WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Argenta Spaarbank NV v. Argenta, Mailadmin Ltd. Case No. D2009-0249 1. The Parties
Complainant is Argenta Spaarbank NV of Antwerpen, Belgium, represented by Baker & McKenzie CVBA, Belgium.
Respondent is Argenta, Mailadmin Ltd. of St. Petersburg, Russian Federation, represented internally. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with DomReg Ltd. d/b/a LIBRIS.com (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2009. On February 25, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 2, 2009, the Registrar transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing its contact details and stating that the language of the Registration Agreement is Russian. In response to a notification by the Center regarding the language of proceedings, Complainant filed a request for English to be the language of the administrative proceeding on March 9, 2009. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced March 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2009. The Response was filed with the Center on April 2, 2009.
The Center appointed Assen Z. Alexiev, Irina V. Savelieva and Milton L. Mueller as panelists in this matter on May 19, 2009. 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.
In relation to the language of the administrative proceeding, the Panel considered the following circumstances:
Prior to the commencement of this administrative proceeding, the parties have already communicated between each other in English. Complainant has requested English to be the language of the proceedings, without any objections being filed by Respondent in this regard. Both the Complaint and the Response are filed in the English language.
Therefore, the Panel is of the opinion that neither of the parties would be put at a disadvantage if English is chosen as the language of the proceedings.
On this basis, and on the grounds of the Rules, paragraph 11(a), and the Rules, paragraphs 10(a), (b) and (c), the Panel decided that the language of the administrative proceeding be English. 4. Factual Background
Complainant, Argenta Spaarbank NV, belongs to a bank and insurance group, operating in the Benelux and established in 1956. It is the fourth largest bank in Belgium, and the largest foreign mortgage provider in the Netherlands.
Complainant is the owner of the following trademarks:
- the Benelux combined trademark GROEP ARGENTA and device, registration no. 0152864, registered in 1987 for services in class 36, namely insurance and finance; and
- the Community trademark ARGENTA, registration no. 000280354, applied for on June 13, 1996, and registered on March 31, 2004, for services in class 36, namely insurance and finance.
Complainant is also the owner of the domain names , , , and .
The Domain Name was registered by Respondent on May 1, 2000. 5. Parties' Contentions A. Complainant
Complainant submits that the Domain Name is identical or confusingly similar to its trade mark ARGENTA.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name. It is unclear whether Argenta, Mailadmin Ltd., or Expresspost is the current registrant of the Domain Name.
Complainant points out that the domain name , registered by Mailadmin Ltd., and the domain name , registered by Expresspost, share one and the same IP address. A number of other domain names have been registered in the name of Expresspost, but with the address of Mailadmin Ltd. Complainant alleges that these circumstances make it clear that Mailadmin Ltd. and ExpressPost Ltd. are one and the same entity, or at least closely connected companies.
Complainant further submits that Respondent and ExpressPost Ltd. are connected to other companies in the area of St. Petersburg, namely DomainProtect LLC, Eurobox Ltd, BusinessService Ltd., and Percom Ltd. Respondent owns trademark applications and registrations in the Russian Federation which correspond to domain name registrations in the name of DomainProtect LLC. DomainProtect LLC is linked to Eurobox Ltd., because DomainProtect LLC owns the domain name . Other domain names corresponding to registered trademarks in the Russian Federation of Respondent are registered by other companies located in St. Petersburg, including ServicePoint. The company BusinessService Ltd. has the same address as Respondent, which is evident from the registration of the domain name . In other UDRP cases, Respondent is also linked to Percom Ltd., itself linked to ExpressPost and Eurobox, see Soda-Club (CO2) S.A. v. Percom Ltd. d/b/a WebB,WIPO Case No. D2005-0465. These companies were respondents in several UDRP decisions for the transfer of the respective domain names.
After the registration of the Domain Name, Respondent started to use it to host a parked website with content partly in English, and partly in Russian, which displayed systematically organized links to other websites. Several of these links related to financial products and services, identical to the products and services offered by Complainant, in particular links under the headings “Finance” and “Credit Cards”. The link “Credit Cards” lead to the website at “N”, which contained links to websites in relation to credits and loans, including to websites of competitors of the Complainant. The left column of the website contained the links “Finance” and “Investments” in Russian.
In the period September - November 2001, a website appeared at the Domain Name, where the latter was offered for sale by the law firm Votum. The same law firm has been mentioned in a previous UDRP decision, namely in Nutricia International B.V. v. Milupa,WIPO Case No. D2002-400, where ExpressPost Ltd. was Respondent, and where the website at the respective domain name had identical content.
