WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Malayan Banking Berhad v. Beauty, Success & Truth International Case No. D2008-1393 1. The Parties
The Complainant is Malayan Banking Berhad, Malaysia, represented by Shahrizat, Rashid & Lee, Malaysia.
The Respondent is Beauty, Success & Truth International, Hong Kong, SAR of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2008. On September 15, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On September 15, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the Respondent. 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 September 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 16, 2008.
The Center appointed Harini Narayanswamy, Richard Tan and Linda Chang as panelists in this matter on November 24, 2008. 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 a Malaysian bank and financial group. It uses the mark “Maybank” for its banking and related services. The Complainant has provided the listing of its registered trademarks and its pending applications in Malaysia and internationally.
The list of its Malaysian trademark applications and registrations, under classes 16 and 36 is given here:
Serial No . Trademark Trademark application / Registration No. Class Status
1.
Maybank and Device
93001005
16
Registered
2.
Maxi Home Maybank Loan
90003424
16
Registered
3.
MaybankU2.Premier
07009749
36
Pending
4.
Kampulan Maybank & Device
07001852
36
Pending
5.
Maybank Mayfin Center
05001658
36
Registered
6.
Maybankard Treats
04015973
16
Registered
7.
Maybankard Treats
04015972
36
Registered
8.
Maybankard
04007186
36
Registered
9.
Maybank Group & Device
04005000
16
Registered
10.
Maybank2E.Net
03003540
36
Registered
11.
Maybank Group and Tigerhead
02008114
36
Pending
12.
Kampulan Maybank
02008113
16
Registered
13.
Maybank2U.Com
Device
01013224
36
Registered
14.
Maybank & Device
01001951
36
Registered
15.
Maybank 2U.Com
00007476
36
Registered
16.
Maybank International
00004967
36
Pending
17.
Maybank International
00004965
16
Registered
The Respondent, as confirmed by the registrar and apparent on the publicly available WhoIs, is Beauty, Success & Truth International. Its administrative contact and name appears to be Net Source Asia Ltd. Both the entities, Beauty, Success & Truth International and Net Source Asia Ltd., have the same contact address in Hong Kong. The Respondent's technical contact address is that of the Registrar's, namely Network Solutions, LLC, in the United States.
The disputed domain name, which was registered on June 9, 1998 by the Respondent, has an expiration date of June 8, 2010. The present dispute has therefore been filed a decade after the registration of the domain name. 5. Parties' Contentions A. Complainant
The Complainant contends that it has used the MAYBANK marks since the year 1993. Its marks have been widely publicized. According to the Complainant, for the financial year ending in 2007, an amount of RM 53.2 million was spent on advertisements in Malaysia and RM 21.4 million was expended on international promotions.
The Complainant claims to be the largest bank and financial group in Malaysia with several domestic and international branches. Its international branches include those in Brunei, Singapore, Papua New Guinea, Indonesia, Vietnam, The People's Republic of China, New York and London. The Complainant also alleges that it was one of the first Malaysian banks to have provided online banking services, through its website “”, beginning in the year 2000. The Complainant is also the owner of other domain names incorporating its trademark such as: , , , , and .
The Complainant asserts that the disputed domain name is identical to its trademark “Maybank” except for the capital letter “M” in the mark. Use of capital or small case letters, or the generic top level “.com” suffix, are inconsequential for comparing the domain name with the mark, argues the Complainant. (Citing Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503).
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons: there is no evidence to suggest that the Respondent is commonly known by the disputed domain name or that it uses “Maybank” as a trade name; the website linked to the disputed domain name appears to be under construction and it is not being used for a bona fide offering of goods or services; and further, the Respondent appears, as expressed in its name, to be an entity in the beauty business in Hong Kong and does not appear to be in the area of banking.
The Complainant alleges that the Respondent had knowledge of its mark when registering the domain name, due to the Complainant's prior use of the mark (as early as 1990 in Malaysia and from 1996 in Hong Kong). The Complainant states that the mark, which is descriptive of the Complainant's services, is being used by the Respondent in the disputed domain name in order to bait Internet users, and that such use does not give rise to a right or legitimate interest therein.
