Two #Pioneer banks fight it out over the restricted #domain Pioneer.Bank

Two banks, Pioneer Bank of New Mexico, and Pioneer Bank, SSB, are fighting over the domain name Pioneer.Bank.

The first bank filed a UDRP claiming that the domain was allocated to the Respondent by the dot .Bank registry during the sunrise period, based on a pending Benelux mark. That trademark thus passed the Trademark Clearinghouse process and allocated the domain to Pioneer Bank, SSB. The Complainant has a federal trademark for PIONEER BANK.

The domain was allocated in 2015; as of 2019, the Respondent has $1.7 billion dollars in assets.

During the UDRP exchange, the Complainant asserted that the Respondent’s trademark is issued in a country where the Respondent has no activity. In turn, the Respondent asserted that the PIONEER BANK mark is enforceable only in New Mexico – a claim that makes no sense as it’s a federal trademark.

A three member panel stated that the Complainant should have taken the matter with the dot .Bank Registry back in 2015, and that they didn’t do so during the 90 day window:

“This Complaint is fundamentally misguided.  The Complainant’s main objection appears to be that fTLD improperly allowed the Respondent to register the domain name during the sunrise period.  fTLD specifically promulgated a Sunrise Dispute Resolution Policy (the “SDRP”) for any such objections.  See https://www.ftld.com/docs/fTLD-Sunrise-Dispute-Resolution-Policy-BANK-20150316.pdf.  Under the SDRP, any objections to sunrise registrations had to be filed no later than September 14, 2015.  The Complainant does not explain why it failed to file an objection under the SDRP, nor does it explain why it waited more than four years to file this Complaint.”

Final decision: Deny transfer of the domain name Pioneer.Bank to the Complainant. Full details follow:

Pioneer Bank v. Pioneer Bank, SSB

Claim Number: FA2001001879093

PARTIES

The Complainant is Pioneer Bank (“Complainant”), represented by Juliana Halvorson, New Mexico, USA. The Respondent is Pioneer Bank, SSB (“Respondent”), represented by William D. Wiese, Esq., DUBOIS, BRYANT & CAMPBELL, L.L.P., Texas, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pioneer.bank>, registered with SafeNames Ltd.

PANEL

The undersigned each certify that he has acted independently and impartially and that, to the best of his knowledge, he has no known conflict in serving as a Panelist in this proceeding.

Douglas M. Isenberg and the Hon. Neil Anthony Brown, QC, as Panelists and David H. Bernstein as Presiding Panelist.

PROCEDURAL HISTORY

The Complainant submitted a Complaint to the Forum electronically on January 15, 2020; the Forum received payment on January 15, 2020. The Complainant named as respondents Pioneer Bank, SSB as well as .BANK Domains and Chris Millette, presumably because those names were listed in the WHOIS information for the disputed domain name.

On January 17, 2020, SafeNames Ltd. confirmed by e-mail to the Forum that the <pioneer.bank> domain name is registered with SafeNames Ltd. and that the Registrant, technical and billing contacts are “ Pioneer Bank, SSB – .BANK Domains, Chris Millette.” The Panel understands this to mean that Pioneer Bank, SSB is the registrant of the domain name, and that the other names are technical and billing contacts. SafeNames Ltd. has verified that the Respondent is bound by the SafeNames Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2020 by which the Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on the Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pioneer.bank. Also on January 20, 2020, the Written Notice of the Complaint, notifying the Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to the Respondent via post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on February 5, 2020. The Respondent confirmed in the Response that its name is Pioneer Bank, SSB.

The Complainant filed an Additional Submission to the Forum on February 12, 2020.

On February 20, 2020, pursuant to the Respondent’s request to have the dispute decided by a three-member panel, the Forum appointed Douglas M. Isenberg and the Hon. Neil Anthony Brown QC, as Panelists and David H. Bernstein as the Presiding Panelist in this matter.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to the Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

FACTUAL BACKGROUND

The Complainant, Pioneer Bank, provides financial services in the State of New Mexico. The Complainant owns two United States federal registrations containing the words “Pioneer Bank”, including United States Trademark Registration No. 4,870,302 for the word mark PIONEER BANK, filed on April 27, 2015 with a claimed date of first use of September 30, 1976. This registration was issued on December 15, 2015.

