Bank tries to get domain registered years before it gets trademark

Success Bank, an Iowa bank, should stick to the banking business.

The company failed at arbitration to get the domain name SuccessBank.com from its owner, who registered the domain name in 2003. The bank changed its name to Success Bank only in 2007, at which point it filed a trademark for the term. The trademark was granted in 2008. Success Bank uses the inferior domain SuccessBank.Net.

If you register a domain before another company obtains a trademark, it is impossible for the trademark holder to prove that the domain was “registered and used in bad faith”, as required under UDRP.

In his typical wit, the respondent’s attorney John Berryhill noted to the arbitration panel:

The Complainant’s proposition here is that the Respondent has such powerful psychic ability as to be able to predict, in October 2003, that the Davis County Savings Bank of Iowa would change its name to “Success Bank” in December 2007. The Respondent denies such psychic powers.

The panel found that the domain wasn’t registered and used in bad faith, and that Success Bank didn’t establish a prima facie case that the respondent lacked rights or legitimate interests in the domain name.

For some reason the panel didn’t address the issue of reverse domain name hijacking. But its decision does note that Success Bank’s argument in the case was extreme:

The Complainant relies on the argument that once a complainant shows good title in a mark, the burden shifts to Respondent to defend use and bad faith. Complainant seeks to stretch that argument to the extreme. While Complainant has some rights in the SUCCESS BANK mark, those rights are years junior to the rights of Respondent due to registration of the domain. To hold for Complainant would be to say that one could peruse the lightly used or parked domains, initiate a trademark registration application years after the a disputed domain name was registered and then claim UDRP rights in the domain under the first element of the UDRP.