World Intellectual Property Organization Finds In Favor Of Christiana Bank In Dispute Over Conflicting Domain Names
In a significant decision interpreting bad faith misappropriation of an internet domain name, on January 29, 2001 the World Intellectual Property Organization ("WIPO") found that despite claimed good intentions, bad faith exists where the registration of a domain name confusingly similar to another prior tradename, is done without the complainant's knowledge and permission.
Introduction
All registrants of domain names subject themselves, by virtue of their registration agreement, to arbitration of domain name disputes by designated groups. The arbitrator involved in this matter was a U.S. attorney affiliated with the WIPO in Switzerland.
In Christiana Bank & Trust Company v. John David Lake and Lori Lake d/b/a World Think Tank, WIPO Case No. D2000-1212, the Administrative Panel 1 decision found that the complainant, Christiana Bank & Trust Company ("the Bank"), had established that the respondents, had "engaged in the abusive registration of the domain name "christianabank.com" within paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy") 2. Accordingly, the Administrative Panel ordered that the domain name be transferred by the registrar, Network Solutions, Inc., from the respondent to the complainant.
The Facts
Complainant, Christiana Bank & Trust Company, is a state chartered bank, incorporated in Delaware, and located in Greenville, Delaware. Respondents are husband and wife, doing business as World Think Tank, which is located in Elkton, Maryland, just 25 miles away from the complainant.
WIPO had jurisdiction over the domain name dispute by virtue of the registration agreement between the Lakes and Network Solutions, pursuant to which the terms for hosting of the domain name "christianabank.com" incorporate the Policy 3. Policy paragraph 4(a) requires registrants to submit to a mandatory arbitration online with WIPO, or a similar dispute resolution service, where a domain name is confusingly similar to a trademark, (b) where the registrant has no rights or legitimate interests in the domain name, and/or (c) where the domain name was registered and is being used in bad faith. The Bank argued that Lakes' conduct impinged on all three of these criteria.
In its complaint filed with WIPO 4, the Bank alleged that throughout its existence, a period of approximately 10 years, it has used as its sole name the descriptive trademark of Christiana Bank & Trust Company to market banking, trust and related investment services to businesses and consumers in Delaware and surrounding states. The complaint further alleged that the name Christiana Bank & Trust Company has been well known and advertised since the Bank's founding.
In support of its claim, the complainant provided WIPO with (1) a hard copy of its current Web site ( ; (2) a copy of the Bank's listing in the Wilmington Yellow Pages; (3) an exhibit noting that the Bank's stock is traded on the OTC market under the symbol "CBTD" (i.e., Christiana Bank & Trust Delaware); and (4) copies of. the Bank's advertisements. All of these exhibits, the Administrative Panelist found, were evidence of the Bank's legitimate interest in the domain name "christianabank.com" 5.
In response to the complaint, the respondents admitted that they had only registered the disputed domain name in July 1999, nearly a decade after the Bank's founding. Similarly, the respondents admitted that they had failed to make a demonstrable effort to actually use the domain name. The Lakes explained that they were, in effect, "holding" the domain name for the Bank 6.
The Panelist's Findings
Here is where Christiana Bank & Trust Company v. John David Lake and Lori Lake d/b/a World Think Tank took a turn unlike so many domain dispute cases. In most cases, the (mis)appropriating party has created a paper (or e-mail) trail demanding remuneration in exchange for the domain name. Under Policy paragraph 4(b)(i), bad faith is demonstrated by a party's willingness to cease using a domain name in exchange for valuable consideration in excess of the out-of-pocket costs of registering the domain name.
The demand that consideration of some sort be exchanged was not so clear in this case since there was nothing like a demand letter. Nor was an actual "dollar amount" ever stated or even implied. Rather, the Lakes answered the complaint stating that they "hoped to do business together" 7. The Administrative Panelist found that statement sufficiently indicative of "bad faith":
While the Respondents' intentions may have been good, registering a domain name that corresponds to the name and mark of another on their behalf without authorization does not provide the Respondents with rights to and legitimate interests in the domain name.
Reading between the lines, the Panel found that the Lakes, in fact, were seeking remuneration in excess of the out-of-pocket costs of registering the domain name:
The Respondents have basically registered the "christianabank.com" domain name in order to transfer it to the complainant, for valuable consideration, i.e., the cost of building a web site and/or doing other business.
Conclusion
Some may take issue with the Administrative Panelist's "reading between the lines" to find that the Lakes' had an ulterior, monetary goal in registering the disputed domain name, despite the absence of facts regarding a dollar demand. Indeed, the Panelist notes the alleged existence of prior social contact between the Bank's president and Mr. Lake. Further complicating the issue are WIPO administrative procedures that do not provide for a live hearing and the opportunity for direct- and cross-examination.
Nonetheless, the Panelist found that, even in the absence of a dollar demand, there was sufficient evidence that the Lakes never sought to use the disputed domain name for a legitimate business purpose. At a time when a domain name is critical to a business' success, the mere fact that a party is not "using" a bona fide tradename may be evidence that the domain name was not registered in good faith and may create the inference that the domain was registered in order to obtain compensation from the true owner.
Footnotes
1 WIPO ordinarily assigns a single Administrative Panelist to resolve domain disputes, as was the case here. Parties, however, may demand a Panel of three arbitrators, with accompanying increased cost.
2 The Uniform Policy for Domain Name Dispute Resolution was adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999.
3 WIPO is one of the four dispute resolution service entities approved by ICANN. The others are the CPR Institute, eResolutions and the National Arbitration Forum. Readers are directed to the ICANN website (http://www.icann.org) to learn more about the locations, costs, arbitrators' credentials and (significantly) controlling body of decisions of these entities.
4 Though based in Switzerland, the WIPO appointed an Ohio attorney as the sole arbitrator and all proceedings were conducted by email.
5 The Bank further noted that, as a result of the respondents' residing in the same "media market" as complainant, respondents were obviously aware of the nature of the Bank's business practices. In fact, the Bank submitted a map to WIPO (located in Geneva, Switzerland) noting that Elkton is a short drive south on 95 from Wilmington.
6 Respondents never made an effort to use the domain name "christianabank.com" to offer goods or services. In their response to the complaint, the Lakes "acknowledged" that the "[d]omain name is not actively hosted". Indeed, a visitor to the "christianbank.com" web site will find the message: "The page cannot be displayed".
7 Apparently, Mr. Lake had met the Bank's president sometime in the past during a time when Mr. Lake was recovering from cancer. While the Administrative Panel recognized the existence of this personal relationship, it did not effect its decision. Indeed, the Panelist found that, while the Lakes may have acted with good intentions, that did not justify registering the disputed domain name.
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