WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION BSI S.A. v. M Subhi Case No. D2009-0275 1. The Parties
Complainant is BSI S.A. of Lugano, Switzerland, represented by Safenames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “U.K.”).
Respondent is M Subhi of Baku, Azerbaijan. 2. The Domain Name And Registrar
The disputed domain name (“the Domain Name”) is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2009. On March 3, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On March 3, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 the Respondent of the Complaint, and the proceedings commenced, on March 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 30, 2009.
The Center appointed Grant L. Kim as the sole panelist in this matter on April 6, 2009. 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. 4. Factual Background
Complainant BSI S.A. is a company headquartered in Lugano, Switzerland that provides banking and other financial services. It is listed in the commercial register of the Canton of Ticino and also is listed as an authorized institution on the website of the Swiss Financial Market Supervisory Authority FINMA. BSI S.A. owns several trademark registrations in International Classes 35 and 36 consisting of or incorporating “BSI,” including Swiss Trademark Nos. 544030 and 544057 for BSI; International Trademark No. 890539 for BSI; and CTM Trademark No. 1489855 for BSI 1873.
Complainant also is the owner of , registered in March 2004, as well as of several other domain registrations, including , , , and .
Respondent, M Subhi, is a private individual who registered the Domain Name on February 14, 2009. Documents annexed to the Complaint indicate that as of February 27, 2009, resolved to an operational website. The website included the headings “BSI Investment Group” and “Swiss Bankers Since 1873.” The website described BSI Investment Group as “a private financial group specializing in private banking, corporate finance, private equity, and international corporate planning.” The website offered consulting services and invited users to contact BSI Investment Group at London, Geneva, or Nassau locations. When the Panel attempted to view the Domain Name on April 15, 2009, it did not resolve to an active site. 5. Parties' Contentions A. Complainant
Complainant states that it was established in 1873 as Banca della Svizzera Italiana and is the oldest bank in the canton of Ticino. Complainant alleges that it is renowned for work and business within asset management and financial services. Complainant asserts that it has rights in the BSI mark and that this is supported by Complainant's ownership of numerous registered trademarks and domain registrations solely consisting of or incorporating “BSI.” Complainant contends that is confusingly similar because it incorporates Complainant's registered BSI trademark in its entirety, and that the addition of the generic word “invest” does not avoid confusion.
Complainant further contends that Respondent has no rights or legitimate interests in the Domain Name and is purposefully and intentionally utilizing the Complainant's mark, brand, and reputation to promote its unregistered bank and services. Complainant has submitted documents indicating that, although the company portrayed on Respondent's website, BSI Investment Group, states it has been established in Switzerland since 1873 and lists offices in the United Kingdom, Switzerland, and the Bahamas, the company is not listed in the commercial register of the Canton of Ticino, Swiss Federal Banking commission, or U.K. Companies House database, nor are there any trademark results for “BSI Investment Group” in database searches of the Office for Harmonization in the Internal Market (“OHIM”), Swiss Federal Institute of Intellectual Property, and U.K. Intellectual Property Offices. Complainant also has submitted evidence that Respondent's website includes the slogan “Swiss Bankers Since 1873,” which will create an association with Complainant that does not exist. Complainant states that there is no relationship between Complainant and either BSI Investment Group or Respondent; that the site provides no disclaimer that it is not affiliated with or endorsed by the Complainant; and that Respondent is purposefully misleading Internet users and tarnishing the Complainant's reputation.
Complainant further asserts that Respondent has registered and used the Domain Name in bad faith. Complainant contends that Respondent was fully aware of Complainant when Respondent registered the Domain Name and purposefully registered it to disrupt Complainant's business and promote its own. Complainant also contends that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source of the Respondent's website and products and services on the Respondent's website. As evidence, Complainant cites Respondent's utilization of Complainant's registered trademark in the Domain Name and throughout the website and Respondent's use of Complainant's motto, “Swiss Bankers Since 1873.” Complainant submits that there is no overt connection or reason for Respondent to be utilizing the “BSI” mark, as Respondent is an individual and BSI is not an acronym for or similar term to its name, M Subhi. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion And Findings
The Panel finds that it was properly constituted pursuant to the Rules and that it has jurisdiction to decide this dispute. The Panel notes that the record, through a confirmation communication from the Registrar, shows that Respondent agreed to the Policy as part of its Domain Name registration and was properly notified of the Complaint and the Default under Paragraph 2(a) of the Rules, including at the email address included in Respondent's registration and the email addresses listed on Respondent's website. The Panel further notes that notwithstanding the Respondent's failure to respond to the Complaint, the Panel has reviewed the record to determine whether or not the Complainant is entitled to the relief requested under the Policy, the Rules, and the Supplemental Rules.
