WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Findomestic Banca S.p.A v. Zeytin Kemikli Case No. D2009-0538 1. The Parties
The Complainant is Findomestic Banca S.p.A, Florence, Italy, represented by Studio Legale Associato Fusi Testa Cottafavi Canu, Italy.
The Respondent is Zeytin Kemikli, Kyrgyzstan. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2009. On April 24, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 24, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. 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 May 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 25, 2009.
The Center appointed Michel N. Bertschy as the sole panelist in this matter on May 27, 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
The Complainant is a well-known bank and member of the BNP Paribas Group offering consumer credit and financial services that has been operating since January 1, 1985. The bank's seat and principal place of business is in Florence, Italy.
The trademarks owned by the Complainant and asserted for the purpose of these proceedings are the following: FINDOMESTIC, an Italian trademark registration No. 735847 filed on February 26, 1985, renewed on February 9, 2005 with application No. FI2005C000138 (Exhibit 18); FINDOMESTIC, an Italian trademark registration No. 736204, filed on June 1, 1995, renewed on May 31, 2005 with application No. FI2005C000600 (Exhibit 17); FINDOMESTIC OUTSOURCING, an Italian trademark registration No. 1018437 filed on February, 15, 2002 (Exhibit 20); L'OSSERVATORIO FINDOMESTIC, an Italian trademark registration No. 1110213 filed on April 7, 2004 (Exhibit 21); FINDOMESTIC BANCA VUOL DIRE PRESTITI PERSONALI, an Italian trademark application No. FI2005C000842 filed on July 28, 2005 (Exhibit 23); FINDOMESTIC BANCA, an international trademark registration No. 896587, filed on March 3, 2006 (Exhibit 16); FINDOMESTIC BANCA, an Italian trademark registration No. 1012410 filed on March 3, 2006 (Exhibit 19) and FINDOMESTIC BANCA IL CREDITO RESPONSABILE, an Italian application No. FI2007C000253 filed on February 21, 2007 (Exhibit 22);
The Complainant has also registered a number of domain names including , , , and between January 1996 and November 2001.
The Respondent is the registrant of the domain name created on June 19, 2006 and has identified himself as Zeytin Kemikli, Kyrgyzstan. 5. Parties' Contentions A. Complainant
The Complainant contends that the domain name is identical or confusingly similar to the trademarks and service marks in which he has rights (Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1)) because its trade marks were registered prior to the disputed domain name and because it holds strong common law trademark rights on the exclusive designation “FINDOMESTIC” due to extensive marketing and use of the trademarks. Once the generic “.name” top level domain removed, the disputed domain name is identical or confusingly similar to the Complainant's trade marks (Banca di Roma S.p.A. v. unasi Inc. a/k/a Domaincar, WIPO Case No. D2006-0068; Deutsche post AG v. MailMij LLC Mr. Colby Fisher, WIPO Case No. D2003-0128; E-Committee Comitato di Coordinamento delle Infrastrutture per l'E-banking v. Ivan Vogel,WIPO Case No. D2005-0136; Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127).
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2)) since FINDOMESTIC BANCA is not the corporate name of the Respondent and since the Complainant never authorized, licensed or otherwise allowed the Respondent to register and use the trademark FINDOMESTIC and the disputed domain name. Moreover, as demonstrated by screenshots taken on April 9, 2009, the domain name resolves to a website where many other web sites unrelated to the Complainant are sponsored and advertised and where an unknown entity enables and entices visitors to provide commentary, news and queries on the Complainant's financial activities and products. In these circumstances and in the absence of any indication of actual or intended legitimate non commercial use or fair use of the disputed domain name the Complainant contends that, at least prima facie, the Respondent has no rights or legitimate interests in the disputed domain name (Banca d'intermediazione Mobiliare IMI S.p.A. v. H, WIPO Case No. D2007-1097; Alessi S.p.A. v. Alexandr Gritsay, WIPO Case No. D2007-0176; Samsung Electronics Co. Ltd v. NA/Ki Choi,WIPO Case No. D2007-0011; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Complainant contends moreover that the domain name was registered and is being used in bad faith (Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3)):
(i) The Respondent had knowledge of the existence of the company Findomestic Banca S.p.A. and of its prior rights in trademarks. Had the Respondent done a trademark search of the word FINDOMESTIC for a prior registrations he would have found the several international, European Community and national registrations held by the Complainant (Kate Spade, LLC v. Darmstadter Designs,WIPO Case No. D2001-1384). Further, the designation FINDOMESTIC is a fanciful term that has been arbitrarily chosen by the Complainant to distinguish its own products from others. The designation Findomestic has achieved, through the years, visibility and notoriety as a unique and proprietary mark for financial services. No legitimate explanation could thus justify the Respondent's use of FINDOMESTIC since it is neither a generic noun commonly used in connection with consumer credit services. The Respondent may not therefore claim ignorance of the existence of the trademarks at the time of the domain name registration on June 19, 2006. The above circumstances therefore suggest the disputed domain name was registered in bad faith (Intesa Sanpaolo S.p.A v. Marco Schiappacassa,WIPO Case No. D2008-0788; Maori Television Service v. Damien Sampat,WIPO Case No. D2005-0524; Global Esprit Inc. v. living 4,WIPO Case No. D2004-0318; Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365).
