WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
United Overseas Bank Limited v. Katarzyna Bieniek
Case No. D2006-1445
1. The Parties
The Complainant is United Overseas Bank Limited, Singapore, represented by Rajah & Tann, Singapore.
The Respondent is Katarzyna Bieniek, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Hostlane Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2006. On November 14, 2006, the Center transmitted by email to Hostlane Inc. a request for registrar verification in connection with the domain name(s) at issue. On November 14, 2006, Hostlane Inc. 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 7, 2006. The Center verified that the Complaint together with the amendment to 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 December 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December�26, 2006. The Response was filed with the Center on December 26, 2006.
The Center appointed Alistair Payne, Tony Willoughby and Timothy D. Casey as panelists in this matter on February 15, 2007. The Panel finds that it was properly constituted. Each member of 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.
4. Factual Background
The Complainant is United Overseas Bank Limited, a bank in Singapore which provides a wide range of financial services through a global network of branches, offices and subsidiaries. The Complainant was established in 1935, and owns numerous trade mark registrations in Singapore containing UOB, (the “UOB Marks”). The earliest of the UOB Marks was registered in 2000. The Complainant has earlier trade mark registrations for “United Overseas Bank”, which date from 1971.
The Respondent registered the Disputed Domain Name on October 22, 2006.
5. Parties’ Contentions
A. Complainant
The Complainant submits that W searches conducted on July 7, 2006, October�30, 2006 and November 6, 2006 showed that the owner of the Disputed Domain Name at each of these dates was Moniker Privacy Services, Mike Yu and the Respondent, respectively. The Complainant believes that the various transfers of ownership of the Domain Name in such a short period of time have been carried out in bad faith so as to evade any possible action, which the Complainant may take against the Domain Name owner. The Complainant further believes that the transfers were prompted by the receipt of the various cease and desist letters sent to Moniker on July�21, 2006 and to Mike Yu on October 31, 2006.
The Complainant submits that, as a leading bank in Singapore with a significant presence in Asia-Pacific, it is widely recognised and associated with the abbreviation “UOB”. The Complainant provides a wide range of financial services and has diversified interests in travel, leasing, property development and management, hotel operations and general trading. In addition to the Complainant’s headquarters in Singapore, the Complainant has a global network of over 500 offices in various countries, including the United States of America.
The Complainant asserts that it has invested a great deal of time and effort and sizeable advertising and marketing expenditure in promoting the UOB Marks in relation to its business operations and has therefore, acquired substantial goodwill and reputation both internationally and in Singapore in relation to the UOB Marks and in the name “United Overseas Bank” and its abbreviation “UOB”. The Complainant submits that the general public and business community have come to associate and identify the UOB Marks, the name “United Overseas Bank” and its abbreviation “UOB” exclusively with the Complainant and no other. The Complainant is also the registrant of many top level domain names which include “UOB”.
The Complainant submits that the Disputed Domain Name is identical to the abbreviation which is present in a majority of the UOB Marks and confusingly similar to the abbreviation for the Complainant’s name, “United Overseas Bank”. The Complainant also owns various entities engaged in the banking business, such as “UOB Asset Management”, “UOB Life Assurance”, “UOB Venture Management”, and “UOB Kay Hian”.
The Complainant also contends that it has clear rights in the UOB Marks and its name “United Overseas Bank Limited”. It is well established under the Policy that a complainant’s registration of a mark with a relevant authority establishes a prima facie case of the complainant’s rights in the mark and a presumption of rights in the mark. The Complainant has registered the UOB Marks in the Republic of Singapore and submits that on this basis, it has rights in the UOB Marks. In the alternative, the Complainant submits that it is also well established that the Policy protects rights in unregistered trade marks.
