WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Credit Europe Bank N.V. v. Peter Yu Case No. D2010-0737 1. The Parties
The Complainant is Credit Europe Bank N.V. of Amsterdam, The Netherlands, represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is is Peter Yu of Hong Kong, SAR of China represented by John Berryhill, Ph.D. esq., United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Backslap Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2010. On May 7, 2010, the Center transmitted by email to Backslap Domains, Inc. a request for registrar verification in connection with the disputed domain name. On May 7, 2010, Backslap Domains, Inc. transmitted by email to the Center its verification response confirming that:
(a) the disputed domain name was registered with it;
(b) the Respondent was the registrant of the disputed domain name; and
(c) English was the language of the registration agreement.
However, the Registrar disclosed updated contact information for the disputed domain name. The Center sent an email communication to the Complainant on May 12, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 17, 2010.
The Center verified that the Complaint together with the amended 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 May 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for any Response was June 8, 2010. The Response was filed with the Center June 9, 2010.
On June 23, 2010 prior to the appointment of the Panel, the Complainant submitted a proposed Supplemental Filing. On June 30, 2010, the Respondent submitted a supplemental filing in response to the Complainant's proposed supplemental filing.
The Center appointed Warwick A. Rothnie, Willem J. H. Leppink and Richard G. Lyon as panelists in this matter on July 5, 2010. 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 was founded in 1994 in the Netherlands. It provides banking and financial services in a number of countries.
According to the Complainant's website,1 when the Complainant was founded in 1994 it was part of Fiba Holding AS and traded under the name “Finansbank”. Further, it was not until after the sale of its Finansbank AS Turkey division to the National Bank of Greece in 2006 that the Complainant was rebranded to become Credit Europe Bank NV.
The Complainant has submitted evidence of a number of registered trademarks that include the words “Credit Europe,” the earliest of which were applied for on 25 and 28 September 2006. One of these is Benelux registration No 808175 for Credit Europe with a device of a diamond within a circle separating the word “Credit” from “Europe”, which is registered for a range of goods and services in International Classes 9, 16, 35 and 36. Another is Benelux registration No. 808230 for CreditEurope Bank with the same “diamond in a circle” device separating the words “Europe” and “Bank”. The Complainant also has International Registrations flowing from these trademarks, although protection has been refused in some of the countries in which it was sought.
The whois record indicates that the disputed domain name was registered in November 2001. However, the Respondent states that it first obtained the registration on October 15, 2003.
The Respondent, or a company associated with him, has a business providing a range of Internet services. It would appear from other UDRP decisions referred to by both the Complainant and the Respondent that the Respondent, or his company, has registered other domain names for use in connection with search portals and the generation of advertising revenues.
Prior to the Complaint being filed, the disputed domain name resolved to a website which contained material relating to the financial or credit standing of various European countries. The Complainant contends, and the Respondent does not dispute, that this material has simply been extracted from a website operated by the British Broadcasting Corporation.
Before the Complaint was filed, representatives of the Complainant sought to negotiate purchase of the disputed domain name from the Respondent. In response to the Complainant's offer of EUR 5,000, the Respondent requested payment in the range of EUR 200,000. Further negotiations in which the Complainant offered substantially higher amounts resulted in only a small reduction by the Respondent and no agreement was reached. 5. Discussion and Findings A. Procedural matters
Before addressing the substantive requirements under the Policy, the Panel deals with two procedural matters.
First, the Response was received by the Center in Geneva some five hours after midnight on the due date for its submission. The relevant record of the email communication indicates that the Response was transmitted on June 8, 2010 in the United States where the Respondent's counsel is located. Accordingly, the Response was timely transmitted for the purpose of paragraph 2(f)(i) of the Rules, bearing in mind the time difference between Switzerland (where the Center is located) and the United States (where the Respondent's counsel is located). In the circumstances, therefore, the Response was filed within time and the Panel accepts the Response as part of the Record.
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent's position on a particular point was clear.
In this case, the Complainant's proposed Supplemental Filing does seek to respond to issues going to the heart of the dispute. The central matter raised in the Response is whether the Complainant commenced using its trademark in 1994 as the Complaint can be read as suggesting or not until 2006 or 2007. The Response contends for the latter date, citing supporting evidence. These were matters which were well within the Complainant's knowledge before the Complaint was prepared and go to the foundation of its case.2 This would normally be a proper basis for rejecting the proposed supplementary filing, however, the allegations made in the Response properly called for explanation by the Complainant. Accordingly, the Panel admits the Complainant's Supplemental Filing. While it is not strictly necessary, the Panel also admits the Respondent's Supplemental Filing in the interests of fairness. B. Substantive consideration
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(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.
Typically, a Panel considers each of the three requirements under paragraph 4(a) of the Policy in turn. Because paragraph 4(a)'s requirements are conjunctive, however, no matter what the findings under the first and second sub-paragraphs, the Complainant must fail under the requirement to demonstrate that the disputed domain name has been both registered and used in bad faith.
The central fact in this case is that the Respondent registered the disputed domain name in October 2003. That is almost three years before the Complainant applied to register the trademark rights on which it relies. Moreover, the Complainant does not in its Supplemental Filing contest the Respondent's allegation that the Complainant did not commence using the name “Credit Europe” as, or as part of, its trading name until 2007. The Supplemental Filing instead proceeds on the basis that the Response has correctly identified the date the Complainant commenced using the Credit Europe name and branding. Hence, the Respondent also registered the disputed domain name more than three years before the Complainant actually adopted its current corporate and trading name.
Paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states (omitting citations):
Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right.
In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant's potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant's enterprises.
Having regard to the timing of the registration of the disputed domain name and the Complainant's adoption of the “Credit Europe” name and branding, there cannot be and is not any suggestion that the Respondent was aware of the Complainant's trademark rights or otherwise adopted the disputed domain name to take advantage of the Complainant's rights.
In its Supplemental Filing, the Complainant draws attention to its very substantial operations over a number of years now by reference to “Credit Europe Bank” and refers to the large number of domain names based on “crediteurope” or “crediteuropebank” which it has registered since 2006/2007. It states further that there is a significant volume of traffic going to the website which the disputed domain name resolves to which is presumably misdirected or which the Complainant contends is otherwise causing harm to the Complainant's business. It contrasts the nature of the Respondent's business and use of the disputed domain name to the scale and nature of the Complainant's activities. The Complainant then submits that it is being disproportionately harmed by the Respondent's retention and use of the disputed domain name, contending:
It should be clear that my client's interests are more important and carry bigger weight than the interests of the Respondent, and therefore it is justified if the domain name is transferred to [it].
These submissions are predicated on a misunderstanding of the Policy. The Policy is limited in its operation. It requires that the disputed domain name be both registered in bad faith and used in bad faith.
While this Panel accepts that the way in which a domain name is used may in appropriate cases lead to an inference that the domain name was also registered in bad faith, it is nonetheless necessary to be able to infer that the registration was in fact in bad faith at the time of registration. See e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470 and the earlier decisions referred to in that decision.
For the reasons already explained, the record in this case does not establish that the disputed domain name was registered in bad faith. Accordingly, the Complainant cannot establish the third requirement under the Policy. 6. Decision
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Presiding Panelist
Willem J. H. Leppink
Panelist
Richard G. Lyon
Panelist (Concurring)
Dated: July 14, 2010
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