Westmore · UDRP DecisionFifth-third-fidelity.com
The Panel ordered transfer of <fifth-third-fidelity.com>. It found the Domain Name confusingly similar to Complainant’s FIFTH THIRD mark because it incorporated the mark and merely added “fidelity.” Respondent lacked rights or legitimate interests because she was not authorized or associated with Complainant and presented no evidence of being commonly known by the Domain Name. Bad faith was established under paragraph 4(b)(iv) based on Respondent’s use of the Domain Name to create confusion, redirect users to competing mortgage-related services, and trade on the reputation of Complainant’s nationally known financial-services mark.
The timeline behind fifth-third-fidelity.com
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The case illustrates application of paragraph 4(b)(iv) where a domain incorporating a financial institution’s full mark was used not merely as a website address but also as an email domain for marketing competing mortgage-related services. The Panel treated the combination of entire-mark incorporation, financial-services context, user redirection, lack of authorization, and unrebutted evidence as sufficient to establish all three UDRP elements.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Fifth Third Bancorp v. Lisa Shackelford, Fifth Third Fidelity Case No. D2015-2107 1. The Parties Complainant is Fifth Third Bancorp of Cincinnati, Ohio, United States of America (“United States”), represented by Graydon Head & Ritchey, LLP, United States. Respondent is Lisa Shackelford, Fifth Third Fidelity of Austin, Texas, United States. 2. The Domain Name and Registrar The disputed domain name <fifth-third-fidelity.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2015. On November 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 20, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 15, 2015. The Center appointed Michael A. Albert as the sole panelist in this matter on December 21, 2015. 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 Fifth Third Bancorp (the “Complainant”) is an Ohio corporation organized in 1975 and is a bank holding company that, through its subsidiaries, engages primarily in commercial, retail and trust banking, electronic payment processing services and investment advisory services. Complainant has several subsidiaries that use the “Fifth Third” name, including Fifth Third Leasing Company; Fifth Third International Company; Fifth Third Holdings, LLC; Fifth Third Securities, Inc.; Fifth Third Real Estate Capital Markets Company; Fifth Third Mortgage Company; Fifth Third Mortgage Insurance Reinsurance Company; Fifth Third Insurance Agency, Inc.; and others. Complainant’s subsidiaries provide a wide range of financial products and services. Complainant and its subsidiaries use the mark FIFTH THIRD (the “Mark”). Complainant holds United States Trademark Registrations for the Mark dating back to 2000. The Domain Name was created on August 12, 2015. 5. Parties’ Contentions A. Complainant Complainant alleges that, for the above reasons, it owns the Mark; that Respondent registered the Domain Name on August 12, 2015 using Complainant’s Mark in its entirety; that the Domain Name functions as a “parking place” website with no material content; but that Respondent used the Domain Name to obtain the email address “[…]@fifth-third-fidelity.com”, which Respondent uses to send emails to Complainant’s actual or prospective customers, attempting to market mortgage loan services to them at an email address that resolves to “www.erasemymortgage.com”. Complainant alleges that, in so doing, Respondent is confusing potential customers into believing that Respondent’s services are associated with Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Complainant has proven, through competent evidence appended to its Complaint, all three elements required under the Policy. A. Identical or Confusingly Similar The Domain Name is confusingly similar to Complainant’s Mark. The only difference is that Respondent adds the term “fidelity” to the Mark. The addition of “fidelity” does not make the Domain Name any less confusing. This is especially true because it is typical for Complainant to use variations of the Mark, as is evident from Complainant’s list of trademarks appended to its Complaint. Further, “a domain name is identical or confusingly similar to a trademark for purposes of the Policy ‘when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name.” See Crocs Inc. v. Alex Xie , WIPO Case No. D2011-1500 ; Wal-Mart Stores, Inc. v. Richard Macleod d/b/a For Sale , WIPO Case No. D2000-0662 ; Fifth Third Bancorp v. Domain Active Pty. Ltd. , WIPO Case No. D2003-0884 ; and Fifth Third Bancorp v. Ashley Khong , WIPO Case No. D2005-1360 . The Panel finds, therefore, that Complainant has established that the Domain Name is identical or confusingly similar to Complainant’s Mark. B. Rights or Legitimate Interests Respondent has no rights or legitimate interests in the Domain Name. Complainant has established that Respondent is not associated with Complainant in any way and that Respondent has never sought nor received permission to use Complainant’s Mark. Complainant’s Mark has been registered since 1991 and is widely known. There is no evidence Respondent has been commonly known by the Domain Name. The fact that Complainant’s Mark is widely known and Respondent is not commonly known by or even associated with the Mark supports a finding of no legitimate interests. See Accor v. Sangho Heo / Contact Privacy Inc. , WIPO Case No. D2014-1471 . Respondent offers no contrary evidence. The Panel finds that Complaint has established that Respondent does not have rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith Respondent’s actions clearly violate paragraph 4(b)(iv) of the Policy. Respondent has attempted to attract Internet users by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s services. See First Tennessee National Corporation v. R. S. Potdar , WIPO Case No. D2002-0247 ; Fifth Third Bancorp v. Domain Active Pty. Ltd. , supra ; Fifth Third Bancorp v. Ashley Khong , supra . Respondent ignored inquiries from Complainant’s counsel. While not alone dispositive, such conduct, particularly in view of the striking similarity between the Domain Name and the Mark, further calls into question Respondent’s good faith. See Fifth Third Bancorp v. Domain Active Pty. Ltd. , supra ; Pharmacia & Upjohn AB v. Dario H. Romero , WIPO Case No. D2000-1273 ; Advanced MicroDevices, Inc, v. [No Name] , WIPO Case No. D2000-0515 ; Telstra Corporation, Ltd. v. Nuclear Marshmallows , WIPO Case No. D2000-0003 . Complainant is a nationally known financial institution, with a distinctive mark and name. Respondent, seeking to capitalize on Complainant’s stature and reputation, lures Internet users who likely believe they are accessing a website affiliated with Complainant, to Respondent’s unaffiliated, unendorsed shell website, and redirects them to competing services. Such actions violate the Policy by which Respondent’s registration of the Domain Name is governed. The only conceivable purpose of Respondent’s use of the Domain Name is to trade on Complainant’s Mark and good will. Complainant has thus established that the Domain Name was registered and is being used in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <fifth-third-fidelity.com> be transferred to Complainant. Michael A. Albert Sole Panelist Date: January 5, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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