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.

Glenn Beck loses challenge to parody web site

[Update: after winning the case, the domain owner has voluntarily given the domain to Beck and reopened the site elsewhere.] Conservative TV personality Glenn Beck has lost his dispute over the domain name glennbeckrapedandmurderedayounggirlin1990.com. (See Domain Owner Responds to Glenn Beck.)

In order to win the domain name, Beck had to prove three things to an arbitrator:

1. The domain name was confusingly similar to Beck’s mark, i.e. Glenn Beck

2. The domain’s registrant did not have rights or legitimate interests in the domain name

3. The domain was registered and used in bad faith

The arbitrator for the case, Frederick M. Abbott, decided that the domain name was confusingly similar to the Glenn Beck mark, although he explained in detail how some panelists may think otherwise. But it didn’t ultimately matter, as Abbott found that the registrant did have legitimate interests in the domain:

Respondent appears to the Panel to be engaged in a parody of the style or methodology that Respondent appears genuinely to believe is employed by Complainant in the provision of political commentary, and for that reason Respondent can be said to be making a political statement. This constitutes a legitimate non-commercial use of Complainant’s mark under the Policy.

Because the second element of the UDRP wasn’t met, Abbott decided to not issue a ruling on the third element. But he also noted that it is unlikely the complainant would have prevailed on the issue of registration in bad faith anyway.

Abbott noted that whether or not the web site is defamatory could be an issue for the courts.