(ii) Use in bad faith also results from the Respondent's use of the disputed domain name for commercial purposes insofar as he deliberately diverts users misleadingly from the Complainant's website. The Respondent is using the web site to the main purpose of advertising domain names pertaining to companies offering financial and consumer credit services which compete directly with Complainant's business activities. The web site is structured as an institutional web site and displays a green background like the Complainant. In this context, Panels have repeatedly held that the absence of promotion of legitimate commercial activities conducted by the registrant of the domain name and the offering of products of competitors is not deemed a bona fide use of the disputed domain name. The Respondent is therefore using of the disputed web site to generate sponsored links or related searches for the purpose of generating revenue from Internet advertising (McDonald's Corporation v. ZusCom, WIPO Case No. D2007-1353; Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar, WIPO Case No. D2006-0068; Intesa Sanpaolo S.p.A. v. Marco Schiappacassa, WIPO Case No. D2008-0788; Intesa Sanpaolo S.p.A. v. Lliefetx Ag, WIPO Case No. D2007-1709; Intesa Sanpaolo S.p.A. v. Caribbean Online International Ltd., WIPO Case No. D2007-0816; Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690; Southern Communication Services Inc. v. Henry Chan, WIPO Case No. D2004-0214; National City Corporation v. MH Networks LLC,WIPO Case No. D2004-0128).
(iii) Furthermore, the Respondent is offering the disputed domain name for sale and has, for this purpose, set up a direct link to a web site which offers the disputed domain name for sale. Since there is no indication of any other actual or intended use of the disputed domain name, this should be taken into account as a further evidence of Respondent's fraudulent purposes and bad faith in registering and using the disputed domain name (Parfums Christian Dior v. QTR Corporation, WIPO Case No. D2000-0023).
(iv) The Complainant further contends that the Respondent has posted on the web site a warning which states: “I also don't want that your customer's personal data is published on this website but I am not the real one who is responsible for this. We both also know that all this is harmless compared to the things that can be done. So please stay fair; for your customers interests.” This warning evidences the Respondent knowledge of the existence of the Complainant's trademarks and business activities and suggests that the Respondent wishes to compel the Complainant to acquire the disputed domain name.
(v) Last but not least, as shown by a research conducted on December 20, 2008, the disputed domain name was parked free and used to generate sponsored links to web sites offering banking and financial services competing with those of the Complainant. On February 18, 2009 (the day after the notification of the decision in re Findomestic Banca S.p.A. v. Dursun Camkerten,WIPO Case No. D20008-1903), the domain name . was updated so to host the content and web pages previously linked to the domain names and . B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:
(i) the Respondent's 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 Respondent's domain name has been registered and is being used in bad faith.
Each of the three elements must be proved by a Complainant to warrant relief. A. Identical or Confusingly Similar
There are two requirements that a Complainant must establish under Paragraph 4(a)(i) of the Policy; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.
The consensus view of WIPO UDRP panels is that if the complainant owns a registered trademark then it satisfies the requirement of having trademark rights (ROHO Inc. v. Mark Duane,WIPO Case No. D2001-1168). The Complainant has proved this requirement.
The use of the top level of the domain name “.name” does not change the identical nature of the mark (ROHO, supra). The Complainant has used the mark FINDOMESTIC since at least 1985, and holds numerous rights in trademarks comprising the distinctive portion FINDOMESTIC. The disputed domain name is identical to the distinctive portion of the Complainant's trademarks FINDOMESTIC. The Complainant has established the identity of the domain name and the trademark.
The first requirement of Paragraph 4(a) the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant bears the burden of proof under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once the Complainant makes his prima facie case. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If a respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485; Belupo d.d. v. WACHEM d.o.o.WIPO Case No. D2004-0110 ; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 ).
Paragraph 4(c)(iii) of the Policy sets forth examples of circumstances whereby a domain name registrant may demonstrate a right or legitimate interest in a domain name, including: “... making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Respondent did not reply to the Complainant's contentions. The Respondent's default does not automatically result in a decision in favor of the Complainant. Subject to the principles described above, the Complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. While a panel may draw negative inferences from the Respondent's default, Paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
The Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainants' marks. The disputed domain name is publicly offered for sale. The Respondent does not use the name for his proper business purposes but uses it as a link to web sites operated by the Complainant's competitors. The Respondent has posted a warning on the web site directed at the Complainant from which it can be inferred in conjunction with the public offering for sale of the disputed domain name that he intends to compel the Complainant to buy .
The Panel holds that in these circumstances the Respondent is clearly not making a legitimate non commercial or fair use of the domain name and is, for commercial gain, intentionally and misleadingly diverting consumers from the Complainant's legitimate web sites. There is therefore no reason to suppose that the Respondent could claim a right or legitimate interest in respect of the domain name on any other basis.
The Panel thus finds that the second requirement of Paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
For Paragraph 4(a)(iii) of the Policy to apply, the Complainant must demonstrate the conjunctive conditions that the Respondent registered the domain name in bad faith and continues to use it in bad faith.
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including: (1) “[the Respondent] has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name, or”; (2) “[has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or” (3) “[the Respondent] has registered the domain name primarily for the purpose of disrupting the business of a competitor, or; (4)”by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant's mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”.
Whether the Respondent has used the Complainant's name in bad faith is clearly evident on the facts of this case. Indeed, the Complainant has proved that the Respondent has registered a domain name identical to the Complainant's trademarks. He had knowledge of the existence of the FINDOMESTIC trademarks as demonstrated by his offering of the disputed domain name for sale. The Respondent has not used the domain name in connection with any demonstrated legitimate business. The Panel holds therefore that the domain name was registered and used in bad faith.
The third requirement of Paragraph 4(a) of the Policy is satisfied. 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.
Michel N. Bertschy
Sole Panelist
Dated: June 10, 2009
Full & Egal Universal Law Academy