As from November 2001, the Domain Name has not been used anymore to host a website. Complainant has not found any publicly available evidence of any other use of the Domain Name, e.g. for e-mail addresses.
On February 21, 2007, Complainant informed Respondent of its trademark rights and requested the transfer of the Domain Name against documented costs in relation to its registration. In its response in March 2007, Respondent stated that ARGENTA was its registered trademark in Russia, and that it was using the Domain Name for its projects. Respondent also stated that it was not interested in transferring the Domain Name to any third party, and invited Complainant to inform Respondent, before May 31, 2007, if the latter's activity violated Complainant's rights in any way. Complainant submits that this letter did not allege that any genuine use had been made of the Domain Name. Respondent's trademark registration in the Russian Federation has never been genuinely used for offering goods and services, and was registered in an attempt to justify the registration of the Domain Name, and to sell the trademark as a “package” with the Domain Name. Complainant notes that pursuant to the applicable Russian law, the legal protection of Respondent's trademark may be terminated due to its non-use for a period of more than three years.
Complainant contends that, in the period 1999-2000, Respondent has registered 14 “.com” domain names identical to Community trademark applications made in the period 1996 – 2000, or to registered Community trademarks of third parties. In Complainant's submission, it was statistically impossible for this to be a coincidence. Rather, this showed that Respondent had engaged in a pattern of registering “.com” domain names identical to trademarks or to trademark applications not reflected in a “.com” domain name.
Complainant further states that there is no indication of Respondent being commonly known by the Domain Name or of any legitimate non-commercial or fair use of the Domain Name by Respondent. Complainant has no relationship with Respondent, and Complainant has not licensed the use of its trademark to Respondent, nor has it granted Respondent any license or consent, express or implied, to use Complainant's trademark in a domain name or in any other manner.
In Complainant's submission, the Domain Name has been registered and is being used in bad faith. Respondent has registered it because it corresponded to a Community Trade Mark application of Complainant that was not yet reflected in a “.com” domain name. The Domain Name was linked to a website with systematically organized links to other websites, including links to websites of competitors of Complainant, or at least to websites which contained links to such competitors' websites. Later, Respondent offered the Domain Name for sale to the general public, clearly for valuable consideration in excess of its out-of-pocket costs directly related to the Domain Name.
Based on the above arguments, Complainant submits that Respondent has registered and used the Domain Name to prevent Complainant from reflecting its trademark in a corresponding domain name, and has engaged in a pattern of such conduct in relation to various Community trademarks or Community trademark applications of third parties. B. Respondent
Respondent accepts that the Domain Name is identical to Complainant's trademarks.
According to Respondent, Complainant's trademark is descriptive of the services it is registered for, and is thus unable of protection. Complainant's trademark (in contrast to Respondent's trademark) is not legally protected on the territory of the Russian federation. There are approximately 20 trademarks or service marks, registered by third parties. The concept of “constructive notice” is not applicable to the present case. Complainant has not presented any evidence of is trademarks being famous or even well-known when Respondent registered the Domain Name. Complainant does not present any social research data on the recognition of its trademark or the number of its customers.
The Domain Name has a widely used meaning (in Latin, “argentum” is the plural form of “silver”), and Complainant has no rights in respect of the Domain Name, since it has a descriptive character. The commercial use of domain names containing symbols or expressions of widely used character is an acceptable and widely used practice.
References on the webpage at the Domain Name to “finance” and “investments” are made in Russian. At the same time, Complainant's commercial activity does not go beyond the borders of the Benelux countries and Complainant has not produced evidence that its name is well-known in general or among Russian Internet users in particular. Complainant has not produced evidence that it provides bank or other services using Russian as a business communication language.
It is unclear why Complainant took no actions to register the Domain Name in the period prior to May 1, 2000, when the Domain Name was freely available for the registration. The passive behavior of Complainant for the long period of time from 1987 (the year of its Benelux trademark registration), until February 21, 2007 (the date when it sent a letter to Respondent demanding the transfer the Domain Name) was evidence that Complainant had no interests in the Domain Name.
According to Respondent, Complainant's attempt to connect Respondent with several other companies is not justified. The fact that one and the same IP address is used for different websites does not prove any relation between their owners, nor does the fact that Respondent has filed applications for trademarks identical to domain names of other companies. The company Expresspost Ltd. is delivering courier services to Respondent. The use by Еxpresspost Ltd. of Respondent's mail address to receive incoming mail connected to domain names owned by Еxpresspost Ltd., is illegal and unauthorized, and Respondent has immediately after receiving the Complaint sent a cease-and-desist letter to Еxpresspost Ltd. demanding to promptly stop misusing the Respondent's mail address for its own commercial interests and to adhere strictly to the provisions, envisaged by the Contract between Respondent and Еxpresspost Ltd. of November 25, 2004. The illegal use of its mail address could not be found by Respondent himself before, since its mail box was taken care and physically controlled by Еxpresspost Ltd.
