WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BG Bank v. Kim Hansen
Case No. D2002-0643
1. The Parties
The Complainant is BG Bank, a division of Danske Bank A/S, Holmens Kanal 2-12, 1092 Copenhagen, Denmark, represented by International Patent-Bureau, 2630 Taastrup, Denmark.
The Respondent is Kim Hansen, Carril de la Fuente 7, 11140 Conil, Cadiz, Spain.
2. The Domain Name and Registrar
The Domain Name at issue is . The Registrar is Melbourne IT Ltd, Level 2, 120 King Street, Melbourne, Victoria 3000, Australia
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by e-mail on July 11, 2002, and a hardcopy was received by the Center on July 17, 2002. The Center acknowledged the receipt of the Complaint on July 12, 2002.
On the same day, the Center sent to Melbourne IT Ltd. a request for verification of registration data. On July 26, 2002, Melbourne IT Ltd confirmed that it is the Registrar, that Kim Hansen is the Registrant of the domain name , and also its administrative, technical and billing contact.
The Center verified that the Complaint satisfies the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") and that payment was properly made. The Panel is satisfied this is the case.
On July 26, 2002, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. On August 11, 2002, the Center received a Response by e-mail, and on August 16, 2002, a hard copy of the Response from the Respondent
On August 19, 2002, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel�s decision is September 2, 2002.
4. Factual Background
A. Complainant
The Complainant Danske Bank A/S is the largest bank in Denmark, which operates an important part of its business under the business name BG Bank (until the merger of BG Bank with Danske Bank in the year 2000, BG Bank was the third largest bank in Denmark). The BG Bank division operates also internationally and is represented in Spain.
The Complainant is the owner of Danish trademark registrations for the word BG Bank and for the word BG-BANK, dated August 15, 1997. It has also applied for registration of a Community Trade Mark (application No 2375616) dated September 13, 2001, consisting of the letters BG in one line and the word Bank underneath. In that figurative mark the letters BG are slightly larger than the letters of which the word Bank consists.
The registrations and the application cover a large list of goods and services in international classes 09, 16, 35, 36, 38, 41 and 42.
The Complainant sent on March 21, 2002, a letter to the Respondent, requesting the transfer of the domain name, followed by a letter dated April 5, 2002, and a reminder dated April 19, 2002.
B. Respondent
The Respondent registered on November 4, 2001, the domain name with Melbourne IT Ltd. It responded to the letter dated March 21, 2002, by phone, stating that he did not infringe the Complainant�s trademark rights, since the Complainant had failed to make use of his rights in the Sunrise period for .info domain names.
5. Parties� Contentions
A. Complainant
The Complainant submits that (1) the domain name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent submits that it registered the domain name in order to use it for a website promoting the Cadiz coastal region.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
1) Identity or confusing similarity with a mark in which the Complainant has rights
The domain name is if not identical at least confusingly similar to the registered and used word mark "BG Bank" of the Complainant (the generic top level domain indicator ".info", cannot be taken into consideration when judging identity or confusing similarity). It is also confusingly similar to the registered word mark BG-BANK and to the device mark, of which the Community Trade Mark application consists.
2) Legitimate rights or interests in respect of the domain name
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name. It does not entertain a website, in connection with a bona fide offering of goods or services. Furthermore, the Respondent has not been commonly known by the domain name and does not claim to have been. Since it has not used at all the domain name, it makes no legitimate noncommercial or fair use of the domain name.
However, the Respondent submits that it intends to use the domain name for a website which is supposed to be fully operational in spring 2003 (he is explaining the inactivity and lack of commitment on the domain name since its registration with lack of time). Furthermore, the Respondent submits that he intends to promote on this website the Cadiz coastal line between Bolonia and Gibraltar to Danish tourists and that he chose the domain name as abbreviation for "Bolonia to Gibraltar Databank". He believes that he has the right to inform about the Bolonia -Gibraltar route and indeed the Panelist agrees with the latter submission.
The panelist also accepts that the Respondent has shown preparations to use the domain name for a website which may serve to promote the Cadiz coastal region (since the bills submitted by the Respondent do not go into details on the contents of the proposed website, the Panelist can only assume that the Respondent�s submissions are correct).
However, the Panelist does not agree with the Respondent that he has a legitimate interest in using the domain name for that purpose. To use the word "bank" as an abbreviation for "data bank" is most uncommon and virtually nobody will expect that term to refer to a databank containing tourist information. On the contrary, the word "bank" is generally being understood as a reference to banking services. Also, hardly anybody in Denmark would expect the combination of two capital letters "BG" to refer to the Bolonia � Gibraltar route. Therefore, no Danish tourist would expect to find in the Internet information about the Cadiz region under such domain name. Consequently, the Panelist does not accept, in view of the Complainant�s rights in the mark , that the Respondent has a legitimate interest in using that domain name for the purported website. The fact that the Complainant did not make use of his rights in the sunrise period for the .info domain, does not give rights to third parties, such as the Respondent, to appropriate the Complainant�s trademark.
3) Registration and use in bad faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith.
