Washington Mutual, Inc. and WM Financial Services, Inc.
Bryan Weatherup d/b/a Weatherup & McIntosh Financial Services
[Indexed as: Washington Mutual, Inc. v. Weatherup]
[Indexed as: wmfinancialservices.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO D2000-0176
Commenced: March 24, 2000
Judgment: May 11, 2000
Presiding Panelist: Clark W. Lackert
Domain name - Domain name dispute resolution policy - No response filed within time limit- Common law rights - US Trademark application - US Service mark application - Attempt to confuse and mislead - Bath faith registration - Bad faith use.
Complainant is composed of corporations with common law rights and trademark applications in "WM Financial Services" in relation to various financial services. Respondent registered the domain name wmfinancialservices.com and offered to sell the domain name to the highest bidder. Correspondence relating to the sale of the domain name asserts a connection between Respondent and Complainant.
Complainant alleged that Respondent registered the domain name for the purpose of financial gain without having used or having intended to use the domain name in connection with a bona fide offering of goods or services, and that Respondent registered and used the domain name in bad faith. Respondent did not file a response within the time limit.
Held, Name should be transferred.
Complainant must show domain name is identical or confusingly similar to trademark; Respondent has no rights or legitimate interest in respect of domain name; and domain name has been registered and is being used in bad faith by Respondent.
Complainant's assertion of rights at common law as well as through application to register the service mark are sufficient to prove service mark rights. There is no proof of any rights or legitimate interest of Respondent. Bad faith is shown by Respondent's offering to sell domain name to highest bidder on its website.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Lackert, Panelist: --
1. The Parties
1.1 Complainants are Washington Mutual, Inc. and WM Financial Services, Inc., corporations organized under the laws of the State of Washington, U.S.A. (collectively referred to as "Complainant"). Respondent is Bryan Weatherup, an individual residing in California. Complainant is represented by counsel, Foster Pepper & Shefelman PC, Seattle, Washington.
2. The Domain Name and Registrar
2.1 The domain name which is the subject of this proceeding is "wmfinancialservices.com" owned by Bryan Weatherup d/b/a Weatherup & McIntosh Financial Services. The domain name is registered with Network Solutions, Inc., Herndon, Virginia, USA.
3. Procedural History
3.1 A Complaint was submitted to the WIPO Arbitration and Mediation Center ("WIPO") pursuant to the Uniform Domain Name Dispute Resolution Policy ("Policy") on March 17, 2000.
3.2 On March 23, 2000, a Request for Registrar Verification was sent to Network Solutions, Inc. which issued its verification on March 24, 2000.
3.3 The Notification of Complaint was sent from WIPO to Respondents by e-mail, courier, and facsimile on March 24, 2000.
3.4 Since no Response was filed within the time limit pursuant to Rule 5(a), a Notification of Respondent Default was sent on April 13, 2000.
3.5 The Notification of Appointment of an Administrative Panel ("Panel") was sent on April 19, 2000, thus commencing this administrative proceeding.
3.6 A Rule 12 Request was issued by the Panel on April 24, 2000 and such request was duly answered on May 8, 2000.
4. Factual Background
4.1 Since Respondent has not filed a Response within the requisite time period, the dispute shall be decided upon the allegations in the Complaint. (Rule 5(d); Rule 10(d); Rule 14(b)).
4.2 WMI is a financial services holding company headquartered in Seattle, Washington, with operations in many states, including California, Oregon, Idaho, Florida, Texas, Utah and Washington. WMI provides a diversified line of products and services to consumers and small to mid-sized businesses, including consumer and commercial banking services, mortgage banking, securities brokerage, mutual fund management, property/casualty and life insurance sales, underwriting for insurance annuities and a variety of financial services. WM Financial Services, Inc., a subsidiary of WMI, is a licensed securities broker-dealer providing a variety of these financial services, including mutual funds, variable and fixed annuities and general securities. WM Financial Services and its predecessor have offered these services for over a century.
4.3 Complainant has common law rights in the distinctive word and stylized trademark WM FINANCIAL SERVICES in connection with the provision of the financial services listed above. WM Financial Services has engaged in continuous, substantial and exclusive use of these trademarks since at least July 1997. WM Financial Services has promoted the trademarks extensively in marketing and advertising materials distributed in several states (including California, Respondent's residence) through print, broadcast and cable media, as well as on the Internet. These trademarks are widely recognized as representing WMI and WM Financial Services, Inc.'s reputation for and history of trustworthiness and top-quality service. WMI owns the following United States Trademark Applications:
(a) WM FINANCIAL SERVICES
Serial No.: 75/373,844
Filing Date: October 16, 1997
First Use: July 15, 1997
Services: Investment brokerage, consultation and management; securities brokerage; financial portfolio management; financial planning
(b) WM FINANCIAL SERVICES, INC.
Serial No.: 75/377,675
Filing Date: October 22, 1997
First Use: July 15, 1997
Services: Investment brokerage, consultation and management; securities brokerage; financial portfolio management; financial planning (collectively, the "WM Financial Services Marks").