In order to demonstrate the long-standing reputation and goodwill which the Complainant asserts it has acquired over the years in the mark UOB the Complainant has annexed to the Complaint some photographs of UOB Plaza with various signage referring to the mark UOB and newspaper articles in the Business Times, a national newspaper in Singapore, which states that the Complainant is among the world’s top 100 banking brands. The Complainant submits that this shows the international reputation and goodwill which the Complainant has gained over the years. In addition, the Complainant submits that a Google search for the term “UOB” reveals a long series of references to the Complainant and that none of the search results refer to the Respondent’s website or the Disputed Domain Name.
The Complainant contends that it is not possible that the Respondent’s use of, or demonstrable preparation to use the Disputed Domain Name was in connection with a bona fide offering of goods and services before it had any notice of the dispute.
The Complainant further contends that it is highly unlikely and almost impossible that the Respondent was not aware of and did not associate the name “United Overseas Bank” and its abbreviation “UOB” with the Complainant when it registered the Disputed Domain Name, as the Complainant was established in 1935, and is known locally and internationally in the banking industry.
The Complainant has not authorized the Respondent to use the UOB Marks and or its name, nor is the Respondent a licensee of the Complainant. The Complainant, therefore, submits that the Respondent has no good or legitimate reason at all to register the Disputed Domain Name.
In the Complainant’s view, it is abundantly clear that Moniker was using the Disputed Domain Name to divert Internet users searching for information regarding the Complainant’s registered trade marks to the website which features a generic search engine and links to various products and services, some of which may be in direct competition with the Complainant’s business.
The Complainant asserts that it can be established that the Respondent has registered the Disputed Domain Name for the purpose of selling it, on the basis that a bid may be submitted on Moniker’s website to buy the Disputed Domain Name. The Complainant submits that the Respondent registered the Disputed Domain Name in order to prevent the Complainant from reflecting the UOB Marks in a corresponding domain name. Further, the Respondent has not shown that it, as an individual, business or other organisation, has been commonly known by the Disputed Domain Name.
The Complainant asserts that in the circumstances, the Respondent has acted in bad faith, indicated by the fact that the Complainant owns various trade marks with the abbreviation UOB; there has been no response elicited from the Respondent or the previous owners of the Disputed Domain Name, seemingly due to the suspicious transfers of ownership in a short span of time; and there can be no conceivable reason for using the Disputed Domain Name in good faith.
The Complainant has received offers from a Michael Schrobo to place a bid for the sale of the Disputed Domain Name in a private auction. The Complainant submits that although these emails prima facie do not seem to originate from the Respondent, these emails give cause to the Complainant to believe that the Disputed Domain Name is being traded on the Internet publicly and that the Respondent does not own the Disputed Domain Name in good faith. The unsolicited emails from Michael Schrobo coincided with the recent and rapid transfers of ownership and the Complainant submits that such circumstances are highly indicative of registration and/or ownership in bad faith.
In addition, the Complainant asserts that the Respondent’s use of an identical version of the Complainant’s distinctive trade marks in the Disputed Domain Name creates a likelihood of confusion and suggests an attempt to attract Internet users to the website for the Respondent’s commercial gain.
B. Respondent
The Respondent submits that at the time the Disputed Domain Name was registered, United Overseas Bank did not have an enforceable trade mark in the United States.
The Respondent purchased the Disputed Domain Name in an auction held by S on October 25, 2006 for $30,249. The Respondent submits that the Disputed Domain Name had expired and was then registered as a new domain name and that it was never transferred to the Respondent by Moniker or anyone else.
The Respondent asserts that the registrar Hostlane Inc. had mistakenly inserted Mike Yu in the “whois” details for the Disputed Domain Name. The Respondent updated the “whois” information as soon as possible after purchasing and paying for the Disputed Domain Name. The Respondent contends that this is evidence of good faith as ICANN regulations and the registration agreement with Hostlane Inc. require “whois” information to be accurate and kept up to date. Further, the Respondent never received a cease and desist letter from the Complainant. The Respondent submits that the Complaint fails to draw a clear distinction between the Respondent and the previous owner.
