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A D Banker & Company v Domain Invest Case No D2010-1044

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A D Banker & Company v Domain Invest Case No D2010-1044A,D,v,Case,D2010,&,d2010,Amp,case

     ARBITRATION AND MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

    A. D. Banker & Company v. Domain Invest

    Case No. D2010-1044

1. The Parties

    1.1 The Complainant is A. D. Banker & Company, Kansas, United States of America, represented by

    Hovey Williams LLP, United States of America.

    1.2 The Respondent is Domain Invest, Luxembourg, represented by Law.es, Spain.

2. The Domain Name and Registrar

    2.1 The disputed domain name <adbankers.com> (the “Domain Name”) is registered with Fabulous.com.

    (the “Registrar”)

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on

    June 23, 2010. On June 24, 2010, the Center transmitted by email to the Registrar a request for

    registrar verification in connection with the Domain Name. On June 25, 2010, Fabulous.com

    transmitted by email to the Center its verification response confirming that the 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”).

    3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent

    of the Complaint, and the proceedings commenced on June 29, 2010. In accordance with the Rules,

    paragraph 5(a), the due date for Response was July 19, 2010. The Response was filed with the

    Center on July 19, 2010 and a corrected form of the Response was filed later that day.

3.3 On August 16, 2010 the Complainant filed a “Request for Further Statement” in order to rebut factual

    allegations in the Response that the Complainant contended it could not have been expected to

    anticipate in the Complaint. The following day the Respondent‟s representative objected by email to

    the Complainant‟s filing, asserting that no excuse had been provided by the Complainant for the 26

    day delay between the filing of the Response and the filing of the “Request”.

    page 2

    3.4 The Center appointed Matthew S. Harris, Debra J. Stanek and Diane Cabell as panelists in this matter

    on September 2, 2010. The Panel finds that it was properly constituted. Each member of 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.

    3.5 On September 10, 2010, the Panel, having reviewed the case file, issued a Procedural Order, a copy

    of which is at Annex A to this decision. Pursuant to that Procedural Order, the Complainant filed a

    further submission on September 17, 2010. The Respondent also filed a further submission on Friday

    September 24, 2010. Exhibits which were inadvertently left out from the Respondent‟s further

    submission were filed by the Respondent on Monday September 27, 2010. The question of the

    admissibility of those submissions and exhibits is addressed in greater detail later on in this decision.

4. Factual Background

    4.1 The Complainant is a Kansas limited liability Company, that offers courses, training and workshops in

    the field of insurance. It (or more likely its predecessor in business) has used the terms “A. D. Banker”

    and “A. D. Banker & Company” in the United States since 1982. It has offered its goods and services

    online from a website operating from the <adbanker.com> domain name since 1998.

4.2 The Complainant is the owner of the following U.S. registered trade marks:

    (i) Registration No. 1351051 for the word mark A.D. BANKER in class 41 for educational services

    filed on September 17, 1984;

    (ii) Registration No. 1686820 for the word mark A. D. BANKER & COMPANY in class 41 for

    educational services filed on April 1, 1991;

    4.3 The Complainant acquired these marks by assignment in 1997 from a partnership trading using the A.

    D Banker & Company name.

    4.4 The Respondent goes by the name of “Domain Invest”. This appears to be either the trading name or

    previous name of DI SA, a Luxembourg company.

    4.5 WhoIs details for the Domain Name record that the Domain Name was first registered on

    August 22, 2000.

    4.6 Historic WhoIs records also record that as at the April 27, 2010 the Domain Name was registered in

    the name of WhoIs Privacy Services. As at June 22, 2010 Domain Name details had changed so as

    to record the Respondent as the registrant. The WhoIs record for that date also states that the record

    had last been modified on June 21, 2010.

    4.7 As at June 22, 2010 the Website that appeared to be operating from the Domain Name was generated

    by a pay-per-click or domain name parking service. The searches displayed on the page were as

    follows:

    Under the heading “Most Popular”:

    Insurance Continuing Education

    Online Checking

    Insurance Classes

    Insurance

    Bank Account

    Internet Banking

    Continuing Education

    page 3

    Online Banking

    Under the heading “Popular Categories”:

    Ing

    Banks

    Ad Banker

    Apartment or Rent

    Register

4.8 The meta data for that page also included references to “ad banker” and “Ad Banker”.

4.9 If the term “Ad Banker” was clicked upon, the following sponsored listing would be displayed:

    Ad Banker Insurance School

    Personalized Financial Advertising Tools

    Cheap Insurance

    Hondros College Ohio Insurance Courses

    Ad Banker Insurance

    4.10 None of these sponsored listings linked to websites operated or authorised by the Complainant.

    4.11 A few days later the registrant of the Domain Name recorded in the WhoIs appears to have changed

    to record “DI S.A.” as the registrant.

    4.12 More recently the nature of the searches appearing on the website operating from the Domain Name

    has changed. The references to “Ad Banker” and “education” related searches appear to have been

    removed. For example, as at July 12, 2010, the searches that appeared under the heading “Most

    Popular” were as follows:

    The Banker

    Internet Marketing Online

    Internet Marketing Services

    Pop Displays

    Marketing and Advertising

    Online Marketing Services

    Search Engine Marketing Company

    Digital Marketing

4.13 The Respondent had been a party to previous proceedings under the Policy; i.e. GoFit LLC v. Dom

    Administration, DI S.A. and International Services Company SA, WIPO Case No. D2010-0367. The

    three person panel in that case found in the Respondent‟s favour.

5. Parties’ Contentions

A. Complaint

    5.1 The Complainant refers to its two United States trade mark registrations and asserts that the Domain

    Name is identical or confusingly similar to those marks.

    5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the Domain

    Name contending that none of the examples of rights or legitimate interests provided by the Policy

    apply. Instead, it asserts that the Respondent is attempting to profit from the Domain Name by

    misleading or diverting consumers to the websites of commercial rivals of the Complainant.

    page 4

    5.3 The Complainant contends that the Respondent knew or should have known of the Complainant‟s

    registered trade marks when it registered the Domain Name. It maintains that the website operating

    from the Domain Name as at June 22, 2010 shows that the Respondent has intentionally attempted to

    attract for commercial gain Internet users to its website by creating a likelihood of confusion with the

    Complainant‟s marks. Particularly complaint is made about the fact that if an Internet user clicks on

    the “Ad Banker” the website displays a page of links to the Complainant‟s competitors.

    5.4 The Complainant also claims that the Respondent has failed to make good faith use of the Domain

    Name for a substantial period of ti