The Complainant is Deutsche Bank AG of Mumbai, India, represented by M/s. Manilal Kher Ambalal & Co., India.
The Respondent is Childrenpulse / Mr. Pranav Prakash of New Delhi, India. 2. The Domain Name and Registrar
The Domain Name is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2012. On October 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 15, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and it has provided the contact details. The amendment to the Complaint was received by email on October 22, 2012 by the Center.
The Center verified that the Complaint together with the amendment to 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 October 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for response was November 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2012.
The Center appointed Ashwinie Kumar Bansal as the sole panelist in this matter on November 27, 2012. 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 asserts that it is a global banking and financial service company having its headquarters in Germany and it has offices in important cities in various countries. It is one of the largest foreign exchange dealers in the world. The Complainant offers financial products and services for corporate, institutional, private and business clients and offers a wide variety of services to their clients in India and abroad which includes sales, trading, research, organization of debt and equity, mergers and acquisitions, risk management system, retail banking, fund management, transaction banking, etc. It had established its first branch in India in the year 1980. It has employed over 7,800 employees in India with operating branches in 15 cities.
The Registrar of Trademarks, Trademark Registry, Mumbai, India has registered the trademarks DEUTSCHE BANK in class 35, 36, 38 and 42 vide four registration numbers 1261411, 1261416, 1261420, and 1261423 as per Annexure C attached with the Complaint. Registration certificates relate to the period 2004 and 2006. Apart from India, the Complainant has got the trademarks registered in number of countries across the world. The Complainant has also registered several domain names consisting of the trademarks.
The Domain Name was created on August 6, 2003 with the Registrar Melbourne IT Ltd as per verification response by the said Registrar. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it is the exclusive owner and proprietor of all the trademarks viz. DEUTSCHE BANK, DEUTSCHE BANK AG, logo of a square with a slash inside it and DEUTSCHE BANK with square logo. It had adopted the name “Deutsche Bank” as a part of its corporate name in the year 1974. The Complainant has spent extensive amount of money in the development of its business and the trademarks. The trademarks have acquired a distinctive name, tremendous goodwill and reputation.
Apart from its common law rights, the Complainant is also the registered proprietor of the trademarks. The trademarks have been associated by the members of trade and the general public with the Complainant only and the trademarks have become synonymous with it alone. The services rendered under the said trademarks are recognized exclusively as originating from the Complainant. The use of the trademarks or any other similar variant thereof by the Respondent amounts to infringement and cyber-squatting. It had already sent few notices to the Respondent to cancel the Domain Name but to no use.
The Complainant asserts trademark rights in DEUTSCHE BANK and alleges that the Domain Name is confusingly similar to the trademarks. The Complainant further alleges that the Respondent has no rights or legitimate interests in the Domain Name and that the Respondent has registered and used the Domain Name in bad faith. The Domain Name is deceptively and confusingly identical, visually and phonetically similar to the trademarks and domain names owned and registered by the Complainant. The Respondent has adopted the trademarks with an ulterior motive to deceive the public at large in order to cash in on the reputation of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 5(e) of the Rules provides: “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.” The Panel does not find any exceptional circumstances in the case preventing it from determining the dispute based upon the complaint, notwithstanding the failure of the Respondent to file a response. As per paragraph 14 (b) of the Rules, where a party does not comply with any provision of the Rules, the Panel is to draw such inferences there from as it considers appropriate. It remains incumbent on the Complainant to make out his case in all respects under paragraph 4(a) of the Policy which sets out the three elements which must be present for the proceeding to be brought against the Respondent, which the Complainant must prove to obtain a remedy. It provides as follows:
“4(a). Applicable Disputes. You [the respondent] are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
The Panel will address the three aspects of the Policy listed above. A. Identical or Confusingly Similar
The Complainant has established that it has registered trademarks rights in the trademark DEUTSCHE BANK in classes in 35, 36, 38 and 42 in India by virtue of four certificates of registration granted by the Registrar of Trademarks, Trademarks Registry, Mumbai, India, besides registrations in other countries. The trademark DEUTSCHE BANK has become associated by general public exclusively with the Complainant and none other. The Complainant has also seven domain name registrations incorporating the trademark.
The Respondent has registered the Domain Name wholly incorporating the trademark DEUTSCHE BANK of the Complainant, which the Panel finds is sufficient to establish confusing similarity for the purpose of the Policy.
The additional word “India” succeeding the trademark DEUTSCHE BANK in the Domain Name is merely generic and does not avoid a finding of confusing similarity of the Domain Name with the trademark. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words1. Furthermore, it is established that the specific top level domain is typically not an element of distinctiveness that is taken into consideration when evaluating the identity or confusing similarity between the Complainant’s trademark and the disputed domain name2.
Trademark registered with the Registrar of Trademarks, Trademark Registry, Mumbai, India is prima facie evidence of trademark rights for the purposes of the Policy3. Internet users who enter the Domain Name being aware of the reputation of the Complainant may be confused about its association or affiliation with the Complainant.
The Panel finds that the Domain Name is confusingly similar to the trademark DEUTSCHE BANK of the Complainant. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the Domain Name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests4. The Complainant has adopted the name and also registered the trademark DEUTSCHE BANK. The Complainant has been using the trademark for a long time. The Complainant has not authorized or permitted the Respondent to use the trademark DEUTSCHE BANK. The Panel finds that the Complainant has made out a prima facie case.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Administrative Panel to be proved, may demonstrate the Respondent’s rights or legitimate interests in the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. The Respondent has not filed a Response to rebut the Complainant’s prima facie case and the Respondent has thus failed to demonstrate any rights or legitimate interests in the Domain Name as per paragraph 4(c) of the Policy.
Based on the case file, and in view of the Panel’s finding below, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name . C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) is reproduced below:
“Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a) (iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”. Circumstances (i), (ii), and (iii) are concerned with the intention or purpose of the registration of the domain name, and circumstance (iv) is concerned with an act of use of the domain name.
The Complainant is required to prove both that the Domain Name was registered in bad faith and that it is being used in bad faith because in paragraph 4(a)(iii) of the Policy, the provision contains the conjunction “and” rather than “or” and it refers to both the past tense (“has been registered”) and the present tense (“is being used”) hence circumstances at the time of registration and thereafter have to be considered by the Panel. The Complainant is required to prove that the registration was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith.
The Complainant has not granted the Respondent permission or a license of any kind to use its trademark DEUTSCHE BANK. Such unauthorized use of the trademark DEUTSCHE BANK by the Respondent suggests opportunistic bad faith. The case is squarely covered by paragraph 4(b)(iv) of the Policy. The Respondent’s true purpose in registering the Domain Name which incorporates the trademarks DEUTSCHE BANK of the Complainant is, in this Panel’s view, to capitalize on the reputation of the trademark DEUTSCHE BANK by diverting Internet users seeking the Complainant’s website(s) to the Respondent’s own website (as evidenced as Annexure E of the Complaint).
The Panel finds that the Domain Name has been registered and is being used by the Respondent in bad faith. 7. Decision
For 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.
Ashwinie Kumar Bansal
Sole Panelist
Dated: December 8, 2012
1 See Dr. Grandel GmbH v. Drg Randel Inc.,WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242.
2 See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phoenomedia AG V. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
3 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 0705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 0174052 (finding that the Complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the Complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
4 See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 0741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 0780200.
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