Did “Netbank” lie, or was it just inept in this UDRP?
Friday, September 14th, 2012
A quick look at archives disproves a UDRP complainant’s statement.
UDRP complainants and their lawyers make all sorts of claims when filing UDRPs. Sometimes they make assertions that are false, and sometimes these are honest mistakes. But at what point does it become deliberate? And at what point does not using freely available tools to verify complaints become problematic?
Take the decision just handed down by WIPO against NetBank for the domain name bancanet.com.
(I should note that I’m not sure exactly who the complainant, identified as Netbank Inc, is. You’ll recall that NetBank was an early internet bank that was shut down by regulators in 2007. Netbank.com now forwards to another bank, but that bank is located in San Diego while the complainant in this case is identified as being in Phoenix.)
Here’s what NetBank had to say (as the panel explained it) about Banco Nacional de Mexico and the domain name, which Banco Nacional registered in 1999:
With regard to bad faith, the Complainant argues that the disputed domain name is not used and has apparently never been used since its registration, that the disputed domain name was registered by the Respondent in order to prevent the Complainant from reflecting its marks in a corresponding domain name, that the Respondent has engaged in a pattern of the above-described conduct (continuously renewing the disputed domain name without using it), and that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant, who is a direct competitor of the Respondent.
I’m not a lawyer. But in 10 seconds I was able to disprove this initial statement about the domain name never being used. Just go to screenshots.com/bancanet.com and you’ll see this:
Sure looks like the bank used this domain name, right? It clearly calls its online banking BancaNet. It has since shut down the URL due to security issues.
Maybe they hadn’t heard of Screenshots.com. But everyone knows about Archive.org, and you’ll find plenty of similar archives of the site there.
In the end the panel didn’t even consider this issue because the complainant didn’t show rights to the term NETBANK and Banknet, despite claiming registered and common law rights.
The only live U.S. trademark application I can find for Netbank is an intent-to-use filing from Bank of Internet USA, which is where Netbank.com currently forwards. The only live U.S. registered mark for Banknet is registered to Mastercard.