The Policy is addressed at resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corp. v. Bay Verte Machinery, Inc. d/b/a/ The Power Tool Store,WIPO Case No. D2002-0774 (October 26, 2002). The Panel has reviewed the record in light of the three requirements set forth in the Policy, paragraph 4(a), which entitle the Complainant to transfer or cancellation of the disputed Domain Name if Complainant demonstrates:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
To satisfy this element, the Panel must find that (1) Complainant has demonstrated its rights in the BSI mark; and (2) the disputed Domain Name is identical or confusingly similar to the Complainant's mark.
Complainant has adequately demonstrated its rights in the BSI mark by submitting records of its trademark registrations in several jurisdictions. Complainant utilizes the BSI mark to provide banking and other financial services and offers these services online at and , which resolves to . Complainant's ownership and use of the registered BSI trademark satisfies the initial requirement that Complainant have valid rights in the trademark. See, e.g., Micro Electronics, Inc. v. Strateks Corp.,WIPO Case No. D2005-0129 (March 27, 2005).
Complainant also has established that the disputed Domain Name is identical or confusingly similar to Complainant's mark. Respondent's Domain Name consists of Complainant's BSI mark, plus the addition of the word “invest.” The addition of the word “invest” does not render the Domain Name significantly different from Complainant's BSI trademark and is not sufficient to notify customers that is unrelated to the Complainant. In DEG – Deutsche Investitions- und Entwicklungsgesellschaft mbH v. William Evans,WIPO Case No. D2005-1222 (March 1, 2006), the complainant was a large finance institution that owned a registered trademark for DEG and the domain name . The respondent had registered the domain name . In finding that the disputed domain name was confusingly similar to the DEG mark, the panel stated, “[T]he mere addition of a descriptive word as suffix (i.e. the word ‘invest') to a trade mark does not prevent confusing similarity between the Domain Name and the trade marks [. . .] The addition of the word ‘invest' to the Complainant's trade mark DEG does even increase the likelihood of confusion among the public as the Complainant has registered its trade marks for investment services” Id., para. 6(A). Similarly, the addition of the word “invest” may increase the likelihood of confusion, as the Complainant has registered and uses its BSI trademark in relation to investment and other financial services. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant's BSI mark. B. Rights or Legitimate Interests
With respect to the second element, Complainant should make at least a prima facie showing that the Respondent has no rights or legitimate interests in the Domain Name. Once the Complainant has made a prima facie case, the Respondent should present evidence that it has legitimate rights or interests. Gerd Petrik v. Johnny Carpela,WIPO Case No. D2004-1043, para. 6.9 (March 4, 2005) (“Complainant has made the necessary assertions regarding any rights or legitimate interests of the Respondent in the disputed domain name. While not shifting the ultimate burden of proof, these assertions make it incumbent on Respondent to come forward with evidence refuting Complainant's assertions and establishing Respondent's rights or interests in the disputed domain name[...]”); Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110, para. 6(B) (April 14, 2004) (noting that “the element of possible rights or legitimate interests of Respondent in the domain name involves matters, which are peculiarly within the knowledge of Respondent,” and that requiring the Complainant to make more than a prima facie showing would impose “the often impossible task of proving the negative”).
Complainant has presented uncontested evidence that it has no connection to or relationship with Respondent or the “BSI Investment Group” portrayed on Respondent's website. Complainant points out that the website contains the slogan “Swiss Bankers Since 1873” and lists offices in the United Kingdom, Switzerland, and the Bahamas, but BSI Investment Group is not listed in the commercial register of the Canton of Ticino, the Swiss Federal Banking commission, or the U.K. Companies House database, nor are there any trademark results for “BSI Investment Group” in database searches of the OHIM, Swiss Federal Institute of Intellectual Property, and U.K. Intellectual Property Offices. Complainant notes that the use of this slogan, which appears on Complainant's website, and the BSI trademark to promote Respondent's unrelated, unregistered organization and to offer banking and other financial services cannot constitute a bona fide offering of goods and services. Complainant also points out that Respondent is generating money remuneration through its website, using Complainant's brand and mark, which does not constitute a legitimate, non-commercial use of the Domain Name.
The Panel finds that Complainant has presented an unrebutted prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Moreover, it appears that Respondent used Complainant's mark, BSI, and slogan, “Swiss Bankers Since 1873,” throughout its website to create an association with Complainant that does not exist. The Respondent has not submitted a reply. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a showing that Respondent has registered and used the Domain Name in bad faith. Paragraph 4(b) of the Policy offers examples of what may constitute evidence of bad faith. Complainant contends that Respondent has registered and is using the Domain Name in bad faith under Paragraphs 4(b)(iii) and 4(b)(iv), by purposefully registering the Domain Name to disrupt the Complainant's business and promote its own and by intentionally attempting to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with the Complainant's marks and corresponding services.
