WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Intesa Sanpaolo S.p.A. v. Linecom Case No. D2009-1492 1. The Parties
Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
Respondent is Linecom of Gyeongju, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2009. On November 4, 2009, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the Disputed Domain Name. On November 5, 2009, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details.
On November 5, 2009, the Center issued a Language of Proceeding notification, inviting comment from the parties. On November 10, 2009, Complainant submitted a request that English be the language of the proceeding. Respondent did not respond to the Center's Language of Proceeding notification. On November 13, 2009, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that in accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of the proceeding. 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 proceeding commenced on November 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 4, 2009.
The Center appointed Andrew J. Park as the sole panelist in this matter on December 14, 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 is an Italian banking group that resulted from the January 1, 2007 merger of Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two Italian banking entities. Complainant conducts business on an international level with particular emphasis in Central-Eastern Europe and in the Mediterranean region. Complainant, through its subsidiaries, has over 1,250 branches and about 6.8 million customers to whom it offers retail and commercial banking services in twelve countries.
Founded in 1992, the Ukraine based Pravex Bank offers a range of banking and financial services through a network of branches and has total assets of 628 million Euros. Pravex Bank has over 548 directorates and outlets in Kyiv and in all Ukranian regions, including the Autonomous Republic of Crimea.
On February 4, 2008, Pravex Bank's shareholders announced an agreement to sell Pravex Bank to Intesa Sanpaolo Group. On June 27, 2008, Complainant and Pravex Bank's majority shareholders completed a deal under which Intesa Sanpaolo purchased a 100% shareholder stake in Pravex Bank in accord with the agreement signed on February 4, 2008. The official website of Pravex Bank at “” was registered on September 10, 1999. Respondent registered the Disputed Domain Name on January 26, 2009.
Complainant owns the following trademark applications relevant to this dispute:
PRAVEX: Community Trademark Application No. 7298722, filed October 8, 2008 in International Classes 09, 16, 35, 36, 38, 41 and 42; and
PRAVEX: Ukraine Trademark Application No. m200820196, filed November 12, 2008 in International Classes 09, 16, 35, 36, 38, 41 and 42.
In addition to its trademark applications and the domain name , Complainant has also registered the following domain names relevant to this dispute:
;
;
;
; and
.
At this time, all of these domain names resolve to websites associated with Complainant and its banking and finance business. 5. Parties' Contentions A. Complainant
Complainant argues that: (i) Respondent's Disputed Domain Name is identical to a trademark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith. Regarding the first element, Complainant contends that the Disputed Domain Name is identical to Complainant's PRAVEX trademark with the addition of the generic term “bank,” and that the mere addition of this term fails to distinguish the Disputed Domain Name from Complainant's PRAVEX trademark. Complainant further contends that the Disputed Domain Name is identical to Complainant's various “pravexbank” domain names.
Regarding the second element, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name since this domain name does not correspond to a trademark registered in the name of Respondent. Complainant further contends that the Disputed Domain Name does not correspond to Respondent's business name and that Respondent is not commonly known as “Pravex Bank.” Complainant further argues that the Disputed Domain Name is not used for any bona fide offerings since the website to which the Disputed Domain Name resolves is connected to a website that sponsors several banking and financial services, including services offered by Complainant's direct competitors.
As to the third element, Complainant contends that by registering the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's PRAVEX mark as to the source, sponsorship, affiliation, or endorsement of the website. Specifically, Complainant points out that the website to which the Disputed Domain Name resolves contains several links sponsoring bank and financial services offered by Complainant and its competitors. Complainant asserts that the website is “highly confusing” in that Pravex Bank and Complainant (its parent company) operate in the field of banking and financing. Complainant argues that registration of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy. Complainant concludes that Respondent's commercial gain from its registration and use of the Disputed Domain Name is evident in that Respondent is being remunerated for such use. In the absence of any legitimate reason for registering and using the Disputed Domain Name, Complainant argues that the sole further aim of Respondent may be simply to sell Complainant the Disputed Domain Name, and that this further evidences registration and use in bad faith according to paragraph 4(b)(i) of the Policy. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The registration agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. However, as noted above, Complainant upon receiving the Language of Proceeding notification from the Center submitted a request for this dispute to proceed in English. In support of its request, Complainant stated that it is not able to communicate in Korean, that it wrote the Complaint in English because it is an international language “comprehensible to all parties,” and that English is a fair language in this instance since English is not a native language of either party to this dispute. Complainant also points out Respondent's involvement in prior UDRP proceedings before the Center in which the language of the proceedings was English. According to Complainant, “this is proof of the fact that Respondent knows the English language. . . .”
The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules, and formally notified the parties that the Panel has the authority to determine the language of the proceeding having regard to the circumstances of the case. The Panel may choose to write a decision in either language, or request translation of either party's submissions.
In ruling on the selection of the appropriate language, the Panel agrees that the proceeding can be conducted in the language of the Complaint, even if it is different to the language of the registration agreement, on the condition that 1) Respondent can clearly understand the language of the Complaint; and 2) the Complainant would be disadvantaged by being forced to translate its submission. Z, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191. In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432.
In the Panel's view, neither Complainant's nor its counsel's inability to communicate in Korean nor Respondent's ability to communicate in Italian is determinative as to the request that the proceeding be conducted in the English language. That English was the language of the proceeding in four previous UDRP proceedings involving Respondent is also not determinative, as Respondent failed to respond in each of those cases, and in three out of the four cases the relevant registration agreements were in English (and therefore, language of the proceeding was not an issue). While the panel in the fourth case, IVECO S.p.A. v. Linecom,WIPO Case No. D2008-1726, discussed the issue of the language of the proceeding, the Panel believes that each case should be considered on its own merits.
As shown on the printout of Respondent's website annexed to the Complaint as Exhibit G, the website to which the Disputed Domain Name resolves contains language displayed in English. Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047). The Panel also accessed Respondent's website on December 26, 2009, and the language of the website was primarily in English. Thus, it does not appear as though Respondent has any difficulty comprehending and communicating in English. As to fairness, Respondent chose not to participate or submit any reply in English or Korean. In light of the circumstances, the Panel concludes that it will 1) proceed in line with the Center's preliminary decision to accept the Complaint as filed in English; and 2) issue a decision in English.
This Panel views this as a fair and practical procedure to overcome delays and unnecessary additional translation costs that can be put on a complainant. Further, forcing Complainant to translate the Complaint into the language of the registration agreement in circumstances when Respondent has failed to show any active interest in the proceeding or respond to the Center's invitation to comment on Complainant's request is unfair. In general, a respondent's failure to respond to such notices should be a strong factor to allow the panel to decide to proceed in the language of the complaint. Since both parties have been given a fair opportunity to present their case and there can be no unfairness to Respondent given its apparent competence in English, the Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing the proceeding to be conducted in English. 6.2 Analysis of the Complaint
As Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from Respondent's default. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of Respondent's Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that Respondent's Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. A. Identical or Confusingly Similar
Complainant has at least established unregistered trademark rights in the PRAVEX trademark through its and its predecessor's use of this mark in relation to banking and financing services, among others. See Blemain Group v. Mr. Stuart Frost, WIPO Case No. D2006-0871. There is no doubt that unregistered trademark or service mark rights may qualify as “rights” in a trademark or service mark for purposes of paragraph 4(a)(i) of the Policy. To establish such unregistered trademark rights a complainant must show that the claimed mark has acquired a “secondary meaning” as an indicator of an association with the complainant or a business operated by the complainant. Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; Maritime-Ontario Freight Lines Limited v. Magic Domain,WIPO Case No. D2007-0202; ProCPR, LLC v. Name Administration Inc. (BVI),WIPO Case No. D2007-0823. Complainant's unregistered trademark rights in combination with its several “pravexbank” domain names leave no doubt in the Panel's mind that Complainant possesses the requisite ownership interest in the PRAVEX trademark.
