US Bancorp triumphs in first RDRP case

Minneapolis-based US Bancorp has become the first successful complainant under the Restrictions Dispute Resolution Policy (RDRP) for '.biz'. The domain names 'us-bank.biz' and 'u-s-bank.info' were the subject of a consolidated case brought under both the RDRP and the Uniform Domain Name Dispute Resolution Policy (UDRP) against Oregon resident Frederick Scalise.

A major difference between the RDRP and the UDRP is that a complainant in an RDRP case only has to demonstrate that the domain name at issue was not registered or used in connection with a bona fide commercial purpose. In order to succeed under the UDRP, the complainant must demonstrate each of the following:

• that the domain name is identical or confusingly similar to its trademark or service mark;
  
  
• that the registrant has no rights or legitimate interest in the domain name; and
  
  
• that the domain name was registered and is being used in bad faith.

Scalise claimed that he had registered 'us-bank.biz' exclusively for use with a website to criticize US Bancorp, with no intention to sell or lease the domain name. US Bancorp contended that (i) such a use did not constitute a bona fide business or commercial purpose under the RDRP, and (ii) the name had been registered with the additional purpose of selling or leasing it for compensation, in violation of the '.biz' registration restrictions.

Panellist M Kelly Tillery agreed with US Bancorp that Scalise had not used 'us-bank.biz' for a bona fide business or commercial purpose, and therefore ordered its transfer. He also concluded that the bank had satisfied the three-prong UDRP test and ordered the transfer 'us-bank.info' as well.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC