WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Habib Bank AG Zurich v. Dave West
Case No. D2004-0041
1. The Parties
The Complainant is Habib Bank AG Zurich, London, United Kingdom of Great Britain and Northern Ireland, represented by CMS Cameron McKenna, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mr. Dave West, Washington, WA, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name is registered with BulkR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 19, 2004. On January 20, 2004, the Center transmitted by email to BulkR a request for registrar verification in connection with the domain name at issue. On the same day, BulkR 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 February 9, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 29, 2004. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent�s default on March 10, 2004.
The Center appointed P-E H Petter Rindforth as the sole panelist in this matter on March 18, 2004. 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.
The Projected Decision Date was April 1, 2004. The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant, founded in 1967, is an international bank, owned and managed by the Habib family and providing various banking and financial services to customers throughout its network of over 35 branches around the world. The Habib family have been actively involved in the banking industry for over 150 years.
In 2001, the banking services offered by the Complainant resulted in approximately US$112 million in profits and the Complainant has spent substantial sums in advertising/marketing their banking services (financial report for 2001, provided as Annex 4 of the Complaint).
The Complainant has registered trademarks containing the words "HABIB BANK" for banking and related goods and services in the UK, Europe and worldwide (copies of a renewal certificate for the UK trademark, registration number for the Community Trademark and details of the UK part of two international registrations from the UK Patent Office website are provided as Annex 5 of the Complaint). The Complainant has been known by the trademarks since approximately 1986.
The Complainant has registered the domain names , and at which it provides online banking services. The Complainant�s websites are used by approximately 6,000 customers worldwide.
The Respondent registered the Domain Name on December 11, 2003, (Annex 1 of the Complaint), however no specific information is provided about the Respondent�s business activities (apart from what is mentioned below under 5A).
5. Parties� Contentions
A. Complainant
The Complainant states that it is a leading and well-known international bank, with substantial goodwill and international recognition in the Habib Bank AG (Zurich) name. The Complainant therefore claim common law rights in the said name, apart from the rights derived from the trademark registration.
HABIB BANK AG (ZURICH) is a registered trademark and the word "Habib" is the family name of the founding members and current general managers of the bank. The disputed Domain Name replicates the distinctive part of the trademark and the family name, as the Domain Name consists of the words "HABIB BANK" but with only one "B" between the words "HABIB" and "BANK". The Domain Name is therefore identical or confusingly similar to the Complainant�s marks and rights in the name.
The Respondent is not associated or otherwise connected with the Complainant, he is not an authorised representative or agent of the Complainant and neither has he been licensed to use the trademarks by the Complainant. The Respondent is not commonly known by the Domain Name.
The Domain Name was until recently resolved to an active website, which contained an identical copy of the Complainant�s website (Copies of the two websites provided as Annex 7 and 8 of the Complaint). By registering and making use of the Domain Name the Respondent is knowingly infringing the Complainant�s rights.
The Complainant concludes that sole purpose of the Domain Name and the website to which it resolved was to attract the Complainant�s customers to the website in the mistaken belief that they had accessed the Complainant�s website. Thereafter the Complainant�s customers could unwittingly provide the Respondent with their confidential bank account details and pin numbers as they attempt (mistakenly) to access their account details at the supposed website of the Complainant, potentially for fraudulent purposes.
The website, when in use, contained no notice or disclaimer stating that it was neither associated nor connected with the Complainant, and the Respondent�s website was identical in content to the website of the Complainant. Therefore the Respondent uses the Domain Name for the purposes of (i) tarnishing the trademarks and the goodwill of the Complainant and (ii) deceptively acquiring the Complainant�s customer�s private banking log-in details for potentially fraudulent purposes.
At the beginning of January 2004, the Complainant�s representatives wrote to the authorities alerting them to the fraud and to the Registrant (copy correspondence provided as Annex 8 of the Complaint). Although the website has since been closed down (as of January 15, 2004), the Respondent previously suspended and then "re-activated" the website during the first few weeks of January 2004.
In relation to the requirement for use in bad faith the Complainant refers to the Telstra Case (WIPO Case No. D2000-0003), finding that the question is whether in all the circumstances the Respondent is acting in bad faith and that the concept of a domain name "being used in bad faith" is not limited to positive actions. The Complainant asserts that the Respondent�s prior use of the Domain Name combined with the Respondent�s passive holding of the Domain Name does fall within the Panel�s criteria and reasoning in the Telstra case as satisfying the "use in bad faith" requirement.
The Complainant requests, in accordance with Paragraph 4(i) of the Policy, that the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent�s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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.
A. Identical or Confusingly Similar
The disputed Domain Name is .
The Complainant holds trademark registrations in the UK for the word mark HABIB BANK AG ZURICH, and for a figurative mark incorporating the words HABIB BANK AG ZURICH in the UK, European Union and a number of other countries.
Further, the Complainant claims to have common law trademark rights in the HABIB BANK / HABIB BANK AG ZURICH name.
The visual and phonetically similarities between "habibank" of the Domain Name and the distinctive part HABIB (BANK) of the Complainants registered word mark are obvious. The Domain Name contains of the family name of the owners of the banking business and the descriptive word BANK (with one letter "B" missing), whereas the trademark contains of the family name, the descriptive terms BANK and AG, as well as the name of the Swiss city Zurich.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant�s registered trademark.
B. Rights or Legitimate Interests
HABIB BANK (AG ZURICH) is a well established trademark for the Complainant�s banking services, and as such distinctive. It is also the significant part of the Complainant�s company name and HABIB is the family name of the owners of the bank.
The Respondent has not filed any evidence to prove any rights to use the Complainant�s trademark, nor has he filed any documentation indicating rights or legitimate interests in HABIBANK or HABIB BANK.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Respondent is domiciled in the United States of America, whereas the Complainant is a Swiss company.
The Complainant claims to be a "well-known international bank", serving customers "throughout its network of over 35 branches around the world" and to be the owners of trademarks containing the words HABIB BANK "worldwide", but this Panel notes that the Complainant has filed no evidence of any business activities within the USA, nor is it claimed to have any registered or specific common law rights within the USA.
However, considering that the Domain Name consists of the family name HABIB and the word BANK (except for one letter B) and the fact that it was resolved to a website more or less identical to the Complainant�s website, the Panel concludes that the Respondent obviously must have prior knowledge of the Complainant and registered the Domain Name with the Complainant specifically in mind.
As stated by the Complainant, the website at the Domain Name used not only the Complainant�s registered trademarks, but also their distinctive "Lion logo", distinctive colours and the address of the Complainant. To this Panel, the conduct of the Respondent seems to be a clear case of using the Domain Name to intentionally attempt to attract - for commercial gain - Internet users to the Respondent�s website by creating a likelihood of confusion with the Complainant�s mark and services.
The website closed the same day as the Complainant sent the cease and desist letter to the Respondent, but the Respondent has indeed already shown its purposes of using the Domain Name to harm the business of the Complainant, to divert and cause confusion to both potential and current customers of the Complainant and moreover, to acquire the financial details of the Complainant�s customers.
Thus, this Panel concludes that the Domain Name is both registered and used in bad faith.
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 name, be transferred to the Complainant Habib Bank AG Zurich.
P-E H Petter Rindforth
Sole Panelist
Dated: March 31, 2004
Full & Egal Universal Law Academy