The Respondent, Pioneer Bank SSB, has been a financial services provider in Texas since 2007. It registered the mark PIONEER BANK with the Benelux Office of Intellectual Property on June 5, 2015 (Registration Number 0976250) and registered the disputed domain name on June 15, 2015.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant’s main allegation is that the Respondent was improperly permitted to register <pioneer.bank> during the sunrise period for .bank domain names because the Respondent did not own a valid trademark registration at the time it registered the disputed domain name. The totality of the Complainant’s substantive allegations is as follows:

The domain, <pioneer.bank> is confusing our customers as we are also Pioneer Bank. We own the US Federal Trademark in the country and state (New Mexico) in which we conduct business. The bank that was allowed to register pioneer.bank is in Texas, a neighboring state that is geographically close to our headquarters. Our registration numbers with the USPTO are (Word Mark) 4,870,302 and (Design Mark) 4,802,667.

Registration with the Trademark Clearinghouse clearly states that registrations under public opposition are not eligible for registration with the Clearinghouse (see Annex 8). They were allowed to register within the sunrise period although they were in trademark review in a country they have no business dealings.

The sunrise registration for <pioneer.bank> is invalid due to the wrongly obtained registration through the Trademark Clearinghouse.

Pioneer Bank, of Roswell, New Mexico would like to dispute the registration of <pioneer.bank>. The Trademark Clearinghouse incorrectly authorized the trademark for Pioneer Bank SSB, located at 623 W. 38th St., Austin, Texas. Therefore, the bank should not have been allowed to register during the sunrise period.

We have two grounds in which to dispute this authorization:

1. Resp[o]ndent’s Benelux trademark was still in the public opposition period (which ended August 8, 2015) and was not a valid/completed trademark as it was not in full force and effect. The rules clearly stated the trademark must have been completed. It appears Pioneer Bank of Texas falsely represented their trademark registration and they are not a legitimate Trademark Holder and were not eligible for the sunrise registration. Their Trademark Record was not complete, and they could not have submitted an accurate record to the Clearinghouse as they were in the public opposition period. We, too, had a trademark application pending in the United States (SN 86455194) which has been awarded. Pioneer Bank of Texas is now infringing on our US Federal Trademark.

2. On information and belief, Pioneer Bank of Texas is not licensed to operate in any Benelux country (Belgium, Netherlands, and Luxembourg). The Trademark Clearinghouse accepted a proof-of-use declaration and specimen that is not based on bona-fide use in the jurisdiction of the registered trademark.

B. Respondent

The Respondent concedes that the second-level domain “pioneer” along with the top-level domain “bank” in the disputed domain name is identical to the Complainant’s mark. The Respondent notes, though, that the Complainant’s rights should be geographically limited to New Mexico and afforded narrow protection.

The Respondent argues that it is commonly known by the domain name in Texas and notes that two businesses may operate in geographical proximity without causing a likelihood of confusion. At the minimum, the Respondent argues, it has strong common law trademark rights by virtue of its use of the PIONEER BANK trademark in Texas. The Respondent notes that it has operated continuously under the name Pioneer Bank since opening on May 14, 2007, had $1.7 billion in assets as of September 30, 2019, and has used the <pioneer.bank> domain name as an integral part of its business since the domain name’s acquisition. Among other things, the Respondent has listed the domain name on marketing materials and uses it as a means for customers to access their accounts online.

Lastly, the Respondent asserts that it did not acquire the domain name to disrupt the Complainant’s business, prevent it from reflecting the mark in a corresponding domain name, or to intentionally attract internet users to the domain name by creating a likelihood of confusion with the Complainant’s mark. Instead, the Respondent asserts, it registered the domain name in 2015 for use with its financial services business and continues to utilize it for that purpose today.

C. Additional Submission

In its Additional Submission, the Complainant makes several additional arguments:

First, it alleges that its federal registration gives it nationwide rights and that the Respondent is therefore infringing the Complainant’s trademark rights. In particular, the Complainant states:

Respondent is in violation of the US Trademark law by continuing to utilize the name, PIONEER BANK. This complaint is not to prevent Respondent from using PIONEER BANK, but from using pioneer.bank. Respondent does not own the trademark in the United States – where they conduct business. US Federal Trademark protects Complainant’s commercial identity nationwide, not just in New Mexico. Having a Federal Trademark provides Complainant with a higher degree of protection. Relatedly, the Complainant states that the Respondent does not own any rights to the Pioneer Bank trademark in the United States.

