Guarantybank.com

The timeline behind guarantybank.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Guaranty Bank v. Brian Yu c/o iContents, Inc. Guaranty Bank Team Claim Number: FA0506000493004 PARTIES Complainant is Guaranty Bank (“Complainant”), represented by Sherri L. Eastley of Wong Cabello, L.L.P., P.O. Box 685108, Austin, TX 78768-5108. Respondent is Brian Yu c/o iContents, Inc. Guaranty Bank Team (“Respondent”), SoAm B/D 2F, 699-20 YeokSam-Dong, GangNam-Gu, Seoul, Korea. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <guarantybank.com>, registered with Hangang Systems, Inc. d/b/a Doregi.com. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Hong Oo Baak as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 8, 2005; the Forum received a hard copy of the Complaint on June 10, 2005. The Complaint was submitted in both Korean and English. On June 20, 2005, Hangang Systems, Inc. d/b/a Doregi.com confirmed by e-mail to the Forum that the domain name <guarantybank.com> is registered with Hangang Systems, Inc. d/b/a Doregi.com and that the Respondent is the current registrant of the name. Hangang Systems, Inc. d/b/a Doregi.com has verified that Respondent is bound by the Hangang Systems, Inc. d/b/a Doregi.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). Complainant submitted a revised Complaint to the National Arbitration Forum (hereinafter referred to as the “Forum”) electronically on June 23, 2005. the Forum received a hard copy of the revised Complaint on June 27, 2005. The revised Complaint was submitted in both Korean and English. On June 8, 2005, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 18, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@guarantybank.com by e-mail. A timely Response was received and determined to be complete on July 18, 2005. On July 22, 2005 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hong Oo Baak as Panelist. An Additional Submission by Complainant was received on July 25, 2005, which complied with Supplemental Rule 7. In response to Complainant’s Additional Submission, Respondent submitted a timely additional submission, which the Forum received on July 29, 2005. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant is in the business of banking and financial services in Texas, USA. Complainant and its predecessors have used the word "Guaranty" in its name since 1921 for banking and financial services. Complainant changed its name to Guaranty Federal Savings Bank in 1988, and to Guaranty Federal Bank, FSB in the early 1990s. By late 1998, Complainant had systematically implemented use of GUARANTY BANK for its lending services in connection with all of its banking services. Complainant obtained registration with the USPTO of the GUARANTY mark (hereinafter referred to as the Mark) on August 20, 1991 as Registration Number 1,654,486 in connection with its banking services. Complainant filed for the registration of the GUARANTY BANK mark with the USPTO on October 27, 2000 (Ser. No. 76/155,200). Complainant asserts that the primary portion of the Disputed Domain Name, “guarantybank,” is identical to Complainant’s marks, GUARANTY and GUARANTY BANK. Complainant also asserts that because the Disputed Domain Name combines Complainant’s registered GUARANTY mark with the generic word “bank,” the primary portion of the Disputed Domain Name, “guarantybank,” is legally indistinguishable from Complainant’s registered mark. Complainant also asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant contends that Respondent’s conduct purporting to sell the Disputed Domain Name suggests that it has no legitimate interests. Complainant also asserts that Respondent maintained a website at the Disputed Domain Name, offering both sponsored and unsponsored links to banking and financial institutions and that Respondent is not commonly known by the name “guarantybank.” Complainant asserts that Respondent was actually or constructively aware of Complainant’s GUARANTY mark when it registered the Disputed Domain Name because the GUARANTY mark was registered and is well-known. Complainant also asserts that Respondent’s use of the Disputed Domain Name to divert web users indicates that Respondent registered the Disputed Domain Name with bad faith as defined by the Policy, to attract for commercial gain, internet users to its web site or on-line location. Complainant also contends that Respondent has established a pattern of conduct of registering and using domain names in bad faith, referring to the case Internet Billing Co. LLC v. Yu, FA 146944 (Nat. Arb. Forum Apr. 14, 2003). B. Respondent Respondent is operating a website at <motorshop.com>, for used car sale services. Respondent contends that the Mark is generic and also contends that the GUARANTY BANK mark is generic since it is a combination of generic terms “guaranty” and “bank.” Thus it asserts that these are not entitled to trademark protection. Respondent also contends that more than ten other companies are using the generic word “guaranty bank” within their domain names. Respondent contends that he has legitimate interests in the Disputed Domain Name. Respondent asserts that he had registered the Disputed Domain Name before Complainant applied for the registration of trademark. The Disputed Domain Name, <guarantybank.com> was registered on April 15, 2000 whereas Complainant applied for the registration of GUARANTY BANK on October 27, 2000. Respondent asserts that he registered <guarantybank.co.kr> on May 7, 2005, one month before Complainant filed the Complaint. Respondent preliminarily opened a website at the Disputed Domain Name, offering escrow services in connection with the sale of the used cars on its website at <motorshop.com>. Respondent also contends that he did not register the Disputed Domain Name in bad faith. Respondent maintains that he was not aware of Complainant’s mark and corporate name, GUARANTY BANK, when it registered the Disputed Domain Name, because Complainant’s mark is not well known in Korea and Asia. C. Additional Submissions 1) Complainant Complainant contends that Complainant has superior rights in the GUARANTY BANK mark. Complainant contends that it began using the mark GUARANTY BANK mark as early as 1998, two years before Respondent’s registration, and that its GUARANTY BANK mark has become a designation acting to identify and distinguish the goods and services it provides from those of others. Complainant also contends that Respondent has owned the Disputed Domain Name for a period of five years without any legitimate use of the domain name. Complainant contends that Respondent operated the websites at the Disputed Domain Name containing links to competitors or offering the sale of the domain name before the filing of the Complaint, which is evidence that Respondent is not making a legitimate noncommercial or fair use of the domain name. Complainant also asserts that the fact that Respondent, on August 17, 2001, offered to sell the Disputed Domain Name for $45,000 is evidence of Respondent’s bad faith in the registration and use of the Disputed Domain Name. 2) Respondent Respondent maintains that Complainant’s GUARANTY BANK mark is a combination of generic words and is not well known in Korea. Respondent asserts that rights in a mark consisting of generic words should be determined by a race to register a domain name. Respondent also contends that since Respondent planned to use the Disputed Domain Name, he has been disregarding the requests by others to sell the Disputed Domain Name. FINDINGS 1. Complainant and its predecessors have used the word "Guaranty" in its name since 1921 for banking and financial services. In 1988, Complainant changed its name to Guaranty Federal Savings Bank, and in the early 1990s, its name was changed to Guaranty Federal Bank, FSB. By late 1998, Complainant had systematically implemented use of GUARANTY BANK for its lending services in connection with all of its banking services. 