Complainant is ING België NV of Brussels, Belgium, represented by time.lex CVBA, Belgium.
Respondent is Personal use/ Andrius Daugela of Vilnius, Lithuania. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is which is registered with Tucows Domains Inc. of Toronto, Canada (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2013. On July 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 15, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for a response was August 8, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 9, 2013.
The Center appointed James H. Grossman as the sole panelist in this matter on August 16, 2013. 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 a wholly owned subsidiary of the ING Group, a Dutch based multinational banking and financial services corporation founded in 1991 with headquarters in Amsterdam, the Netherlands (“Parent”). The “Orange Lion” on its logo which has become well recognized, particularly in the banking and financial world, is an allusion to the Parent’s Dutch origins under the House of Orange-Nassau. According to the Fortune Global 500 in 2012, Parent was the world’s largest banking/financial services and insurance conglomerate by revenue with gross receipts exceeding USD150 billion per annum. Parent has more than 82,000 employees serving over 61 million customers in over 40 countries. Complainant became a wholly-owned subsidiary of Parent in 1998 and changed its name to ING Belgie NV in April 2013.
Parent is the owner of various Benelux trademarks regarding ING such as Benelux trademark No. 0493347, registered on January 11, 1991, as well as the owner of the international trademark registration No. 583286 dated February 13, 1992 displaying ING and its Orange Lion logo. There are numerous other ING trademarks as well.
Parent is also the owner of Benelux trademark HOME’BANK registered on July 1, 1992 (No. 0506461).
Parent has granted trademark licenses on both the ING and HOME'BANK trademarks to Complainant through a letter of consent dated July 12, 2013 included in the documents from Complainant. The trademark license includes the right of Complainant to conduct legal proceedings related to the trademarks, including this UDRP domain name proceeding.
Both the trademarks ING and HOME’BANK are extensively advertised and promoted in the countries in which Parent and its subsidiaries including Complainant do business.
The Disputed Domain Name was registered on August 27, 2012. On May 22, 2013, Complainant sent a cease-and-desist letter to the email address that was displayed on the website related to the Disputed Domain Name. In response to the letter of May 22, 2013, an individual named Andrius Daugela (“Real Respondent”) who previously had no apparent connection to the named Respondent, acknowledged that he was the owner of the Disputed Domain Name. In this response to Complainant, the Real Respondent confirmed in a carefully worded manner that, inter alia, he would transfer the Disputed Domain Name for no less than USD 1,500.
Subsequent to the appointment of the Panel in this case, Complainant filed a supplementary document relating to the issue as to the August 27, 2013 expiry date of the Disputed Domain Name. The Panel has determined that the circumstances relating to the supplementary filing is exceptional and has determined to accept the supplementary filing of correspondence relating to possible actions after August 27, 2013, particularly in view of the impending expiry date this month. While the Registrar had placed a restriction on any transfer of the Disputed Domain Name until the date of expiry and, despite efforts by Complainant to get Real Respondent either to pay for a renewal prior to the expiry date or to allow Complainant to pay for the renewal, the Real Respondent has simply refused to take any action. The Registrar has taken the position that it cannot send an invoice to Complainant in that only the Respondent can do so and the latter does nothing. The Panel reviewed the situation and accepted supplementary documents relating to these recent actions as well as the inaction by the Respondent. 5. Parties’ Contentions A. Complainant
In addition to the points set forth above, Complainant points out that there is only one small difference between the Disputed Domain Name and the trademarks ING and HOME’BANK--the apostrophe. As Complainant states, if Respondent merely deleted or added punctuation, the Disputed Domain Name is considered to be confusingly similar. Further, a domain name is confusingly similar if it combines two or more trademarks of a complainant as in this case. In this case also, Complainant states that if HOME’BANK were considered to be a generic or descriptive word, the Panel should still find the combination confusingly similar as the word “home bank” relates to Complainant’s online home banking business. Finally, the addition of “.com”, a generic Top-Level Domain, is irrelevant to the determination of the identity or similarity between a domain name and a trademark, as the use of a Top Level Domain is technically required to operate a domain name. (T. Bettinger, Domain Name Law and Practice. An International Handbook, Oxford, Oxford University Press, 2005, p.1035, No. IIIA,.230).
