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Southern Bank and Trust Company
v.
Dmitry Pogrebetsky

[Indexed as: Southern Bank and Trust Company v. Pogrebetsky]
[Indexed as: Southernbank.com]

The National Arbitration Forum

File No. FA0002000093673
Commenced: 10 February 2000
Judgment: 15 March 2000

Presiding Arbitrator: Judge James A. Carmody (Retired)

Domain name - Domain name dispute resolution policy - U.S. common law Service mark - Identical - Confusingly similar - Bad faith registration - Bad faith use

Complainant is a bank doing business under the name "Southern Bank and Trust Company" no later than 1997. Registrant registered the domain name, "southernbank.com" on January 12, 2000. Complainant alleged that the domain name is identical or confusingly similar to a common law service mark in which complainant has legal rights.

Held, Name Transferred to Complainant.

The domain name "southernbank.com" was purchased and reregistered by a Russian entity by the name of YnotsGetYrBestName, which offered it for sale in September of 1999. Respondent subsequently registered the same domain name at least as early as January 12, 2000, and was offering it for sale or lease as of that date. Respondent admits registering southernbank.com with BulkRegister (Albanza Inc.) on January 8, 2000.

Complainant has valuable and legally protectable rights in the marks: "Southern Bank", and "southernbank.com", dating back until at least 1997.

Respondent has not used and has no legally protectable rights in the marks "Southern Bank" or in the domain name "southernbank.com". Also, Respondent refused to transfer or relinquish the domain name to Complainant without payment of an exorbitant premium. There is evidence to show that Respondent brought the domain name for the purpose of resale. Respondent stated in an email to counsel for Complainant that the estimated price of the domain is a 5-figure number. Thus, Respondent engaged in bad faith registration and bad faith use.

Policies referred to

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

Registration Agreements referred to

BulkRegister Service Agreement, effective January 8, 2000

Cases referred to
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Panel Decision referred to
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Carmody, Arbitrator: -

The above-entitled matter came on for an administrative hearing on March 15, 2000 before the undersigned arbitrator on the Complaint of Southern Bank and Trust Company, appearing by its counsel, Cheryl A. Marteney and Gary J. Rickner of Ward and Smith, P.A., Post Office Box 867, New Bern, N.C. 28563-0867 ("SBT" or "Complainant"), against Dmitry Pogrebetsky, 14964 SW 51 St., Davie, FL 33331 ("Respondent"), appearing pro se. Upon the written submitted record, including the Complaint and the Response to the Complaint, the following DECISION is rendered:

PROCEDURAL FINDINGS

Domain Name: southernbank.com

Domain Name Registrar: BulkRegister (Albanza, Inc.)

Domain Name Registrant: Dmitry Pogrebetsky

Date of Domain Name Registration: January 8, 2000

Date Complaint Filed: February 7, 2000

Date of Commencement of the Administrative Proceeding in Accordance with Rule 2(a) and

Rule 4(c)[1]: February 10, 2000.

Due Date for Response: March 4, 2000. Response was timely filed.

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum ("Forum") forwarded the Complaint to the Respondent on March 6, 2000, in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), the Forum immediately notified Network Solutions that the administrative proceeding had commenced. The Complaint was then docketed and both the Complaint and Response were forwarded to the undersigned arbitrator for decision.

FINDINGS OF FACT

1. On February 8, 2000, the domain name "southernbank.com" was registered with BulkRegister (Albanza, Inc.) under the registrant name Dmitry Pogrebetsky (Respondent). Respondent is bound by the terms of the BulkRegister Service Agreement and therefore agreed to resolve any dispute regarding his domain name registration pursuant to ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and the Uniform Domain Name Dispute Resolution Policy. Respondent, having been provided a copy of the Complaint, the Complaint Notification Instructions, the Rules and the Uniform Domain Name Dispute Resolution Policy, and having submitted a Response to the Complaint without contest of this administrative proceeding or its jurisdiction in this matter, is accordingly bound by this -DECISION. Neither the Complainant nor Respondent contests the jurisdiction of the Forum or the undersigned arbitrator to resolve this controversy.

2. Complainant is a banking association organized and existing under the laws of North Carolina and has been doing business in that state for an undisclosed number of years (but at least since 1997) under the name "Southern Bank and Trust Company." Complainant engaged EnterSoft, LLC, to register and maintain the domain "southernbank.com" through Network Solutions beginning in 1997. Complainant states that EnterSoft failed to pay the domain registration fee in 1999, and the registration lapsed without knowledge of Complainant. There is litigation between Complainant and Entersoft concerning this maintenance issue which the undersigned deems unrelated to the arbitration at hand.

3. A Russian entity by the name of YnotsGetYrBestName apparently purchased and reregistered southernbank.com and offered it for sale in September of 1999. Network Solutions' "WHOIS" database reflects that Respondent was a subsequent registrant of "southernbank.com" at least as early as January 12, 2000 and that Respondent was offering the domain name for sale or lease as of that date. Respondent admits registering southernbank.com with BulkRegister (Albanza Inc.) on January 8, 2000.

4. Complainant is apparently claiming common law service mark rights in the marks, "Southern Bank" and the domain name, "southernbank.com," both of which it has utilized in commerce at least since 1997.

5. There is ample evidence from the Complaint and admissions in the Response to the effect that Respondent bought the domain name for the purpose of resale, although Respondent denies that it knew that Southern Bank was the entity trying to repurchase the domain name from him. In email to counsel for Complainant from Respondent, Respondent states: "�the estimated price of this domain is a 5-fugure number."

6. There is no evidence that Respondent has ever used "southernbank.com" for any purpose other than to sell the domain name to the Complainant or a competitor of the Complainant for a valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name.

7. The domain name is identical or confusingly similar to a common law service mark in which Complainant has legal rights.

CONCLUSION

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:

1. Complainant has valuable and legally protectable rights in the marks: "Southern Bank," and "southernbank.com," dating back until at least 1997.

2. Respondent has not used and has no legally protectable rights in the marks: "Southern Bank" or in the domain name "southernbank.com" and has refused to relinquish or transfer the domain name to Complainant without payment of an exorbitant premium. I find this to be ample evidence of bad faith on the part of Respondent as defined in Paragraph 4 b. of the Policy and sufficient to entitle Complainant to relief as sought.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy, it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "SOUTHERNBANK.COM," REGISTERED BY RESPONDENT, DIMITRY POGREBETSKY, BE TRANSFERRED TO COMPLAINANT, SOUTHERN BANK AND TRUST COMPANY.

Signed this 15th day of March 2000 by Judge James A. Carmody (Retired), arbitrator.

Honorable James A. Carmody

[1] Any references to "Rule" or "Rules" are to ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy (the "Policy") as supplemented by the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy.

Domain Name Transferred