The business model of Respondent involves acting as developer of projects and lead project-manager, working together with other business entities. Respondent acts as an innovative business venture “incubator”, offering flexible organizational forms and providing its customers in the full package of funding, corporate development, trademark registration, IT development, brand and technology development services. Respondent's innovative start-ups could then be sold not as domain names or trade marks but as companies or shares. Respondent alleges having reputable established businesses among its clients. As a partner of Respondent under a joint venture agreement, Silver Management Group is responsible for attracting partners into the business project “Argenta” within the “Sharebusiness” business model. The joint venture agreement creates additional source of funding the expenses, organizational, information and other resources for the development of Respondent's business project connected with the use of the Domain Name, and is being successfully implemented.
Respondent has never offered to sell the Domain Name to Complainant or its competitors, but has acted fairly, offering it to an unlimited number of people at its own website, instead of directly addressing the target audience, including Complainant and owners of Argenta trademarks.
Тhus, in Asphalt Research Technology, Inc. v. National Press & Publishing, Inc.,WIPO Case No. D2000-1005, the panel stated: “… moreover, neither mere registration, nor general offers to sell, domain names which consist of generic, common, or descriptive terms can be considered acts of bad faith”. In Gorstew Limited v. W,WIPO Case No. D2002-0744: “the Panel suspects that the reality may be that the Respondent has registered most of the numerous domain names it has registered, including the majority of the various “malls”, “casinotours”, and “tours” domain names, with a view to sale to third parties who may become interested in acquiring those domain names at some future time. However, (as the Respondent put it in its Response) while ‘cyber squatting is precluded behavior, cyber speculating clearly is not'”.
In response to Complainant's letter dated February 21, 2007, Respondent refused to transfer the Domain Name and did not use the interest displayed by Complainant in the Domain Name to initiate any commercial negotiations. Rather, Respondent invited Complainant to inform Respondent if the latter infringes Complainant's rights and legal interests. Thereafter, Complainant took no actions to settle this dispute.
Respondent further mentions that Complainant's trademark is protected only in the European Union, and cannot receive legal protection in the Russian Federation. Respondent has checked whether the Domain Name corresponds to trademarks. The search it made in Yahoo showed that as a minimum the first 4 pages of the search results did not contain any information of Argenta being registered by anyone as a trademark.
Finally, Respondent requests a finding of reverse domain name hijacking against Complainant. The sign of bad faith of Complainant and its abuse of the administrative proceeding under the Policy is the absolute negation by Complainant of its duty to investigate the possible legitimate interest of Respondent in using the Domain Name prior to filing the Complaint. Banco de Chile S.A. v. Eric S. Bord, Esq., WIPO Case No. D2001-0695. 6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That Respondent has registered and is using the Domain Name in bad faith.
According to the Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with Rules, paragraph 2(a), and Respondent was given a fair opportunity to present its case. A. Identical or Confusingly Similar
Complainant has provided evidence and has thus established its rights in the Benelux combined trademark GROEP ARGENTA and device, and in the Community trademark ARGENTA.
It is a common practice under the Policy to disregard gTLDs such as the “.com” section of domain names for the purposes of the comparison under Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is its “argenta” element, which is identical to Complainant's ARGENTA trademark.
On these grounds, the Panel finds that the Domain Name is identical to a trademark in which Complainant has rights. B. Rights or Legitimate Interests
Complainant claims that Respondent has no rights or legitimate interests in the Domain Name, stating various arguments in this regard – that it is unclear who the real owner of the Domain Name is, that Respondent has never genuinely used the Domain Name in relation to a bona fide offering of goods or services, that Respondent is not licensed to use Complainant's trademark or to register a domain name incorporating it; that Respondent has not been commonly known by the Domain Name.
Thus, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
It is well established that once a complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to respondent to rebut the showing by providing evidence of its rights or legitimate interests in the domain name.
As clear from the parties' submissions, the Domain Name was initially used to host a simple website containing a number of links and no genuine content. After a period of one year, it displayed for three months an offer for the sale of certain assets, including the Domain Name itself and Respondent's trademark. Thereafter, the Domain Name was not used anymore.
In its Response, Respondent has attempted to describe its business, including in respect of the Domain Name. In the Panel's view, this description is unclear and vague, and is not substantiated by any marketing and financial models or documentation, or indeed by any reliable and relevant evidence coming from official external sources.