4.4 WMI is in the process of implementing an advanced electronic-commerce strategy to enhance its customers' personalized banking experience. Evidencing the significance of WMI's Internet strategy to its overall operations is the fact that the company is currently adding approximately 1,200 new Internet banking customers each day.
5. Parties' Contentions
5.1 Respondent is not a licensee of Complainant; is not otherwise authorized to use Complainant's WM Financial Services Marks; is not the owner of any federally registered or common law trademarks containing the term WM FINANCIAL SERVICES in whole or in part; and the Domain Name does not consist of Respondent's legal name. Respondent does not provide financial services or conduct legitimate business of any kind in connection with the Domain Name. In other words, Respondent has no intellectual property rights in the Domain Name. Instead, Respondent registered and acquired the wmfinancialservices.com domain name which is confusingly similar to the WM Financial Services marks for the purpose of financial gain without having used or having intended to use the Domain Name in connection with a bona fide offering of goods and/or services.
5.2 The Domain Name has never been used by Respondent in association with any legitimate website or online presence. Instead, the only "business" being conducted in connection with the Domain Name concerns the offers to sell the Domain Name itself. In fact, Respondent has admitted to WM Financial Services, Inc. that there is no business operating in association with the Domain Name.
5.3 In response to inquiries solicited by Respondent's offer of sale, Respondent has provided and is continuing to provide information relating to the potential purchase of the Domain Name. This correspondence wrongfully and misleadingly asserts the existence of a connection between Respondent, or Respondent's website, and WM Financial Services, Inc., and WMI. Respondent is engaged not only in the attempt to traffic in domain names with the bad faith intent to profit, but also in the deliberate attempt to confuse and mislead the public into believing that the company operating the website associated with the domain name, wmfinancialservices.com, either is, or is affiliated with, WM Financial Services, Inc., and WMI. All of these facts indicate Respondent abusively registered the Domain Name, and has used, and is continuing to use, the Domain Name in bad faith.
5.4 Respondent's use of wmfinancialservices.com and the WM FINANCIAL SERVICES trademarks is deceptive and confusing. It creates the false and misleading impression that there is a connection between Respondent and Complainant, or between Complainant and the offer of sale displayed at wmfinancialservices.com and anywhere else Respondent extends his offer of sale. The misleading effects of Respondent's wrongful conduct are plain from the fact that several confused consumers seeking to do business with WM Financial Services have inadvertently submitted inquiries to Respondent.
5.5 Respondent represented to WM Financial Services that he and some college friends have registered approximately 50 domain names under circumstances similar to those described above. In addition, Respondent has not only registered numerous domain names for the apparent purpose of selling them at a profit to trademark owners, but Respondent also has obtained a variety of different "handles" (identification numbers that are assigned to domain name owners upon applying for and registering domain names), indicating an intentional failure to maintain accurate contact information. Respondent has obtained this variety of handles by using name variations with each new domain name application and registration he submits.
5.6 Complainants have made numerous demands orally and in writing that Respondent cease and desist his unlawful use of the Domain Name. Despite Complainant's repeated demands, Respondent has refused to cease his abusive conduct.
5.7 Respondent is in default and has not filed a Response to the Complaint. He did send an e-mail dated April 19, 2000 which stated "This has been a very trying issue for me and for my life. I have spent a lot of time finding ways to keep this domain, however I am not a lawyer and cannot afford to fight against Washington Mutual Bank.".
6. Discussion and Findings
6.1 Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) 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 Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.
6.2 Complainant has asserted rights in the service mark WM FINANCIAL SERVICES, both at common law as well as through applications to register the service mark in the U.S. Patent and Trademark Office. The Panel finds that the service mark and the domain name are identical, and that the Complainant has asserted and proven service mark rights in such term. Accordingly, the Panel finds that the Complainant has the requisite rights to object pursuant to Policy 4(a)(i).
6.3 There is no proof in the record of rights or legitimate interests of Respondent pursuant to Policy 4(c). Accordingly, the panel finds that Complainant has met its burden of proof concerning Policy 4(a)(ii).
6.4 The last element in the proceeding is bad faith. Policy 4(b)(i) states "circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name" shall be evidence of the registration and use of a domain name in bad faith. In this proceeding, the record indicates that Respondent offered to sell the domain name to the highest bidder on its website and has registered other parties' trademarks as domain names. Moreover, Respondent entered in negotiations with Complainant to sell the domain name for a profit, but these negotiations were discontinued. Accordingly, the Panel finds that Respondent registered and is using the domain names in bad faith pursuant to Policy 4(a)(iii).
7.1 The Panel decides that the domain name "wmfinancialservices.com" is identical or confusingly similar to the service mark of Complainant, that Respondent has no rights or legitimate interests in such domain name, and that the domain name in issue has been registered and is being used in bad faith.
7.2 The Panel hereby orders that the registration of the domain name "wmfinancialservices.com" be transferred to Complainant
Washington Mutual, Inc.
Clark W. Lackert
Dated: May 11, 2000
Domain Name Transferred