WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nova Banka v. Iris
Case No. D2003-0366
1. The Parties
The Complainant is NOVA BANKA, Bijeljina, Bosnia and Herzegovina.
The Respondent is IRIS, Bijeljina, Bosnia and Herzegovina.
2. The Domain Names and Registrars
The disputed domain names and (the "Domain Names") are registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 13, 2003. On May 13, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the Domain Names at issue. On May 13, 2003, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 16, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2003. The Response was filed with the Center on June 5, 2003.
The Center appointed Brigitte Joppich as the sole panelist in this matter on June 13, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. On June 13, 2003, the Center informed the parties that the date of the decision had been changed to June 30, 2003, due to exceptional circumstances.
On June 13, 2003, the Panel was informed that the Center had received two supplemental filings from the Complainant and again on June 27, 2003, that the Center had received supplemental filings from both parties. The Panel decided not to take any of them into consideration under paragraph 12 of the Rules and informed the Center accordingly in both cases.
4. Factual Background
The Complainant is a bank in Bijeljina, Bosnia and Herzegovina, doing business since June 17, 1999, under the name of NOVA BANKA AD Bijeljina. The Complainant was previously named EXPORT BANKA AD Bijeljina.
The Complainant's current name is widely known in that area and the firm is listed in World's Banker's Almanac. The Complainant is cooperating with Europay, Eurogira, SWIFT, Western Union and many other organizations under its name and is Europay's principal partner in Bosnia and Herzegovina.
The Respondent is IRIS, a company engaged in the production, planning and engineering of computer and information technology systems, having its seat also in Bijeljina, Bosnia and Herzegovina. The firm has been registered with the basic court in Bijeljina since April 7, 2000.
5. Parties� Contentions
A. Complainant
The Complainant contends that each of the three elements specified in Paragraph 4(a) of the Policy are given in the present case, i.e.
(i) the Domain Names are identical to the name of the bank NOVA BANKA;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names:
- the Respondent has no right to do banking business in Bosnia and Herzegovina in the absence of a banking license and therefore cannot have a legitimate interest in the Domain Names;
- the Respondent is not commonly known by the Domain Names.
(iii) the Domain Names were registered and being used by the Respondent in bad faith:
- the Respondent registered the Domain Names after Mr. Simeunovic, the head of IRIS, the Respondent, heard during an informal meeting with staff members of the Complainant that such registrations were required and later even billed the Complainant for the registration of the Domain Names. A contract concerning these registrations has never been concluded between the Complainant and the Respondent;
- the Respondent registered its employees as administrative contact and other contacts for the Domain Names and used the address of an office of the Respondent;
- on request, the Respondent refused to change the administrative contact data to those of a person authorized by the Complainant;
- the Respondent changed the Registrar and at the same time the ownership of the Domain Names from NOVA BANKA to IRIS;
- therefore, the Respondent only registered the Domain Names to blackmail the Complainant.
B. Respondent
The Respondent contends that in summer 1999 an agreement with the Complainant was concluded to develop a banking information system. The Respondent decided to call this product Nova Banka and thus registered the Domain Names for Nova Banka, Trifka Grabeza 8, 76300 Bijeljina, which was the address of an office of the Respondent, and not for the Complainant NOVA BANKA AD Bijeljina, Svetog Save 46, 76300 Bijeljina.
The change of the registry from Nova Banka to IRIS occurred when the Respondent had closed its branch at the address Trifka Grabeza 8.
The product Nova Banka was supposed to be sold not only to five or ten local banks but also abroad. The Domain Names were registered for this purpose. The Respondent did, however, not register and because it did not want to disrupt the Complainant's business (otherwise it would have registered these domain names as well).
6. Discussion and Findings
Under Paragraph 4(a) of the Policy the Complainant must prove that each of the following three elements are present:
(i) the Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Domain Names are and . NOVA BANKA AD Bijeljina is the company name of Complainant in which Complainant claims common law trademark rights. Such rights have not been denied by the Respondent and are therefore accepted by the Panel, given the use of company name.
The question is whether a company name in which Complainant has common law trademark rights enjoys protection under the Policy. The Policy does not require that a trademark be registered in order to be invoked. Common law trademark rights can indeed be vested in names and signs on the basis of the use which is made thereof, even in the absence of a trademark registration. The Panel therefore finds that the Complainant can rely on its rights in the name "NOVA BANKA AD Bijeljina" in this administrative proceeding.
