WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ABN AMRO Holding N.V. v. Cor de Ruiter
Case No. D2001-1434
1. The Parties
Complainant is ABN AMRO Holding N.V., a legal person incorporated under Dutch law with its principal place of business in Amsterdam (Gustav Mahlerlaan 10), the Netherlands ("Complainant"). Complainant's authorised representative is Gregor Vos of Nauta Dutilh, with offices in Amsterdam, the Netherlands.
Respondent is Cor de Ruiter, with his business address in Zwijndrecht (Wittensteen 6), the Netherlands ("Respondent").
2. The Domain Name and Registrar
The domain name at issue is ("the Domain Name").
The Registrar is Tucows, Inc., of Toronto, Canada ("the Registrar").
3. Procedural History
The Complaint, in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Complaint"), was filed electronically with the World Intellectual Property Organisation Arbitration and Mediation Center ("the WIPO Center") on December 7, 2001. The hard copy version of the Complaint was received on December 12, 2001. An Acknowledgement of Receipt was sent by e-mail by the Center to Complainant, to Complainant�s legal representative and to Respondent on December 11, 2001.
On December 12, 2001, a Request for Registrar Verification was transmitted to the Registrar, which answered on the same day that the Domain Name is registered with it and that Respondent is the current registrant of the Domain Name.
On December 14, 2001, a Notification of Complaint and Commencement of Administrative Proceedings ("the Commencement Notification") was transmitted by email and by courier to Respondent, setting a deadline on January 3, 2001, (2002), by which Respondent could make a Response to the Complaint.
The Response was filed electronically with the Center on January 1, 2002. The hard copy of the Response was received on January 9, 2002. An Acknowledgement of Receipt of Response was sent by the Center on January 11, 2002.
On January 15, 2002, the WIPO Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by email to the parties, in which Wolter Wefers Bettink was appointed as the Sole Panelist.
4. Factual Background
The following facts were either stated in the Complaint and were not contradicted (or not contradicted sufficiently) in the Response, or appear from the exhibits that are attached to the Complaint and the Response.
Complainant is a prominent banking group, ranked as Europe's eighth largest bank and the seventeenth largest in the world in terms of what is known as "tier 1 capital". Complainant is active worldwide, has more than 3,500 branches, and a staff of some 110,000.
Complainant has submitted a list of its trademark registrations, which include the trademarks ABN AMRO (in many countries) and ABN (in the Benelux).
Respondent registered the Domain Name on September 21, 2001. Currently, no website is active under the Domain Name, except for an "under construction" message. At this stage, it is not possible for holders of. info domain names to operate a website under their domain name.
The Complaint does not mention any contact between Complainant and Respondent (e.g. negotiations about a transfer of the Domain Name) prior to the initiation of these proceedings. Respondent states that he was not contacted by Complainant at all before it filed the Complaint. Apparently, the Complaint was brought without advance notice to Respondent.
5. Parties� Contentions
a. Complainant
Complainant asserts that the trademark "ABN AMRO" is well known worldwide and that its reputation is such that it can be considered a well-known trademark in the sense of Article 6bis of the Paris Convention.
Complainant states that the Domain Name comprises an important part of the trademark "ABN AMRO" and that, since "ABN AMRO" is a well-known trademark, this creates a likelihood of confusion amongst the public.
Complainant states that Respondent has no right or legitimate interest in the Domain Name in the first place, as it did not use, or make demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services, and that if it would do so, it could not be bona fide, as Respondent does not form part of the company of Complainant and is not associated with Complainant in any other way.
Secondly, Complainant states that Respondent has not been and is not commonly known by a (company) name that involves the element "ABN". Complainant furthermore argues that the circumstances as set out in paragraph 4(c)(iii) of the Policy (legitimate use without intent to divert customers or tarnish the trademark) do not apply as it is not possible yet to use domain names.
Complainant submits that the Domain Name has been registered and is being used in bad faith, as two of the sets of circumstances set out in paragraph 4(b) of the Policy apply. Firstly, Respondent registered the Domain Name in order to prevent Complainant from reflecting its trademark in a corresponding domain name. Respondent must have been aware of Complainant�s use of the trademark "ABN AMRO" (an initial trademark search would have shown the existence of this trademark), and Respondent knew that only Complainant, as the owner of the trademark "ABN AMRO", has an interest in the Domain Name. Secondly, Complainant states that it is most likely that the Domain Name was registered by Respondent primarily for the purpose of selling, renting or otherwise transferring it to Complainant, since there are no circumstances at all indicating that Respondent is associated with Complainant in any way.
b. Respondent
Respondent affirms that he was aware of the "ABN AMRO" trademark when registering the Domain Name.
Respondent points out that since the merger of ABN Bank and AMRO Bank into ABN AMRO Bank, the name "ABN Bank" or "ABN" is not used anymore and that Complainant, since the merger, has stressed its "ABN AMRO Bank" trademark and has ceased using the trademarks "ABN" and "AMRO". To stress this cease of use of "ABN", Respondent refers to "ABN" domain names in several ccTLDs that are not in use, free for registration or in use by other companies than Complainant.
Respondent asserts that he does have a legitimate interest in the Domain Name, as he runs a website which supplies information on his Real Estate Agency "Aaveste Makelaardij", and he plans to use the Domain Name as a connection to the "Aaveste Bedrijfs Nieuws", a part of the site where customers and prospective customers will have the opportunity to obtain relevant information by a new natural format. Respondent has registered a number of Dutch language generic domain names in the gTLD for similar purposes.
