In the recent National Arbitration Forum case of Bank of America Corporation v. [Registrant] (Nat. Arb. Forum 1226147, November 7, 2008), the UDRP Panel was presented with a dispute over the domain www.uscapitaltrust.com. Bank of America is in the business of banking, fiduciary, and investment management services, and claims ownership to three separate trademarks related to the instant dispute which included UNITED STATES TRUST COMPANY with rights dating back to 1853, UNITED STATES TRUST with rights relating back to 1964 and U.S. TRUST with rights relating back to 1976. Bank of America also claims to maintain a domain at www.ustrust.com.
The Respondent, who was never identified by name, was represented by counsel, and claims to be known as US Capital Trust. Some of the arguments presented by each side included a debate over whether or not line of business for each party was similar enough to create confusion. Respondent claimed that although both businesses were in the financial services industry, there was a distinction among the actual businesses. Specifically, Respondent alleges that it is in the business of providing financing for the purchase of buses. However, the Panel points out that Respondent’s answer quoted a citation from its own website from 2007 (the web site was supposedly changed upon notification of the dispute), which stated:
US Capital Trust is a leading private equity and venture capital firm committed to empowering entrepreneurs to build innovative and industry leading businesses. US Capital Trust is a focused effort to develop world class business in a wide variety of fields. US Capital Trust invests in companies independent of size or stage of growth. We leverage our experiences, industry expertise and contracts to guide talented entrepreneurs to market success.
Bank of America claimed that the 2007 web site by Respondent offered private equity and venture capital services, which was in direct competition with Bank of America. The Respondent also attempted to claim that the addition of the word CAPITAL created a distinct domain which was not confusing.
The Panel in addressing the three factors in UDRP proceedings explained that the first prong, whether or not the domain was identical or confusingly similar to Complainant’s mark, was satisfied. The Panel explained:
But it cannot be denied that the word “capital” is closely related to “wealth” and “money”, and that, in turn, those words are closely related to the word “trust” as used in the Complainant’s mark (that is, a “trust fund”). Given the common use of the words, the term “capital”, in context, must be considered to be a generic term. Its addition to the mark US TRUST does not create a domain name that is distinctive from the mark.
The Panel cited previous decisions for the proposition that the line of business of both parties is not relevant for this element of the policy, and applied that concept to the facts in this case.
Turning to the second prong of the policy, whether or not the respondent had any rights or legitimate interests in the domain, the Panel found that the Respondent did not create a bona fide offerings of goods or services based upon the 2007 description. As a result the Panel found this factor favored Complainant as well.
Lastly, the Panel reviewed the third prong, whether or not the domain was registered and used in bad faith. The Panel noted:
As the Complainant correctly points out, the description that the Respondent gives of its business on the 2007 version of its website does not correspond to the description given to the Panel. On the 2007 version of the website, the Respondent claims to provide a broad range of financial services to entrepreneurs. In its Response and in its Additional Submission to this Panel, the Respondent states that its main business is to provide financing for the purchase of buses (motor vehicles). On the basis of the evidence submitted by the Respondent, the Panel accepts that an accurate description of the Respondent’s business is that it provides financing for the purchase of buses. As a consequence, the Panel finds that the description provided on the 2007 version of the web site is misleading.
The Panel went further and noted, “the Panel finds that the most likely explanation for the misleading description given in the 2007 version of the website was to attract users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark, in violation of 4(b)(iv) of the Policy.” Additionally, the Panel found that the anonymous registration information placed on the WHOIS data for the disputed domain was a element that reinforced the determination of bad faith.
Ultimately the Panel ruled that the domain be TRANSFERRED.
Defend My Domain Commentary: The Panel’s finding that the line of business is irrelevant, is contrary to basic trademark law principles. Typically, under trademark law, the test to determine confusing similarity includes an analysis of the line of business associated with each mark.
