[Indexed as: The Chase Manhattan Corporation. v. John Whitely]

[Indexed as: chasemerchantservices.com]

WIPO Arbitration and Mediation Center
Administrative Panel Decision

Case No. D2000-0346
Commenced: 10 May 2000
Judgment: 12 June 2000

Presiding Panelist: Dennis A. Foster

Domain name - Domain name dispute resolution policy - Famous U.S. Trademark - Identical - Constructive notice - Prior registration - Lack of legitimate right or interest - Confusingly similar - Bad faith registration - Bad faith use.

Complainant was registrant of United States trademark, Chase and many other trademarks involving the words Chase and Chase Manhattan.  One of Complainant's services is the same as that provided by Respondent. Respondent registered the domain name, chasemerchantservices.com. 

Held, Name Transferred to Complainant.

Clearly, Respondent's domain name  "hasemerchantservices.com which was registered in 1998 is identical to Complainant's company name, Chase Merchant Services which began doing business in 1997. 

Respondent has no legitimate right or interest in the domain name because Respondent's use of the name Chase is an infringing use of Complainant's trademark. Respondent's evidenced business licence from Florida granting him the right to use the name Chase Merchant Services, appears instead to be a tax receipt. Even if the document were a licence, it would confer no trademark rights because Respondent could only defeat Complainant's trademark rights by showing prior registration and/or use or a licence or Complainant's acquiescence in Respondent's trademark use or similar.  Respondent is not a licensee of Complainant and clearly does not use the "Chase" name with the consent of Complainant.

Complainant's registration provided constructive notice of its trademarks to Respondent, before Respondent's registration. Also, Complainant has shown that Respondent is using the domain name to lead its website visitors to a bank service identical to one of Complainant's. It thus is clear that Respondent's infringing use of Complainant's trademark is aimed at parasitizing the goodwill of Complainant's trademark to attract customers to Respondent's competing service. These facts are compelling evidence of bad faith in the registration and use of the disputed domain name.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Registration Agreements referred to
Network Solutions, Inc. Service Agreement Version 4.0.

Cases referred to
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Panel Decision referred to
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Foster, Panelist: -

1. The Parties

Complainant is:

The Chase Manhattan Corporation
270 Park Avenue
New York, New York 10017
Chase Merchant Ventures, Inc.
100 Duffy Avenue
Hicksville, New York 11801

and 

Chase Merchant Services, LLC
265 Broad Hollow Road
Melville, New York 11747

Represented by:

Chase Manhattan Legal Department
One Chase Manhattan Plaza
26th Floor
New York, New York 10081

Respondent is:

John Whitely
2676-K Bayshore Blvd.
Dunedin, Florida 34698

2. The Domain Name and Registrar

The disputed domain name is: <chasemerchantservices.com>. The registrar for this domain name is Network Solutions Incorporated (NSI) of Herndon, Virginia, USA.

3. Procedural History

This dispute is to be decided in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).

The Complaint was filed on April 27, 2000. On May 3, the Center requested that NSI check and report back on the registrant for the domain name chasemerchantservices.com. On May 9, 2000, NSI reported to the Center that the registrant was the Respondent: 

John Whitely
2676-K Bayshore Blvd.
Dunedin, Fl 34698
U.S.A.

On May 10, 2000, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. Respondent's final response was received by the Center on May 23, 2000. 

According to a letter from Complainant to the Center, Respondent had not forwarded a copy of his response to Complainant as of May 25, 2000. However, the Center furnished a copy of Respondent's response to Complainant by fax on May 22, 2000. Complainant sent a rejoinder to Respondent's response that was received by the Center on May 26, 2000. In accordance with the discretion provided by the Rules (nos. 10 and 12), this Panel chooses not to consider Complainant's rejoinder dated May 25, 2000. Even though Complainant did not receive a copy of the response from Respondent as required by the Rules, Complainant did receive a copy of Respondent's submission from the Center. The fact that Complainant received the response from the Center rather than from Respondent, in the Panel's view, does not justify allowing Complainant to file a further submission.

The Administrative Panel submitted a Declaration of Impartiality and Independence on May 29, 2000, and the Center proceeded to appoint the Panel on May 29, 2000.

This Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by June 12, 2000.

4. Factual Background

Complainant Chase Manhattan Corporation et al. constitute a large financial institution well-known throughout the United States and the world. One of Complainant's financial services is to act as a clearing bank for merchants holding credits from credit card transactions. Respondent is also in this business. During 1998, Respondent registered the domain name <chasemerchantservices.com> in order to continue pursuing this same line of business. Complainant disputes Respondent's right to pursue his business using this domain name. 