Based on the principles enunciated in Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455, the Complainant argues that when a prima-facie case is made by the Complainant showing that the Respondent lacks rights, the burden shifts to the Respondent to establish its rights or legitimate interests.
Finally, the Complainant asserts that the Respondent has registered and used the disputed domain name in bad faith because the Respondent has registered the domain name primarily for either selling it to the Complainant or for commercially exploiting it. Further, the Respondent has intentionally attempted to confuse Internet users and attract them to its on-line location for commercial gain by using a domain name which is identical or confusingly similar to the Complainant's mark.
A cease and desist letter, dated October 17, 2007, sent by Complainant to the Respondent and the Complainant's subsequent offer to purchase the disputed domain name for USD 100 (on November 21, 2007, sent through Network Solutions) have evoked no response from the Respondent. The Complainant believes that the lack of response is due to an incorrect contact address provided by the Respondent and published on the publicly available WhoIs, which also shows the Respondent's bad faith at the time of registration.
The Complainant refers to Ferrari S.p.A. v. American Entertainment Group, Inc., WIPO Case No. D2004-0673, and asserts that the disputed domain name in the present case, like in the Ferrari case, has been registered to exploit the fame of the mark in a bid to attract Internet users to the Respondent's website. Such continuous exploitation of the mark in the domain name (albeit via intermittent passive holding), constitutes bad faith “use” under the Policy. The Complainant requests the transfer of the domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy requires the Complainant in a domain name dispute to establish the three elements given under paragraph 4 (a) of the Policy to obtain the remedy of transfer or cancellation of the domain name. These three elements are:
(a) The domain name registered by the Respondent is identical or confusingly similar to a mark in which the Complainant has rights; and
(b) The Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first element under paragraph 4(a), requires the Complainant to establish that the disputed domain name registered by the Respondent is identical or confusingly similar to a mark in which it has rights.
The Complainant has provided adequate documentary evidence of its ownership rights in the “Maybank” marks. The Panel notes that the Complainant's earliest trademark registration dates back to 1990. Further, the Complainant has established the international reputation of its “Maybank” marks and has also provided evidence of its registered trademark rights in Hong Kong (the apparent location of the Respondent) since 1996.
The Panel finds the disputed domain name consists entirely of the Complainant's “Maybank” mark and the gTLD suffix “.com”. The gTLD suffix is generally disregarded while assessing the identity or confusing similarity between the disputed domain name and the Complainant's mark. The Panel finds validity in the Complainant's argument that the mere substitution of the first capital letter in the mark with a corresponding lower case letter in the domain name is not a significant difference when making an overall comparison between the domain name and the mark.
The Panel therefore finds the disputed domain name is virtually identical to the Complainant's trademark “Maybank”, and that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to, at minimum, present a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once the Complainant has made a prima facie case, the burden shifts to the Respondent to refute the Complainant's averments and to show that it has rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1)
As the Respondent here has not filed a response, the Complainant's assertions remain unchallenged by the Respondent. Based on an assessment of the evidence on record, the Panel finds there is no indication that the Respondent has been commonly known by the disputed domain name or that it has used the disputed domain name for a bona fide offering of goods or services.
Further, the Complainant has categorically stated that it has given no authorization to the Respondent to use its mark in the disputed domain name and there exists no connection between the Parties. This establishes that Respondent is not a licensed or authorized user of the Complainant's “Maybank” mark. In the absence of any evidence to show the Respondent's rights as discussed above, the Panel finds that the use of the Complainant's mark in the disputed domain name is not a legitimate use, particularly when the Complainant has not authorized its use.
The manner of use of the disputed domain name is also germane for determining rights and legitimate interests. The use of a domain name which is identical or confusingly similar to the Complainant's trademark with an intention of deriving advantage from user confusion and diverting Internet users to other commercial sites does not confer legitimate rights on the Respondent. See for instance, Bridgestone Corporation v. Horoshiy, Inc.,WIPO Case No. D2004-0795.
The Panel is satisfied that the Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy and that the Respondent lacks rights and legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered and used in bad faith by the Respondent.