Complainant has submitted unrebutted evidence of bad faith. Complainant has presented evidence that it is listed in commercial databases, owns numerous trademark and domain registrations solely consisting of or incorporating “bsi,” was established in 1873, provides banking and other financial services, and uses the slogan “Swiss Bankers Since 1873.” Complainant also has presented unrebutted evidence that the Domain Name resolved to a website that included the headings “BSI Investment Group” and “Swiss Bankers Since 1873.” The website described BSI Investment Group as “a private financial group specializing in private banking, corporate finance, private equity, and international corporate planning” and listed contact information in the U.K., Switzerland, and the Bahamas. Complainant has submitted evidence that BSI Investment Group, however, is not listed in the commercial register of the Canton of Ticino, the Swiss Federal Banking commission, or the U.K. Companies House database, nor are there any trademark results for “BSI Investment Group” in database searches of the OHIM, Swiss Federal Institute of Intellectual Property, and U.K. Intellectual Property Offices.
As discussed above, Respondent has selected a domain name that is confusingly similar to Complainant's mark. Respondent used the Domain Name to operate a website that offered what appeared to be banking and other financial services that were similar or identical to Complainant's services. These facts suggest Respondent's bad faith intent to confuse Internet users and divert business to Respondent's website for commercial gain. A finding of Respondent's bad faith intent also is supported by the fact that Respondent's website included the slogan “Swiss Bankers Since 1873,” although there is no evidence that BSI Investment Group has been in existence since 1873, and in fact, Complainant was established in 1873 and uses the same slogan on its website. Internet users diverted to Respondent's website therefore were likely to believe they were purchasing services from Complainant rather than Respondent, or that Respondent's website was actually sponsored by, affiliated with, or endorsed by Complainant. This conclusion is not changed by the recent disabling of Respondent's website. On the contrary in the present circumstances, the recent disabling of the website reinforces the conclusion that Respondent lacked a valid basis for using the Domain Name. See Kabushiki Kaisha Isetan v. Ahn, In-Hyo,WIPO Case No. D2004-0283, para. 6(C) (June 7, 2004) (“The circumstance surrounding the change of status of the website to being ‘under construction' after the filing of the Complaint further adds to an overall sense of suspicion concerning the Respondent's lack of bona fide registration and use of the domain name.”).
Prior UDRP panels have relied on similar facts to find bad faith. In Habib Bank AG Zurich v. Dave West,WIPO Case No. D2004-0041 (March 31, 2004), the complainant was an international bank with registered trademarks and domain names for its banking and related goods. The disputed domain name “used not only the Complainant's registered trademarks, but also their distinctive ‘Lion logo', distinctive colours and the address of the Complainant.” Id., para. 6(B). The panel found that the respondent's conduct constituted a clear case of bad faith, in which the Respondent had “shown its purpose 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.” Id. See also Yahoo! Inc. v. Jorge O. Kirovsky,WIPO Case No. D2000-0428 (August 9, 2000) (bad faith where respondent knew or should have known of complainant's trademark rights in the term Yahoo when it registered and used several domain names that included that term and intentionally attempted to attract, for commercial gain, users to its site, by creating confusion with complainant's well-known mark); Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432 (June 12, 2006) (bad faith where respondent replicated complainant's website except for the contact information, thereby fraudulently misrepresenting to the public that it was associated with the complainant).
Similar to Habib Bank in the case Habib Bank AG Zurich v. Dave West, supra, Complainant is an international bank with registered trademarks and domain names for its banking and related services. Respondent's website offered similar or identical services and used the BSI mark and “Swiss Bankers Since 1873” slogan, when in fact, Complainant was established in 1873, owns registered trademarks and domain names consisting of or incorporating BSI, and uses the slogan “Swiss Bankers Since 1873.” Under these circumstances, the Panel concludes that Respondent's use of BSI cannot be a coincidence. Rather, Respondent deliberately chose this Domain Name and used the “Swiss Bankers Since 1873” slogan in order to disrupt Complainant's business and promote its own and attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's marks and corresponding services. This is precisely the type of abusive domain name registration and use that the Policy is intended to prevent. The Panel therefore finds that Respondent registered and used the Domain Name in bad faith.
In sum, the Panel finds that there is abundant evidence that Respondent has registered and used the Domain Name in bad faith, that Respondent has no rights or legitimate interests in the Domain Name, and that the Domain Name is confusingly similar to a trademark in which the Complainant has rights. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name, , be transferred to the Complainant.
Grant L. Kim
Sole Panelist
Dated: April 20, 2009
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