Second, the Complainant asserts that, in 2015, it contacted fTLD Registry Services, LLC (“fTLD”), which operates the .bank registry, to object to the Respondent’s allegedly improper registration, but fTLD informed the Complainant there was no recourse for an improper sunrise registration. In particular, the Complainant states:

Complainant did contact the fTLD in 2015 when the Sunrise Period for Domain Registration for .bank domains was completed. They informed Complainant they did allow Respondent to register in the Sunrise Period without actually checking if they owned a trademark. The fTLD informed the Complainant there was no recourse – thus the need for the UDRP.

Lastly, the Complainant articulated the basis for its argument that the Respondent registered and used the disputed domain name in bad faith argument:

Respondent did register pioneer.bank in bad faith. Claiming to own a trademark in Benelux. Respondent registered in Benelux knowing they could not obtain the US Federal Trademark. As of this notice, upon a search for Benelux trademarks, Complainant was unable to find Respondent’s trademark. If Respondent does not even own a trademark, they should never have been allowed to register <pioneer.bank> in the Sunrise Period. This denies them a bona fide right to the domain. Complainant is not disputing the Respondent’s trademark by the Benelux Office of Intellectual Property (“BOIP”) as Complainant does not conduct business in those countries

PROCEDURAL RULINGS

First, the Panel sua sponte notes that the Complainant named .BANK Domains and Chris Millette as additional respondents. As explained above, those parties appear to be the technical and billing contacts for the disputed domain name, rather than the registrant. Because the Panel has found that Pioneer Bank, SSB is the sole owner of the disputed domain name, the Panel dismisses the Complaint to the extent it was brought against .BANK Domains and Chris Millette.

Second, the Panel has decided to disregard the Complainant’s supplemental submission. Although Supplemental Rule 7 provides a mechanism for the filing of supplemental submissions, under the Rules, the Panel has the direction to decide whether to accept additional submissions. See generally Bar Products.com, Inc. v. RegisterFly.com, FA 829161 (Forum Jan. 9, 2007) (declining to consider complainant’s reply because it added nothing of substance to the record and did not address any arguments of respondent that could not have been anticipated by complainant). Here, the Complainant’s additional submission is merely responsive and fails to address any legal or factual matters that could not have been raised in the Complaint. As such, the Panel has decided to disregard the additional submission. The Panel notes that, even if it had considered the assertions in the additional submission, the outcome of the proceeding would remain the same.

FINDINGS

The Panel finds that the disputed domain name is identical to the Complainant’s mark, but the Complainant has failed to prove that the Respondent lacks rights or legitimate interests in the domain name or that the Respondent registered and is used the domain name in bad faith.

DISCUSSION

This Complaint is fundamentally misguided. The Complainant’s main objection appears to be that fTLD improperly allowed the Respondent to register the domain name during the sunrise period. fTLD specifically promulgated a Sunrise Dispute Resolution Policy (the “SDRP”) for any such objections. See https://www.ftld.com/docs/fTLD-Sunrise-Dispute-Resolution-Policy-BANK-20150316.pdf. Under the SDRP, any objections to sunrise registrations had to be filed no later than September 14, 2015. The Complainant does not explain why it failed to file an objection under the SDRP, nor does it explain why it waited more than four years to file this Complaint.

Given that the Complainant is no longer permitted to file an objection under the SDRP, it has elected to file a challenge under the UDRP. The UDRP is not, however, an appropriate vehicle for challenging the validity of a .bank sunrise registration, let alone all allegations of misconduct related to domain names. Thread.com, LLC v. Poploff, WIPO Case No. D2000-1470 (“This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting.”).

To prevail under the UDRP, the Complainant must prove each of the following three elements:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

See Paragraph 4(a) of the Policy. Under Paragraph 15(a) of the Rules, the Panel is instructed to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Identical and/or Confusingly Similar

The parties do not dispute that the Complainant has established trademark rights in the term PIONEER BANK by virtue, inter alia, of its federal registration. Nor do the parties dispute that the disputed domain name (considering both the second level domain “pioneer” and the generic top-level domain “bank”) is identical to that trademark. Although panels previously noted that the top-level domain should be disregarded when assessing the similarity of a domain name to a trademark, with the expansion of the domain name system, it is now well-accepted that top-level domains may be relevant to the similarly assessment. See generally WIPO Jurisprudential Overview 3.0, Paragraph 1.11.3 (“Where the applicable TLD and the second-level portion of the domain name in combination contain the relevant trademark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity”).