Paragraph 4(b) of the Policy enumerates a set of four circumstances, any of which, if found to be present, would demonstrate that the disputed domain name was registered and used in bad faith by the Respondent. The Complainant in the present case alleges bad faith on two grounds under paragraph 4(b):
- Under paragraph 4(b)(i) , the Complainant has alleged that the Respondent has registered the disputed domain name for the primary reason of selling it to the owner of the trademark, (the Complainant), for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name.
- Under paragraph 4(b)(iv), the Complainant has alleged that the Respondent has intentionally attempted to attract Internet users to its site by creating a likelihood of confusion as to the source, sponsorship, affiliation and endorsement of its site.
As the set of circumstances listed under paragraph 4(b) does not constitute a comprehensive listing, the Complainant can rely on other facts and circumstances to prove bad faith registration and use of the disputed domain name. The Complainant has made two other submissions regarding bad faith registration and use of the disputed domain name:
- Passive holding (with intermittent use) is considered bad faith use.
- Providing of false contact information by the Respondent at the time of registration is evidence of bad faith registration.
The Panel finds the allegation made by the Complainant under paragraph 4 (b)(i), that the disputed domain name was registered primarily for purposes of selling to the Complainant for valuable consideration, is unsubstantiated. The Respondent has held the disputed domain name for a period of about ten years. There is nothing on record to indicate that the Respondent had at any time, during these ten years, tried to sell the disputed domain name to the Complainant or put it for sale to the public.
The Complainant has offered no evidence to support the allegations made under paragraph 4(b)(i). For the reasons discussed, the Panel finds that the Complainant has failed to establish that the disputed domain name was acquired primarily for purposes of selling, renting or otherwise transferring it to the owner of the trademark or its competitors for valuable consideration.
Regarding the allegation of bad faith made under paragraph 4(b)(iv) by the Complainant that the Respondent has intentionally attempted to attract Internet users to its site by creating a likelihood of confusion as to the source of sponsorship, the Panel has considered the evidence and draws the following conclusions:
The Complainant has established that the “Maybank” marks and its group's activities in the banking business are well known. Further, the print out of the Respondent's website shows that the Respondent has placed links to other sites such as “Malaysian Credit Cards” and “Open Savings Account”.
Placing of links per se on a website in anticipation of deriving revenue can as such be considered a legitimate form of business. However, placing links on a site which uses a third party's trademark in a domain name to generate Internet traffic in an attempt to attract more visitors, by exploiting the goodwill of the mark, has been recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy. (See Bayer HealthCare LLC v. Shen Kaixin, WIPO Case No. D2008-1350). Although the Respondent has not built an active website, it has put up links to other sites directly competing with the Complainant in the area of finance and banking, which the Panel finds is an attempt to mislead the public and create a false association with the Complainant.
The Respondent here is clearly trying to capitalize on the user confusion of the users trying to reach the Complainant's web site. The preponderance of evidence on record establishes that the Respondent has incorporated or used the Complainant's mark in the disputed domain name in a bad faith attempt to intentionally create a likelihood of confusion as to the source, sponsorship, affiliation and endorsement of its site. The Panel therefore finds that bad faith is proven as per the circumstances mentioned in paragraph 4(b)(iv) of the Policy.
Panels have consistently held that passive holding of domain names can, under certain circumstances, be considered bad faith use of the domain name. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Polaroid Corporation v. Jay Strommen,WIPO Case No. D2005-1005. As alleged by the Complainant, passive holding which is interspersed with sporadic or intermittent use of the disputed domain name, as in the present case, has also been found to be bad faith use. See Ferrari S.p.A. v. American Entertainment Group, Inc., WIPO Case No. D2004-0673.
As the attempts made by the Complainant to contact the Respondent have proved futile, the Complainant has alleged that the Respondent has intentionally provided incorrect contact information to evade service. The Panel can make reasonable inferences if the Respondent has provided an incorrect address or has used a post office box number as its address. See The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340.
The Panel is convinced that the preponderance of the evidence, combined with the inferences drawn due to the Respondent's failure to respond, shows that the Respondent has registered and used the disputed domain name in bad faith. Accordingly, it is found that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
Harini Narayanswamy
Presiding Panelist
Richard Tan
Panelist
Linda Chang
Panelist
Dated: December 8, 2008
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