The Panel further concludes that the Disputed Domain Name is identical or confusingly similar to Complainant's PRAVEX trademark. The Disputed Domain Name incorporates the PRAVEX trademark in its entirety, the only difference being the insertion at the end of the Disputed Domain Name of the genetic term “bank.” Administrative panels considering similar cases where respondents simply added a generic name to a trademark have found such domain names to be confusingly similar. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696. Thus, the Panel concludes that Complainant has satisfied the first element. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in respect of the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if Respondent has not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by Complainant of the absence of rights or legitimate interests on the part of Respondent, the evidentiary burden shifts to Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
Complainant has not authorized Respondent to use the PRAVEX trademark. There is also no evidence that Respondent (Linecom) is commonly known by the Disputed Domain Name, and thus paragraph 4(c)(ii) of the Policy in inapplicable in this case. Moreover, Respondent's use of the Disputed Domain Name to provide a website sponsoring links to companies that compete with Complainant, presumably to generate revenue because of the association of the Disputed Domain Name with Complainant's PRAVEX trademark, is trading on Complainant's goodwill and cannot constitute a bona fide offering of goods or services. Use of the Disputed Domain Name to direct Internet users to various third party commercial websites as here also does not constitute a legitimate, noncommercial or fair use of the Disputed Domain Name under the Policy. See Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146 (stating that “the evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being competitors of Complainant, and of an apparently commercial nature from which Respondent presumably derives or intends to derive profit”). Accordingly, Respondent's use of the Disputed Domain falls outside the scope of paragraph 4(c)(i), (ii) and (iii) of the Policy.
This combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to Respondent to prove that it has rights or legitimate interests in respect of the Disputed Domain Name. Respondent has not filed a Response and thus offers nothing to legitimize its claim to the Disputed Domain Name. Indeed, having searched the record, the Panel finds no circumstances that would indicate such rights or interests, as described paragraph 4(c) of the Policy, or otherwise. The Panel therefore finds that Complainant has prevailed on this part of its Complaint. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555; Patrick Pawlicki v. The Plastiform Company,WIPO Case No. D2007-1206. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) Respondent has registered the Dispute 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 Respondent has engaged in a pattern of such conduct; or (iii) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Dispute Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location. Accepting all facts alleged in the Complaint as true, the Panel finds that Complainant has shown registration and use in bad faith by Respondent.
Given Complainant's stature in the European banking community and the well publicized and widespread use of the PRAVEX trademark since 1992 for banking and financing services, Respondent was quite likely aware of Complainant at the time it registered the Disputed Domain Name. The Panel's conclusion is reinforced by virtue of Respondent's incorporation of the generic term “bank” into the Disputed Domain Name, a term that directly corresponds to the services Complainant provides, and the fact that Respondent registered the Disputed Domain Name well after Complainant registered its “pravexbank” domain names. Accordingly, in the absence of evidence to the contrary, the Panel presumes that Respondent registered the Disputed Domain Name because of its association with Complainant, its reputation, and its business.
Respondent's registration of the Disputed Domain Name which directly reflects Complainant's PRAVEX trademark, and then using this domain name to attract Internet users to its website and to divert users to other websites for business services similar to those of Complainant while presumably deriving such commercial value from Complainant's mark is a classic example of bad faith registration and use under paragraph 4(a)(iii) of the Policy. See America Online, Inc. v. Tencent Communications Corp., NAF Claim No. 93668 and Lilly ICOS LLC v. East Coast Webs, Sean Lowery,WIPO Case No. D2004-1101. The Panel concludes that by using the Disputed Domain Name in connection with sponsored listings in the website to which this domain name resolves, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
Further, as an operator of a website that links to banking and other financial institutions that compete directly with Complainant, Respondent is competing with Complainant, itself a widely known bank. Respondent's registration and use of the Disputed Domain Name thus amounts to disruption of the business of a competitor and thus to bad faith registration and use of the Disputed Domain Name as set forth under paragraph 4(b)(iii) of the Policy.
Finally, Respondent is presently offering the Disputed Domain Name for sale. There is no direct evidence that the sale or transfer in question would be for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name. However, the Panel infers that this was Respondent's intention in light of Complainant's longstanding prior use and there is no other likely recipient of the Disputed Domain Name. Put another way, there would be very little economic gain for Respondent by offering the Disputed Domain Name for sale if the sale was not intended to be profitable, i.e., for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name. As such, the Panel finds that paragraph 4(b)(i) 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 Complainant.
Andrew J. Park
Sole Panelist
Dated: December 28, 2009
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