Taking the above into account, the Panel is of the opinion that Respondent has not really used the Domain Name, and has no serious and legitimate business plans for its use.
Respondent's trademark is registered for goods and services related to computers and software. These goods and services are not relevant to Respondent's alleged business plans related to the use of silver. The trademark appears to have been left unused for a long period of time, and arguments are made that it may be subject to revocation due to non-use. On this basis, the Panel is of the view that Respondent's trademark does not per se give rise to rights of Respondent's in respect of the Domain Name in the context of the UDRP.
The evidence in the case file suggests that Respondent has engaged in the speculative registration of domain names, including such that correspond to Community trademarks and to Community trademark applications of third parties. While the good faith registration of generic words for later resale is not per se prohibited by the UDRP, the pattern of registering domain names, corresponding to such trademarks and trademark applications for speculative purposes cannot be regarded as a legitimate activity, giving rise to rights and legitimate interests for the purposes of the Policy. On this basis, the Panel finds that Respondent has failed to prove that it has rights and legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Panel first will discuss the issue of the alleged links between Respondent and other parties.
As evidenced by Complainant and not denied by Respondent, the latter has registered in Russia or applied for the registration of, inter alia, the trademarks “Expresspost”, “domreg”, “votum”, “businessservice”. As alleged by Respondent, Expresspost is a postal courier, to whom Respondent has contracted the physical delivery to Respondent of the contents of Respondent's mail box. DomReg is the name of the registrar of the Domain Name. Votum is the name of the law firm that offered the Domain Name for sale in 2001, and BusinessService was respondent in several other administrative proceedings under the Policy.
The Panel finds the registration of such trademarks by Respondent as quite unusual and puzzling. Moreover, Respondent has provided no explanation as to why it has registered these trademarks. The description of Respondent's links with Expresspost (itself respondent in a number of other UDRP cases) seems artificial and not convincing, and no relation to the other parties mentioned above is admitted. At the same time, Respondent's physical address coincides with the addresses of Expresspost Ltd. and of BusinessService, as specified for the purposes of other domain name registrations. The latter two entities were respondents in other proceedings under the Policy, where they were found to have acted in bad faith.
In the Panel's view, it is highly unlikely that a person carrying out a legitimate activity would take such steps or to have such connections without plausible reasons for them. No such reasons are provided by Respondent.
As discussed above in this decision, Respondent has engaged in the speculative registration of domain names, including such that apparently correspond to Community trademarks of third parties. The tens of trademarks registered by Respondent for so many different goods and services make it likely that they too were registered with speculative purposes. Respondent has not established that it has rights and legitimate interests in the Domain Name.
All these circumstances raise the real possibilities that Respondent would have expected to become the addressee of complaints in UDRP proceedings, and have taken steps to hide behind other (possibly fictitious) entities, and/or to spread the liability for its actions among them, in order to evade the Policy.
At the same time, Complainant carries out its activity only in the Benelux. The Panel also notes (as pointed out by Respondent) that the reputation of Complainant is not readily discernible from a google search of same, so its reputation appears to be regional rather than global or extended to Russia. Given the Latin origin of the word, Complainant's ARGENTA trademark is not very distinctive for financial services and banking1, and certain third parties also have trademark registrations containing the ARGENTA word element. After the registration of the Domain Name, Complainant remained passive for seven years before filing its first letter to Respondent, and for nine years before filing the Complaint.
In these circumstances, whatever its real reasons for the registration of the Domain Name, this Panel considers it more likely that the Domain Name was not registered by Respondent specifically to exploit Complainant's trade name and reputation.
Taking all the above into account, the Panel is of the opinion that even though Respondent appears to have engaged in a conduct that may generally be regarded as not carried out in good faith, this conduct was not shown to be aimed specifically at Complainant. In this situation, the Panel finds that Complainant has failed to establish that Respondent has registered and used the Domain Name with bad faith directed at Complainant. For this reason, the Complaint does not satisfy the requirements of the Policy. Complainant is not entitled to the relief requested by it, and it cannot be granted. This finding is without prejudice to any future proceedings that may be based on subsequent actions by Respondent.
As to the request by Respondent for a finding of Reverse Domain Name Hijacking, this request is denied. Although Complainant has been unsuccessful in this proceeding, Respondent has not shown knowledge on the part of Complainant of Respondent's right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by Complainant in the face of such knowledge. On the contrary, Respondent has failed to establish its rights and legitimate interests in the Domain Name. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Assen Z. Alexiev
Presiding Panelist
Irina V. Savelieva
Panelist
Milton L. Mueller
Panelist
Dated: June 8, 2009
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