Respondent contests that the domain name has been registered and is being used in bad faith. He points out that Complainant failed to register the Domain Name during the so-called "Sunrise Period", when trademark holders were granted a first right to register domain names corresponding to their trademarks. Respondent vehemently asserts that he did not register the domain name for the purpose of selling, renting or otherwise transferring it to Complainant for valuable consideration in excess of registration costs, and that he only intends to use the Domain Name for his Real Estate Agency�s activities. To stress this, Respondent offers Complainant to grant it a first right to buy the Domain Name at a maximum price of EUR 100, in case Respondent in the future should want to dispose of the Domain Name.
Furthermore, Respondent contests that he registered the Domain Name to prevent Complainant from reflecting its trademark in a corresponding Domain Name, as the name "ABN" is not used anymore as a major identification for Complainant�s business.
Respondent also states that he did not register the Domain Name to disrupt Complainant�s business or to intentionally attempt to attract Internet users to its site for commercial gain (although neither of these circumstances are alleged by Complainant).
Respondent states that his company Aaveste Makelaardij, established in 1994, makes the registration of the Domain Name bona fide. Respondent states that he is not (yet) commonly known by the Domain Name, but has the intention to create an awareness with his customers of the Domain Name.
Finally, Respondent states he is making a fair use of the Domain Name, as Complainant�s activities are no longer identified with the name "ABN" and it should not be possible for Complainant to obtain the Domain Name, while it has no intention to use it as such.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that Complainant, to obtain the requested remedy, must prove each of the following:
(i) that the domain name in issue is identical or confusingly similar to a trademark in which Complainant holds rights, and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) that the domain name has been registered and is being used in bad faith.
The Domain Name is clearly identical to the trademark ABN contained in annex 5 to the Complaint. However, Complainant does not invoke this trademark right. Instead, in the Complaint it relies on its worldwide ABNAMRO trademark registrations.
The question therefore is whether the trademark ABNAMRO is confusingly similar to . Although Complainant has not provided evidence thereof, the Panel deems it likely that � certainly in the Netherlands � a number of people would think that refers to the ABN AMRO bank. Whether this would amount to confusing similarity can, however, remain unaddressed, in view of the considerations given below.
The Panel is aware that when a domain name has been registered but not yet been used � as is the case with the Domain Name � it may be difficult for a Complainant to provide evidence of the absence of an own right or legitimate interest of Respondent and of the bad faith registration and use of the Domain Name. In many such cases under the UDRP, Complainants therefore rely on the evidence that transpires from correspondence and contacts they had with domain name owners prior to instituting proceedings under the UDRP. In this case, as the Panel noted above, the Complaint apparently was filed before Complainant had any contact with Respondent, so that Respondent�s intentions can only be derived from the Response.
In the Panel�s view Respondent�s explanation for his choice of domain name � an abbreviation of "Aaveste Bedrijfs Nieuws" (Aaveste Company News) � is insufficient to demonstrate a legitimate interest. Respondent has not provided evidence of its use of that name (and its abbreviation) as part of its business, nor of any preparations for a website under the domain name prior to the notification of the Complaint
In relation to bad faith, Complainant relies on paragraphs 4(b)(i) and (ii) of the Policy. Complainant�s assertion that Respondent is in bad faith since it is most likely that the Domain Name was registered by Respondent for the purpose of selling, renting or otherwise transferring it to Complainant (paragraph 4(b)(i) of the Policy), is not supported by evidence. In the absence thereof, the Panel notes that Respondent has emphasized in the Response its clear intention to use the domain name for its own purposes and has made an (as the Panel assumes: irrevocable) offer to grant Complainant a first right to buy the Domain Name - should Respondent in the future wish to abandon the Domain Name - at a maximum price of EUR 100 (which price would not normally exceed the registration costs).
Likewise, Complainant�s submission that Respondent registered the Domain Name in order to prevent Complainant from reflecting its trademark in a corresponding domain name, should be denied already for the fact that Complainant has not provided evidence that Respondent engages in a pattern of such conduct, as is required by paragraph 4(b)(ii) of the Policy. Moreover, the Panel notes that Respondent�s registration of the Domain Name does not prevent Complainant from reflecting its trademark ABNAMRO � on which it relies in this case � in the corresponding domain name .
For completeness� sake, the Panel has considered whether any of the other two circumstances mentioned in paragraph 4(b) of the Policy would apply. On the basis of the evidence submitted, the Panel concludes that this is not the case.
There is no evidence that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, as set out in 4(b)(iii), if only because Respondent is in an entirely different line of business (real estate agent versus banking and finance). For the same reason (and in the absence of any actual use of the Domain Name by Respondent), the Panel concludes that there is no prima facie evidence that, as required by 4 (b)(iv), Respondent will, by using the domain name, intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent�s website or location or of a product or service on its website or location.
The Panel is mindful of the fact that paragraph 4(b) of the Policy does not contain an exhaustive list of situations of bad faith registration and use of a domain name. As Complainant, however, has not relied on any other circumstances or evidence showing bad faith, the Panel concludes that Complainant has failed to prove that the Domain Name was registered and is being used in bad faith.
7. Decision
As Complainant has failed to show that the Domain Name has been registered and is being used in bad faith, the Complaint is denied.
Wolter Wefers Bettink
Sole Panelist
Dated: January 29, 2002
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