pocket expenses. At one stage there was an agreement by the Respondent to sell the disputed domain name to the Complainant for US$900 but the Respondent reneged on this offer and requested more money.

- The Complainant has not authorised or licensed the Respondent to use the ‘Lotus Bank’ name.

B. Respondent

In summary, the Respondent makes the following arguments:

- The Respondent manages the disputed domain name for their client, Garden Central, who are Japanese Garden consultants based in England. The “www.lotusbank.com” website uses the term ‘Lotus Bank’ to refer to an arrangement of lotus flowers. One of Garden Central’s most popular items is lotus banks.

- Prior to registering the disputed domain name the Respondent carried out searches in the United State of America and United Kingdom trademark registries and on the Internet but did not find any registered trade marks or Internet sites of the Complainant. At the time of registering the disputed domain name the Respondent had no knowledge of the Complainant.

- The Complainant has no trademark rights to ‘Lotus Bank’ in the United Kingdom (where the Respondent’s client carries on business), as the Complainant is a small regional bank based in the United State of America and does not trade in the United Kingdom.

- The Respondent placed the disclaimer on the “www.lotusbank.com” website upon becoming aware of the existence of the Complainant so visitors would not mistake the website as the Complainant’s website. There have been no complaints regarding confusion, except the Complaint from the Complainant.

- The Respondent received an expression of interest via email to buy the disputed domain name and the Respondent’s client quoted a price in response, however as the offer did not look like it was progressing the Respondent’s client decided to retain the disputed domain name for future development.

- The proceedings brought by the Complainant appear to be reverse domain hijacking.

6. Discussion and Findings

To succeed in its Complaint, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) 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

(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.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

The Complainant does not own a registered trademark over the term ‘Lotus Bank’ (or any similar name), but asserts it has common law trademark or service mark rights over the name. The Complainant has filed a trademark application for ‘Lotus Bank’ in September 2006, which is still pending.

The Complainant contends that it has been using the mark since August 2006 on various forms of stationary, on signage outside the Complainant’s branch, and on a website accessible via “www.lotusbank.net”. There is ample evidence in the Complaint of the Complainant’s use of the ‘Lotus Bank’ name since August 2006, including some forms of advertising, bank forms, a website and the like.

However the ‘Lotus Bank’ name has only been in use by the Complainant for a relatively short time (less than a year) and in a small geographical region (part of Michigan).

The fact that the ‘Lotus Bank’ name may only be connected to the Complainant in a small area of the United State of America, and that the Complainant may not have trademark rights in the United Kingdom (where the Respondent is located) does not prevent the Complainant having common law trademark rights for the purposes of the Policy.

The difficulty in this dispute is that the Respondent registered the dispute domain name in June 2006, prior to the Complainant using the ‘Lotus Bank’ name.

“Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”), § 1.4. As for the status of WIPO Decision Overview, it has been previously noted that, “[a]lthough the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled from the decisions of numerous panelists during the first five years of administration of the UDRP.” Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061 at n.3.

The name and branding of the Complainant is clearly ‘Lotus Bank’. Although the length of the Complainant’s use of ‘Lotus Bank’ has not been extensive, the Panel is prepared to assume for the purposes of this decision that the Complainant has common law trademark and service mark rights in ‘Lotus Bank’ within the meaning of the Policy.

Therefore, the Panel finds that the requirement of the Policy paragraph 4(a)(i) is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 non-commercial 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.” (Policy, paragraph 4(c)).

The Complainant contends that the Respondent is not making a bona fide offering of goods or services in connection with the disputed domain name. While the Respondent asserts that its client has intentions to use the disputed domain name in connection with its floral or gardening business, no evidence of “demonstrable preparations” to use the disputed domain name have been provided. The Respondent has not provided any evidence in the Response of his client’s business or business plans. The Respondent refers to its client’s website but does not give any details of its client, its client’s address or its client’s current website address.

The Respondent says that it registered (on behalf of its client) the disputed domain name in June 2006. Almost 12 months have elapsed without the Respondent or its client creating an active site or making “demonstrable preparations” to do so. The Respondent appears to be passively holding the disputed domain name.

The Respondent (and its client) have not been known by the disputed domain name, and do not have any trademark or service mark rights in it. The Complainant contends that the Respondent and its client have no relationship with or permission from the Complainant to use the ‘Lotus Bank’ mark and the Respondent has not shown otherwise. The Respondent’s assertion that it registered the disputed domain name in relation to a business that sells a bank of lotus flowers has not been supported by any evidence.

The Panel finds that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests and that the Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered the disputed domain name in bad faith and that it is using that name in bad faith.

It is common ground that the disputed domain name was registered in June 2006 and that the Complainant did not start to use the name ‘Lotus Bank’ until August 2006.

There is no evidence that the Respondent was aware of the Complainant’s intention to use the ‘Lotus Bank’ name until the Complainant’s representative contacted the Respondent in August 2006 asking the Respondent if the Respondent would be willing to sell the disputed domain name and asking for a price. There were negotiations in relation to the price. At no time in such negotiations did the Complainant make any allegations or demands to the Respondent that the Respondent was acting in bad faith or was a cybersquatter. At the end of August 2006, the Complainant informed the Respondent that it was printing an IPO Offering Circular the next week, and needed to finalise the negotiations as a matter of urgency.

The Panel has reviewed the Offering Circular on the Complainant’s website, dated August 25, 2007. (It is well accepted that the Panel can conduct its own factual research, such as review of the parties’ websites. See WIPO Decision Overview, § 4.5.) It states:

“On January 11, 2006, we filed an application with the Michigan Office of Financial and Insurance Services (OFIS) to organize a new Michigan state bank in Novi, Michigan named “City Central Bank” and with the Federal Deposit Insurance Corporation (FDIC) for federal deposit insurance. We have received approvals of each of these applications, subject to certain conditions. Following the approvals of the FDIC and Michigan OFIS, we elected to change our corporate name from “City Central Bancorp, Inc.” to “Lotus Bancorp, Inc.” and the name of our proposed banking subsidiary from “City Central Bank” to “Lotus Bank.”

We have received approval as a bank in organization, but we do not anticipate the commencement of banking operations until the fourth quarter of 2006.”

In short, there is no evidence that the Respondent knew or could have known of the Complainant’s intention to use ‘Lotus Bank’ at the time the Respondent registered the disputed domain name.

As set out in the Procedural Overview:

“Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right. … In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.”

There is no evidence that the Respondent was clearly aware of the Complainant or of the Complainant’s plans. There is no evidence of a pattern of conduct by the Respondent of registering domain names of businesses about to launch or change names. Compare, for example, Royal Bank of Canada, Dain Rauscher Corporation and Dain Rauscher Incorporated v. RBCD Ain Rauscher, WIPO Case No. D2001-1236. 

The fact that the Complainant contacted the Respondent and offered to purchase the domain name does not, in this case, indicate that the disputed domain name was registered with the purpose of reselling it at a profit.

The Panel finds that paragraph 4(a)(iii) of the Policy is not proven by the Complainant.

7. Reverse domain name hijacking

The Respondent briefly refers to reverse domain name hijacking by the Complainant. Reverse domain name hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. The onus of proving bad faith is on the Respondent. The Respondent has alluded to an allegation of reverse domain name hijacking by the Complainant however the Respondent has not substantiated it with any evidence or reasons. Accordingly, the Panel declines to make such a finding against the Complainant.

8. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel denies the Complaint.

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John Swinson
Sole Panelist

Date: June 18, 2006