The Respondent admits that he was aware of the existence of the Complainant�s name in Denmark at the moment of buying the domain name but purports to have assumed that the Complainant, in view of the merger of BG Bank with Danske Bank, where simply not interested in making any use of the domain name because of a possible name change. Furthermore he submits that it was to him impossible to believe that such a large company had not made the necessary agreements with the domain suppliers during the sunrise period for the challenge and buying of the domain name.
These are considerations, which obviously are not suited to establish good faith of the Respondent. He apparently is very well acquainted with the Complainant and its activities and also with the functioning of the Internet domain name system. He could therefore easily have visited the homepage of the Complainant (probably he has visited that website) and could have convinced himself that, also after the merger dating back to the year 2000, the Complainant continues to trade, at least for one important activity of the company, under the business name BG Bank and has not announced any intention to cease using that name. Consequently the considerations of the Respondent are speculations that cannot be taken serious. What counts is that at the time of the domain name registration the Complainant operated under the name "BG Bank", a fact of which the Respondent was aware, and that the Complainant continues to operate under this name. Furthermore, the Respondent himself explains the relatively long inactive status of his domain name with lack of time and not with the argument that he intended to wait for a possible name change of the Complainant before using the domain name that at present clearly is being understood by persons from Denmark, who are his target, as a reference to the Complainant. Also, the simple fact that a company does not have the policy to register its trademark(s) and trade name in numerous gtlds and cctlds does not mean, and the Respondent no doubt is aware of that fact, that the company would agree with cyber squatters registering their trademark as a domain name. The Respondent rightly points out that most of the domain names of which the Complainant disposes according to annex 5 of the Complaint have been registered by the Complainant only after it had discovered the registration of the domain name by the Respondent. However, this is no argument in favor of the Respondent, since for the Policy to apply the Complainant needs to have rights in a mark and not rights in any domain name. For the Panelist this rather is an indication that the Complainant apparently only after the registration of the domain name by the Respondent realized that it needs to protect its valuable trademark by registrations in as many domains as possible. That such policy has become necessary and is now being applied by many trademark owners mostly does not stem from the need of the trademark owners to use all these domain names (they may indeed be interested in using some, but normally not that many), rather from the need to protect themselves against bad faith registrations of their trademark.
When the Respondent refers to the Rules of ICANN which he purports to have studied before registering the domain name he overlooks that "unrestricted" refers to the fact that anybody interested in a domain name in the .info domain may register such domain name (contrary to the .biz domain, which is restricted to businesses and some other domains even more restricted such as the .int. or the .aero domain), however of course subject to the rules of the Policy. Therefore, "unrestricted" does not and cannot mean that the Policy would allow bad faith registrations of trademarks. No doubt, the Respondent is aware of that fact.
Also the fact that the Respondent invested already a certain amount of money in developing a website for promoting the Cadiz coastal region to Danish tourists (that investment is by the way not lost if the Respondent chooses a more appropriate domain name) does not exclude bad faith. The Panelist accepts that the Respondent does not seem to have registered the domain name primarily for the purpose of selling it for valuable consideration in excess of his documented out-of-pocket expenses. The Respondent�s investments made for the development of a website and the Respondent�s refusal to sell the domain name to the Complainant prima facie speak against such assumption.
However, as mentioned before, it is most unlikely that Danish Internet visitors interested in information about Spanish tourist locations, and in particular in the Cadiz region, would search under the domain name . More generally, somebody interested in tourist information will not type the keyword "bank" in a search engine, since that keyword refers to banking and financial services and not to tourism. On the contrary it is most likely that Danish Internet users, typing that domain name, would expect to reach a website respectively the home page of the in Denmark well-known business of the Complainant, since "bgbank" is the closest Internet language version of the trade name and trademark "BG Bank" of the Complainant. This is confirmed by the fact that the home page of the Complainant can be acceded under exactly the same domain name in the Danish cctld .dk ().
Why should the Respondent under these conditions have chosen the domain name ? A Danish Internet user who intends to accede the Complainant�s homepage and would reach instead the Respondent�s website may at once leave that website. Nevertheless he will be annoyed to have been linked to an unintended website. However, he may also become attracted by the contents of the website. Thus there is for the Respondent a potential of unintended visitors of his website who may become his clients. Some of the visitors may even believe that the contents of the website, supposed it will consist of promotion of the Cadiz region, is sponsored or endorsed by the Complainant. Whilst there is nothing wrong for the Respondent trying to attract visitors to his website by means of an appropriate domain name which somehow is hinting to the contents of the website, it cannot be accepted under the Policy that the Respondent intends to attract visitors to his website by using a domain name that visitors type in the expectation that it leads them to the Complainant�s homepage.
Therefore, the Panelist concludes that the Respondent by registering the domain name has intentionally attempted to attract, for commercial gain, Danish Internet users to his future website, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation or endorsement of his website or the product or service offered on that website, and thus for the purpose of disrupting the business of the Complainant (paragraph 4b(ii) and (iii) of the Policy). Consequently, the Panelist is satisfied that the Respondent registered and is using that domain name in bad faith.
7. Decision
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain name be transferred to the Complainant.
Dr. Gerd F. Kunze
Sole Panelist
Dated: August, 29, 2002
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