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When Pennsylvania Business Bank purchased the rights to the trademark “BizBank,” its owners had no idea that their plans to launch an Internet Web site would lead to a three-year court battle with a South Korean company over the rights to the domain name www.bizbank.com. In the interim, PBB has resorted to using the domain name bizbank.org but said in the suit that it wanted its full rights to the .com domain name because .org is an extension usually reserved for non-profit groups. Now, after a three-year battle, a federal judge has ruled that the Korean company’s registration of the domain name bizbank.com was done in bad faith and that it must immediately transfer the site name to PBB. The ruling is a victory for attorney Jeffrey L. Eichen of the Venable firm in Washington, D.C., who carried the case with him from two prior law firms — Morgan Lewis & Bockius, where he was working when the case was filed in 2001, and Schnader Harrison Segal & Lewis, where he worked for more than two years. In his opinion in Pennsylvania Business Bank v. Biz Bank Corp., Senior U.S. District Judge Jan E. DuBois found that the Korean company’s registration of the domain name violated the Lanham Act and the Anticybersquatting and Consumer Protection Act. DuBois noted that the Korean company’s owner, Daemin Won, was named as a co-defendant and had acted as his own lawyer. Although he was allowed to do so on his own behalf, DuBois found that Won was not allowed to represent the company. But instead of simply entering a default judgment against the corporate defendant for failing to hire a lawyer, DuBois said he opted to take “extraordinary steps to ensure the fairness of the proceedings” in light of the fact that Won was acting pro se and his command of the English language was “limited.” At one point, the court clerk’s office entered a default judgment, but DuBois agreed to set it aside after he received a letter from Won that he treated as a formal answer to the suit. DuBois later granted a defense motion and ordered the plaintiff to translate its motion for summary judgment into Korean. But in the end, DuBois concluded that the law was entirely on PBB’s side since it was able to prove that it is the rightful owner of the “BizBank” trademark and can show continuous use of the mark dating back to 1989. As a result, DuBois concluded that Won’s company violated that trademark when it registered the bizbank.com site name with the Internet Corporation for Assigned Names and Numbers, or ICANN. In his findings of fact, DuBois noted that the Korean company had altered the contents of the site several times during the litigation. When the suit began, the site described Biz Bank Corp. as one of South Korea’s leading export firms. The content of the site was limited to a few paragraphs that ended with the sentence: “Inquiry — If you feel difficult [sic] in finding products in Korea, please contact us.” The content on the site was replaced in September 2001 with a new format that described it as a “world business contents portal web site” and a “business contents bank portal web site like Yahoo.” The new page invited visitors to choose from a variety of categories of information such as “Accounting,” “Consulting,” “Business Services,” “Economics” and “Investing.” DuBois noted that many of the categories “fall within the classes covered by plaintiff’s trademark registration.” By January 2002, DuBois found that the site’s contents had been replaced once again to provide links to embassies, consulates and government agencies of various countries under the title “World Government Guide.” As a result of the Korean company’s use of the site name, DuBois concluded that PBB “has been denied use of its federally registered, incontestable mark as a web address.” In analyzing PBB’s claim under the Lanham Act, DuBois applied the 10-factor Lapp test — named for the 3rd Circuit’s 1983 decision in Interspace Corp. v. Lapp Inc. — to assess whether PBB had proven a likelihood of confusion. DuBois found that the “BizBank” trademark is “a descriptive mark with a secondary meaning.” The word “bank” is a generic term, DuBois said, and the court can take “judicial notice” that the word “biz” is “a widely understood colloquial term for the word ‘business.’” Putting the two words together, DuBois said, “suggest the user is an entity in the business of banking, which accurately describes the services plaintiff provides. However, the secondary meaning is that the user provides banking services specifically tailored to the needs of businesses, as opposed to individuals.” Although the mark is “distinctive,” DuBois found that PBB had not introduced sufficient evidence to allow for a determination of “the conceptual strength of the mark.” As a result, DuBois said his task was to look to “the commercial strength or marketplace recognition of the mark to determine the overall strength of the mark.” On that point, DuBois found that PBB prevailed because it was able to show that the mark has been in use in the United States for more than 10 years and that its customers and vendors know of the mark “as indicating Pennsylvania Business Bank’s identity and services.” Eichen argued that the level of care of Internet users is generally low and that it is common to search for a business by simply adding “.com” to the business name, which, in PBB’s case, takes them to the Korean company’s Web site. On that point, DuBois disagreed, saying that while “Internet shoppers are relatively careless when ‘surfing’ for products,” PBB’s online banking customers were likely to exercise more “care and sophistication.” As a result, DuBois found that one of the Lapp factors weighed against PBB’s allegation of confusion. But Eichen made more headway with his argument that the Korean company had registered the name in bad faith. In his brief, Eichen argued that the lack of content on the Korean site — and the multiple changes it has undergone — shows that it has no support for its claim that it is making “legitimate, bona fide use of the domain name.” DuBois agreed, saying “the court finds plaintiff’s arguments about the various versions of the Web site convincing and concludes that defendants’ behavior raises an inference of bad faith.” As a result, he said, the fifth Lapp factor — intent of the defendants — “weighs in favor of finding a likelihood of confusion.” In sum, DuBois concluded that seven of the Lapp factors weighed in PBB’s favor: similarity of the marks; strength of the mark; intent of defendant; evidence of actual “initial interest” confusion; same marketing channels and advertising media; target audience; and product similarity. In a two-page order, DuBois enjoined the Korean defendants from further use of the BizBank trademark and ordered them “to immediately transfer or arrange to immediately transfer the domain name” to PBB. In the alternative, DuBois said, PBB is “granted leave to submit to the court a form of order providing for the transfer of the domain name by … ICANN.”

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