Satoshi Shimoshita is a Japanese domain investor with a large domain portfolio.
Webster Financial Corporation filed a UDRP against his domain, HSBank.com, which was registered in 2001, seeking its transfer.
The Complainant provides business and consumer banking, mortgage, insurance, trust, investment and other financial services.
According to the UDRP, “since at least as early as December 10, 2003, Complainant, through its licensee and predecessor in interest, has used the mark HSA BANK in connection with its financial services. HSA Bank is one of the largest administrators of health savings accounts in the U.S., with over 265,000 active accounts, over $730 million in HSA funds in custody, and over $75 million in brokerage investments. HSA Bank provides its services through the U.S. and its territories.”
Satoshi Shimoshita’s attorney responded thus:
“Respondent asserts that Complainant’s “claims are baseless and the Complainant has abused this administrative process in an attempt to rob the Respondent of not just a domain name which is entirely descriptive, but a domain name which was registered sixteen years before the Complainant accrued trademark rights or even began using the Mark. In addition, the domain hsbank.com is not confusingly similar to the mark HSA BANK and the Complainant’s claims are barred by laches.”
Respondent notes that he registered the domain name in 2001, and intended to eventually offer retail banking services at the hsbank.com site. Thus, he emphasizes, it is undisputed that the domain name in issue was registered before the Complainant ever used its HSA BANK mark, let alone accrued trademark rights. “This fact alone,” Respondent asserts, “is dispositive in this case….”
In his further statements, the Japanese domain investor sought a finding of Reverse Domain Name Hijacking, something that was granted in a previous UDRP against his domain MoonJuice.com.
Jeffrey M. Samuels, sole panelist at the National Arbitration Forum, declined a finding of RDNH, however, he also denied the transfer request of the domain to the Complainant on the following basis:
“The Panel concludes that Complainant has not sustained its burden of establishing that the disputed domain name was registered in bad faith and, thus, determines that this element of the Policy has not been established. It is not disputed that the domain name in issue was first registered by Respondent on December 10, 2001. This is two years prior to the earliest date of first use of the HSA BANK mark.”
In the end, Satoshi Shimoshita should be happy, having prevailed against a banking Goliath, who will hopefully now pay a fair price to acquire the domain name.
For the full text of this UDRP for the domain HSBank.com, click here.
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