The Respondent has never profited from the Disputed Domain Name or tried to sell it. The Respondent submits that all of the accusations made in the Complaint pertain to the previous owner of the Disputed Domain Name. The Respondent asserts that the Disputed Domain Name is not listed for sale at Moniker, however it is possible to make an unsolicited offer for a registered domain name through Moniker.
The Respondent denies any connection or knowledge of Mike Schrobo. The Respondent alleges that the emails from Mr. Schrobo prove that the Complainant knew that the Disputed Domain Name was in auction before the Complaint was filed.
The Respondent asserts that, having never heard of United Overseas Bank, the Respondent could not have registered the Disputed Domain Name in bad faith. The Respondent states that the Complainant does not have any bank branches in the United States, nor does it operate any businesses in the United States. Moreover, at the time the Disputed Domain Name was registered, the Complainant did not have a trade mark of any kind in the United States. The Complainant has presented no evidence that it has ever conducted business in the United States or that it has advertised in the United States. The Complainant has not presented any evidence to suggest that the UOB Marks are known in countries other than Singapore.
The Respondent states, referring to previous Panel decisions, that the existence of a foreign trade mark does not put a domain registrant on notice where the registrant resides in a country other than where the trade mark is registered.
The Respondent notes that she has not used the Disputed Domain Name, having received notice of the dispute shortly after buying it and deciding to await the decision of the Panel. The Respondent did not have the opportunity to use the Disputed Domain Name or to make preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Respondent claims that she purchased the Disputed Domain Name because UOB stands for “Units of Behavior” and would be a clever name for a blog. Her evidence establishes that UOB is an accepted acronym for inter alia “Units of Behavior”. Other reasons given by the Respondent for purchasing the Disputed Domain Name were because it is a 3-letter combination which is easily remembered and easily typed and also the appearance and sound of “UOB”. The Respondent noted previous Panel decisions which state that there is no requirement under the UDRP that the meaning of a disputed domain name should have any correlation to the substance of the website it promotes.
The Respondent stated that she paid a high price for the Disputed Domain Name because it was generic. The Respondent referred to various previous Panel decisions which state that 3-letter combinations are generic. The Respondent further contends that domain names incorporating arbitrary 3-letter combinations, even those containing common dictionary words, may be registered in good faith. The Respondent argues that such domain names establish a respondent’s legitimate interest per se.
The Respondent submits that the Complainant has failed to establish any of the four factors required for proving bad faith, as set forth in paragraph 4(a)(iii) of the Policy.
The Respondent asserts that the letters UOB are the initials of approximately 379,729 people in the world and that they are also subject to extensive third party use, such as acronyms for the University of Bristol, the University of Bergen, University of Bradford, etc.
6. Discussion and Findings
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
There are two separate elements that the Complainant must prove under paragraph 4(a)(i) of the Policy. First, that the Complainant has rights in a trade mark or service mark, and second, that the Disputed Domain Name is identical or confusingly similar to the trade mark in which the Complainant has rights.
The Complainant has established that it is the proprietor of two trade marks (one word mark and one device mark) which consist of “UOB” (Singapore trade mark nos. T0506912G and T0506910J) and a number of word and/or device marks containing “UOB”, all registered in Singapore. Although the Complainant owns trade marks dating back to 1971, only two of the UOB Marks (“UOB Mobil Banking Plus” Trade Mark Nos. T0002308J and T0002309I) predate the original registration of the domain name (July 20, 2000). However, registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identity or confusing similarity. The fact that the Disputed Domain Name predates the Complainant’s trade mark registrations may on the other hand be relevant to the assessment of bad faith pursuant to paragraph 4(a)(iii). See Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827, Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544, MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598, AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527.
Although the Complainant did not file substantial evidence of use or common law trade mark rights in UOB, it appears likely that United Overseas Bank, which has traded since 1935, is known and has developed some degree of goodwill in the acronym UOB when used as a trade mark. The fact that secondary meaning may only exist in a particular geographic area does not limit a complainant’s rights in a common law trade mark for the purpose of the first element of the Policy. See Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786.