2. Complainant obtained registration with the USPTO of the GUARANTY mark on August 20, 1991 as registration Number 1,654,486 in connection with its banking services. 3. Complainant filed for the registration of the GUANRANTY BANK mark with the USPTO on October, 27, 2000 (Ser. No. 76/155,200) 4. On April 15, 2000, Respondent obtained the registration of the Disputed Domain Name, <guarantybank.com>. 5. Respondent offered to sell the Disputed Domain Name to Complainant for $45,000 on August 17, 2001. 6. Respondent has not used the Disputed Domain Name for any purposes until recently. 7. The website at the Disputed Domain Name contained either sponsored or unsponsored links to competitors of Complainant as of June 6, 2005. 8. Respondent operates a website using the domain name of <motorshop.com>. Recently it displayed a banner which, when clicked, connects to a website at the Disputed Domain Name. The website at the Disputed Domain Name explains that it offers escrow services for transactions made on the internet. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Mark For a trademark to be valid, a trademark must be distinctive, that is, capable of identifying one firm’s goods or services and distinguishing them from those of another. The GUARANTY mark was registered on August 20, 1991 as registration Number 1,654,486 by Complainant in the field of banking services. The word “guaranty” is originally descriptive. However, it appears that Complainant has proved that the Mark has been adopted and used in commerce by Complainant in connection with banking services and thus has achieved secondary meaning. In addition, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning in the relevant market place. See Men’s Warehouse, Inc. v Wick, FA 117681(Nat. Arb. Forum Sept. 16, 2002). The fact that more than ten other companies are using the generic words “guaranty bank” within their domain names does not affect the right of the holder of the GUARANTY trademark. Thus, the Mark is entitled to protection. Identical and/or Confusingly Similar The Disputed Domain Name, <guarantybank.com>, consists of two parts, “guaranty” and “bank.” The word “guaranty” is identical to the Mark. The word “bank” attached to “guaranty” just describes the type of service. Since banking is the designated services of the Mark, it does not add a special meaning to the GUARANTY word mark. The addition of a top level domain designation (such as ".com") does not defeat a claim that a domain name is identical to a Complainant's mark. See, e.g., Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000). Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out circumstances, without limitation, which can establish the holder’s rights to or legitimate interests in the domain name. These circumstances are as follows. (i) before any notice to the domain name holder of the dispute, the holder's 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) the domain name holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or (iii) the domain name holder is making a legitimate noncommercial 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. Although Respondent asserts that he prepared for using the Disputed Domain Name by registering <guarantybank.co.kr> and planning to link it to <motorshop.com> operated by him, the registration of <guarantybank.co.kr> and the plan to use the Disputed Domain Name are not sufficient to prove use or demonstrable preparations to use the Disputed Domain Name. In addition, Respondent failed to show that it has been commonly known by the Disputed Domain Name. Respondent operated a website at the Disputed Domain Name for the purpose of selling sponsored links and redirecting Internet users to Complainant’s competitors. Respondent has not made any rebuttal against it. It is hardly recognized as legitimate to use the word "bank" for escrow services; that is different from banking. In addition, as to the escrow services the website of the Disputed Domain Name describes, Respondent has not established or demonstrated that such services have been actually offered or prepared before the notice to Respondent of the present domain dispute. While the overall burden of proof for Policy ¶ 4(a)(ii) rests on Complainant, the failure by Respondent to demonstrate that he comes within Paragraph 4(c) can assist the Panel in deciding whether Complainant has discharged the onus of proof. See Wal-Mart Stores, Inc. v. Stock, D2000-0628 (WIPO Aug.11, 2000). Considering all the statements made and evidence submitted, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Policy ¶ 4(b)(i) provides that, for the purposes of Paragraph 4(a)(iii), if a person who registered a domain name has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name, it shall be evidence of the registration and use of a domain name in bad faith. It is found, by the admission of Respondent and proof, that it offered to sell the Disputed Domain Name to Complainant for $45,000 on August 17, 2001, and it has not made a substantial use of the Disputed Domain Name for the first five years of ownership of the Disputed Domain Name. This proves that Respondent has registered the Disputed Domain Name primarily for the purpose of selling it to Complainant. Even if Respondent was not aware of the Mark and corporate name GUARANTY BANK when it registered the Disputed Domain Name, it does not exclude the application of Policy ¶ 4(b)(i) which provides that any of the above enumerated situations "shall be evidence" of the registration and use of the domain name in bad faith Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION For the reasons set forth above, Complainant, having satisfied all three elements stated in 4(a) of the Policy, has established its prima facie case sufficient to warrant transfer of the contested domain name. Therefore, the Panel concludes that the requested relief should be GRANTED. Accordingly, it is Ordered that the <guarantybank.com> domain name be TRANSFERRED from Respondent to Complainant. Hong Oo Baak, Panelist Dated: August 5, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.