US Bancorp wins 'usbank.us' from search engine site
In US Bancorp Licensing Inc v Unused Domains, National Arbitration Forum panellist Irving Perluss has ordered the transfer of the domain name 'usbank.us' to US Bancorp. Perluss held that although Unused Domains was using the disputed domain name as a search engine, its primary intention was to sell it. It therefore had no legitimate interest in the domain and had registered it in bad faith.
At the time of the proceedings, Unused Domains owned more than 27,000 domain names which it offered to sell, including 'usbank.us'. US Bancorp argued that Unused Domains' use of the disputed domain name infringed its trademark rights in the US service mark US BANK, which it had registered in relation to banking and financial services.
In response, Unused Domains argued that it:
- had a legitimate, non-commercial interest in the disputed domain name as a search engine;
- did not register the domain name in bad faith; and
- was willing to sell it to US Bancorp for $30 (the cost of registration).
Perluss rejected these arguments. He held that, pursuant to Paragraph 4(c)(ii) of the usTLD Dispute Resolution Policy, Unused Domains did not have a legitimate interest in the disputed domain name, even though the registrant was using it, since the evidence indicated that Unused Domains' essential purpose was to sell 'usbank.us', as well as thousands of other domain names. Perluss further determined that although Unused Domains offered to sell 'usbank.us' to US Bancorp for $30, the offer came too late. He therefore ordered the transfer of the domain name to US Bancorp.
Mark Feldman and Jennifer Glombicki, Piper Rudnick LLP, Chicago
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