The Disputed Domain Name is identical to at least one of the UOB Marks and/or to the common law trade mark, UOB. In the alternative, it is confusingly similar to the remaining UOB marks. Both visually and orally, the UOB element dominates the marks and will resonate immediately with consumers. This points to a likelihood of confusion between the Disputed Domain Name and the Complainant’s trade marks.
Accordingly the Panel finds that the Complaint fulfills paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The burden of proof rests with the Complainant to establish at least a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and it is then for the Respondent to rebut this assertion with evidence of her rights or legitimate interests. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel accepts the Complainant’s assertion that there is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has it otherwise obtained consent to use the UOB Marks or to apply for any mark which incorporates “UOB”.
However, on the record submitted, the Panel is unable to accept a number of the Complainant’s other assertions. For example, the Panel considers it unlikely that the Respondent registered the Disputed Domain Name in response to the cease and desist letters which the Complainant sent to Moniker and to Mike Yu. No connection has been established between the Respondent and either Moniker or Mike Yu. Further, the cease and desist letter which the Complainant sent to Mike Yu was sent on October�31,�2006, after the Respondent registered the Disputed Domain Name on October 22, 2006. Secondly, the Panel considers that the Respondent may have a valid reason for acquiring the Disputed Domain Name, without the opportunity to use the Disputed Domain Name or to make preparations to use the Disputed Domain Name in the short time between purchasing the Disputed Domain Name and receiving notification of the Complaint.
Nevertheless, in light of the Panel’s finding in relation to bad faith, it is unnecessary for the Panel to definitively address the issue of the Respondent’s rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, without limitation, any of which if found by the Panel to be present shall be evidence of the registration or subsequent use of the Disputed Domain Name in bad faith. None of these four circumstances apply in this case.
The Complainant argues that the various transfers of ownership of the Disputed Domain Name have been carried out in bad faith so as to evade any possible action which the Complainant may take against the Domain Name owner. As stated above, on the record before it, the Panel accepts the Respondent’s contention that she was not aware of the cease and desist letters sent by the Complainant to Moniker and Mike Yu. Further, the cease and desist letter was sent to Mike Yu after the Disputed Domain Name was registered to the Respondent and, therefore, any transfer or registration to the Respondent could not have been in response to this letter.
The Panel does not accept that the unsolicited emails from Michael Schrobo are necessarily indications of bad faith on the part of the Respondent. The Complainant has not established a connection between the Respondent and Michael Schrobo.
The Respondent asserts that she had no knowledge of the Complainant prior to notification of the Complaint. Although the Complainant mentions in the Complaint that it has an office in the United States where the Respondent is located, it has not introduced any evidence of a reputation within that country. Further there is no suggestion that the Complainant has registered trade mark rights in that country. Accordingly, there is nothing before this Panel to suggest that the Respondent’s assertion should be disbelieved.
Paragraph 4(a)(iii) of the Policy requires the Complainant to show, not only registration in bad faith, but also that the Disputed Domain Name is being used in bad faith. The Complainant asserts that the Respondent’s use of the Disputed Domain Name creates a likelihood of confusion and suggests an attempt to attract Internet users to the Website for the Respondent’s commercial gain. However, the Complainant’s evidence in support of this assertion appears to relate to prior registrants and not the Respondent. Given that the Complainant has failed to satisfy the Panel that the Respondent registered the Disputed Domain Name in bad faith, it is unnecessary for the Panel to address this issue. However, it is fair to point out that the Respondent only registered the Disputed Domain Name on October 22, 2006, and there is no evidence before the Panel of use in bad faith since that time.
The Panel finds that the Complaint does not fulfill paragraph 4(a)(iii) of the Policy
7. Decision
For all the foregoing reasons, the Complaint is denied.
Alistair Payne
Presiding Panelist
Tony Willoughby
Panelist
Timothy D. Casey
Panelist
Dated: March 6, 2007
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