Furthermore, the distinctive parts of this name are the words "NOVA BANKA", the rest is merely descriptive.
The Domain Names are identical to the company name NOVA BANKA - in which the Complainant has rights - as spaces cannot appear in Domain Names and the global top level domain name identifications and have no distinctive function. The Complainant has therefore satisfied the requirements of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if proved by the Respondent, shall demonstrate its rights to or legitimate interests in the Domain Names for purposes of Paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As the Respondent is neither known as NOVA BANKA nor contends to make a legitimate noncommercial or fair use of the Domain Names, it could only rely on rights or legitimate interests in the Domain Names in connection with a bona fide offering of goods and services under Paragraph 4(c)(i) of the Policy.
The Respondent asserts that it has developed a software product (banking information system) under the name Nova Banka. Respondent has not demonstrated to the Panel in any way that such product exists. The Panel was neither provided with contracts between the Respondent and any of its customers regarding such product nor with any other facts related to the existence of such product. If indeed developed since 1999 under the alleged name Nova Banka, it should not have been difficult to present the Panel with supporting evidence.
The Respondent has used the disputed Domain Names only to point to Complainant's websites. If the Respondent planned to sell its product not only domestically but also abroad, such use of the Domain Names would cause confusion amongst the Respondent's potential customers. The choice of this product name - identical to the company name of one of the Respondent's potential customers (the Complainant) - rather suggests that the product (if at all) was only developed for the Complainant. This is, however, not sufficient to establish any rights of the Respondent in such product name.
The Panel therefore sees no rights of the Respondent to or legitimate interests in the Domain Names and finds that the Complainant has also satisfied the requirements of Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4(a)(iii) of the Policy shall be evidence of the registration and use of the Domain Name in bad faith, including
(i) circumstances indicating that the Respondent has registered or acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Domain Names; or
(ii) the Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted 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 the Respondent's website or location or of a product or service on its website or location.
The four criteria established by paragraph 4(b) of the Policy are non-exclusive. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
The Respondent has registered the Domain names after a meeting with representatives of the Complainant in the summer of 1999 when Respondent apparently overheard that such registration was planned. The Respondent was aware of the company name and the business of the Complainant when registering the Domain Names on October 18, 1999.
The fact that the Complainant received an invoice for the registration of the Domain Names from the Respondent supports the assumption that the registration was originally meant to be not for the Respondent's own purposes but for those of the Complainant. Therefore, the registration of the Domain Names with the address of the Respondent and the Respondent's employees as administrative contact in the absence of an agreement on the registration is to be considered as a bad faith registration.
In addition to this bad faith registration the Domain Names also must have been used in bad faith by the Respondent. The Respondent has always used the Domain Names to point to the Complainant's official website. The Panel has to consider whether this is bad faith usage since the Domain Names were in fact used for the Complainant's business, however, at the discretion of the Respondent.
It is generally agreed that not only active but also passive usage of a domain name can constitute bad faith use (see in particular Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003, upholding that bad faith usage must be assumed when the registration is undertaken in bad faith and the circumstances of the case are such that the respondent continues to act in bad faith), and it is found by this Panel that certain facts accompanying a prima facie good faith looking usage must be considered as use in bad faith.
The Complainant - for whom the Domain Names were originally intended in the opinion of this Panel - asked the Respondent several times in vain for a change of the Registry. Requests for changes met with slow responses. The change of the Registrar together with the change of the name of the owner of the Domain Names to the Respondent came as a surprise to the Complainant and proves that the Respondent acts in its own interest only and proceeds at its own discretion with regard to the Domain Names. Finally, as Complainant has contended and Respondent has not denied, Respondent stated that the control over the Domain Names "is the one and only protection" of its "interests in Nova Banka". All this leads to the assumption that the Respondent tries to get benefit in money's worth out of the Domain Names. Even if the Respondent never tried to sell or rent the Domain Names to the Complainant for an amount of money exceeding the Respondent's out-of-pocket costs, it continuously exercises pressure over the Complainant.
This, in the view of the Panel, constitutes bad faith use of the Domain Names.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names and be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Date: June 30, 2003
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