The Respondent’s comments about the geographic limitations of the Complainant’s mark are irrelevant to the assessment of this element. For purposes of the first factor, the Complainant need only show trademark rights somewhere. The Complainant’s federal registration is proof of its trademark rights, even if the Respondent may have concurrent rights in its geographic area of use (an issue that is beyond the scope of this proceeding).

The Panel finds that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

The Complainant baldly asserts that the Respondent has no rights or legitimate interests in the disputed domain name, claiming that the Respondent wrongly registered the disputed domain name during the sunset registration period. As noted above, though, disputes over sunset registrations are not cognizable through the UDRP. Rather, the question under the UDRP is whether the Respondent has some rights or legitimate interests in the dispute domain name.

Although the Complainant asserts that the Respondent is infringing its trademark rights (which might be a basis for a finding that the Respondent lacks rights or legitimate interests for purposes of the UDRP, see Schouten Industries B.V. and Schouten Products B.V. v. Canadian Soylife Health Co. Ltd., FA 149188 (Forum July 19, 2003)), the Complainant fails to substantiate that bald allegation. On the contrary, the Complainant essentially acknowledges that the Respondent operates a bank in the neighboring State of Texas. That concession, coupled with the Complainant’s apparent failure to take any action against the Respondent’s use of PIONEER BANK during the past dozen years of coexistence, eviscerates the Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain name.

Moreover, the Respondent provides a fulsome record to prove its rights. The Respondent has used the name Pioneer Bank since 2007 in Texas and has $1.7 billion in assets. These facts support the Respondent’s assertions that it is making a bona fide use of the PIONEER BANK trademark in Texas. See Summit Financial Group, Inc. v. Brian Elkin/ Summit National Bank, FA 1728951 (Forum Jun. 8, 2017) (respondent’s offering banking services for over a decade along with its claims of thousands of account holders and millions of dollars in assets were evidence of its legitimate business offered under its mark).

The Complainant also notes that the Respondent has a trademark registration in the BOIP. Although the Complainant suggests that the Benelux registration is invalid, the Complainant indicates that it has not sought cancellation of the Respondent’s Benelux trademark registration in the BOIP. The Complainant’s assertion that the Respondent has not used the trademark in Belgium, the Netherlands or Luxembourg is not a basis for a finding by this Panel that the Benelux registration is invalid, especially since, unlike the United States, prior use is not a prerequisite for obtaining a Benelux registration (though such registration may be subject to cancellation if the mark is not used within five years of registration, see generally https://www.boip.int/en/entrepreneurs/trademarks/initiate-a-cancellation-procedure; the Panel notes that the window for filing a nonuse challenge has not yet opened since the Benelux registration was obtained in June 2015). The Respondent’s Benelux trademark registration is thus further evidence of its rights or legitimate interests in the disputed domain name.

The Panel concludes that the Complainant has not satisfied the requirements of paragraph 4(a)(ii).

Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides four non-exclusive circumstances that, if found present by the Panel, are evidence of bad faith registration and use of a domain name:

(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The only allegation of bad faith in the Complaint is that the Respondent improperly registered the disputed domain name during the sunrise period by misrepresenting the nature of its trademark rights. As noted above, though, any such challenge should have been brought under the SDRP.

Had the Complainant proven that the sunrise registration was improper (which it has not done), the Panel might have considered whether the registration of the domain name was done in bad faith. The Panel need not consider that issue, though, because the Complainant has, in any event, failed to provide any evidence whatsoever of bad faith use of the disputed domain name.

To the contrary, the evidence before the Panel suggests that the Respondent is using the dispute domain name in good faith to promote its business and to provide financial services to its customers. There is no evidence before the Panel that the Respondent registered the disputed domain name for the purposes of selling it to the Complainant or to prevent the Complainant from registering a domain name containing its trademark, nor is there any evidence before the Panel that the Respondent has used the disputed domain name to disrupt the Complainant’s business or to cause confusion.

The Panel finds that the Disputed Domain Name has not been registered and used in bad faith in violation of paragraph 4(a)(iii) of the Policy.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <pioneer.bank> domain name REMAIN WITH the Respondent.

David H. Bernstein, Presiding Panelist

Douglas M. Isenberg, Panelist

The Hon. Neil Anthony Brown, QC, as Panelist

Dated: March 3, 2020

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