5. Parties' Contentions

Complainant's Contentions:

a. Complainant owns a trademark "Chase" which was registered on the Principal Register (no. 1,521,765) in the United States on January 24, 1989 for providing financial services. However, Complainant's use of "Chase", "Chase Manhattan" etc. goes back to the late 1800's in the United States of America, and Complainant owns numerous other trademarks registered in the United States of America and abroad using "Chase" and "Chase Manhattan".

b. The Chase Manhattan Bank and its affiliated institutions are well-known throughout the world.

c. Respondent's registration of the domain name <chasemerchantservices.com > infringes Complainant's long-established and subsisting trademark.

d. Respondent has used its infringing domain name to offer services in competition with the Chase Manhattan Bank et al. for the financial gain of Respondent.

e. Complainant contends the disputed domain <chasemerchantservices.com> should be turned over to Complainant.

Respondent's Contentions:

a. Respondent has a license from Pinellas County, Florida to use the business name "Chase Merchant Services". 

b. Respondent began using the name "Chase Merchant Services" to conduct its business of clearing merchant credit card receivables in 1994, before Complainant began its own business in this field in 1997.

c. Respondent began using the name "Chase" in the sense of chasing business. 

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain name <chasemerchantservices.com> transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):
i. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name was registered and is being used in bad faith. 

Identical or Confusingly Similar

Complainant has produced records showing myriad registrations, in the United States and all over the world, of names related to Chase Manhattan Bank (Complaint Exhibits F and G). Moreover, this Panel takes note of the fact that the name "Chase Manhattan" and its variations are widely known in the United States and the world.

Respondent registered the domain name <chasemerchantservices.com> during 1998. This panel finds this domain name is identical to the Complainant's company name "Chase Merchant Services" which began doing business in 1997.

Legitimate Rights or Interests

Respondent is not a licensee of Complainant and makes no pretense at all to be using the "Chase " name with the consent of Complainant. Respondent has produced a copy of a document which Respondent claims is a business license allowing him to use the name "Chase Merchant Services", but which looks to this Panel to be a tax receipt issued by Pinellas County, Florida. Respondent contends this allows him to register the domain name <chasemerchantservices.com> and to use the name to carry on a clearing business for merchant credit card receivables.

This Panel finds Respondent has no legitimate right or interest in the domain name <chasemerchantservices.com>. This is because Respondent's use of the name "Chase" is an infringing use of Complainant's trademark. An infringing use of Complainant's trademark can not give rise to a legitimate right or interest on the part of Respondent (the Policy 4(a)). Even assuming the Pinellas County Florida document is what Respondent claims it to be (which this Panel disbelieves), it does not matter that Respondent has received a business license from Pinellas County, Florida ostensibly granting him the right to use the name "Chase Merchant Services". Such a license confers no trademark rights vis-à-vis Complainant's famous and subsisting trademark dating back to the 1800's. Respondent could only defeat Complainant's trademark rights by showing prior registration and/or use or a license or Complainant's acquiescence in Respondent's trademark use or similar. None of this is apparent.

Therefore, the Panel finds Respondent has no legitimate rights or interests in the trademark.

Registered and Used in Bad Faith

Complainant has shown its many "Chase" and "Chase Manhattan" etc. trademarks were registered over the years (Complaint, Exhibits F and G). Thus, Respondent had constructive notice of Complainant's trademarks before registering the domain name <chasemerchantservices.com> during 1998. And, as this Panel noted earlier in this Decision, the "Chase" family of trademarks for financial services are famous in the United States and much of the rest of the world. Given that Respondent operates in the field of credit card services, it is inconceivable to this Panel that Respondent did not have in mind Complainant's famous, long-established and subsisting trademarks when Respondent registered the disputed domain name. This is strong evidence of bad faith.
Complainant has shown that Respondent is using the domain name <chasemerchantservices.com> to lead its website visitors to a bank service identical to one of Complainant's, viz., the clearing of merchants' credit card receivables. It thus is clear to this panel that Respondent's infringing use of Complainant's trademark is aimed at parasitizing the goodwill of Complainant's trademark to attract customers to Respondent's competing service. This is compelling evidence of bad faith in the registration and use of the disputed domain name. (see also the WIPO Center Decisions 2000-0014 and 2000-0015).

7. Decision
This decision is based on the foregoing findings that Respondent's domain name chasemerchantservices.com is identical to Complainant's service mark "Chase Merchant Services", that Respondent has no legitimate right or interest in this service mark, and that Respondent registered and is using this domain name in bad faith.
In consequence, based on ICANN Policy para 4(i) and Rule 15, this Panel orders that the disputed domain name chasemerchantservices.com be turned over to Complainant, the Chase Manhattan Corporation, Chase Merchant Ventures, Inc. and Chase Merchant Services, LLC.

Dennis A. Foster
Sole Panelist
Dated: June 12, 2000

Name transferred.
 
 

Domain Name Transferred