Respondent has no trademark or other intellectual or industrial property rights with respect to the Disputed Domain Name. Complainant alleges that the Real Respondent in his response to the cease-and-desist letter stated that he had no intention of violating the trademark and that this was an admission of infringement. Further, there was no bona fide offering of goods or services nor is the Real Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Finally, Complainant states that it has not given Respondent any rights nor has Respondent any legitimate interests in the Disputed Domain Name.
As for bad faith, the Disputed Domain Name was registered 20 years after the first registration of both the ING trademark and the HOME’BANK trademark. It is unlikely that the Real Respondent is not aware of ING, an internationally well recognized multinational bank. This argument is combined with the clear intent by the Real Respondent to profit from the sale of the Disputed Domain Name as he alludes in his response to the cease-and-desist letter of May 22, 2013. The argument that Respondent registered the Disputed Domain Name primarily to sell it to an ING company is confirmed by the fact that Respondent did not make a bona fide offering of goods or services nor did he make a noncommercial fair use of it. See August Storck KG v. Origan Firmware, WIPO Case No. D2000-0576, for issues on bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, in view of the response by the Real Respondent to the Complainant’s cease-and-desist letter, the Panel believes that for purposes of this matter the Real Respondent should also be named as a Respondent in this matter. The Panel has determined to use the named Respondent and Real Respondent interchangeably. 6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
i. The Disputed Domain Name is identical or confusing similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests with respect to the Disputed Domain Name; and
iii. The Disputed Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Because Respondent has defaulted by failing to timely file a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)) and certain factual conclusions may be drawn on the basis of Complainant’s undisputed representations (id paragraph 15(a)). The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management., Inc. v. webnet-marketing, inc., NAF Claim No. 95095. A. Domain Name Expiry
The Panel, having regard to the expiry issue discussed in the Factual Background, supra, notes that paragraph 3.7.5.7 of the Expired Domain Deletion Policy (EDDP), applicable here, provides that “[i]n the event that a domain which is subject of a UDRP dispute is deleted or expires during the course of the dispute, the complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant”.
In conjunction with the implementation of this Decision pursuant to paragraph 4(k) of the Policy, the Panel draws the Registrar’s attention to paragraph 3.7.5.7 of the EDDP, which provides a complainant an opportunity to renew or restore the disputed domain name. B. Identical or Confusingly Similar
Complainant has established that it has trademark rights in both ING and HOME’BANK dating back to 1992. Accordingly, the only issue remaining is as to whether the Disputed Domain Name is identical or confusingly similar to the Trademarks. As stated above, in Complainant’s contentions regarding the Disputed Domain Name being confusingly similar, Complainant has made a straightforward case for such a result in that the Disputed Domain Name is identical to the two trademarks of Parent except for an apostrophe. In the case of Microsoft Corporation v. S.L. Mediaweb, WIPO Case No. D2003-0538 the panel held that “it is well established by previous UDRP panel decisions that a domain name incorporating a distinctive trademark, such as the trademark MSN in this case, in its entirety creates sufficient similarity between the mark and the domain name as to render it confusingly similar.” Parent has been using the ING and HOME’BANK trademarks in connection with its business since 1992, twenty years prior to the registration date of the Disputed Domain Name. The Panel agrees with the contentions set forth by Complainant. The Disputed Domain Name is confusingly similar to the Parent’s Trademarks licensed to Complainant.
The Panel finds the first element is satisfied. C. Rights or Legitimate Interests
Respondent has been given no rights of legitimate interests in respect of the Disputed Domain Name by Complainant. The Panel cannot find any evidence that the Respondent is making any bona fide offering of goods or services under the Disputed Domain Name. Respondent has misappropriated the name for his own purposes and without any concern for the legitimate trademark owner.
Previous UDRP panels have held that when a respondent does not respond to a complaint, it can be assumed in appropriate circumstances that this respondent has no rights or legitimate interests in the disputed domain name. See Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269 and AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017. If Respondent has a right or legitimate interest in the Disputed Domain Name, it surely would have responded to this Complaint.
While the overall burden of proof rests with Complainant, prior UDRP panels have agreed that this could require a complainant to prove a negative; that is, requiring complainant to provide information primarily within the knowledge of the respondent. Therefore a complainant is required only to make a prima facie case that respondent lacks rights or legitimate interests. The Panel accepts that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Accordingly, the burden of rebuttal is transferred to Respondent. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Since Respondent has failed to respond to the Complaint, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy and, accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name. D. Registered and Used in Bad Faith
As Complainant has stated and with which the Panel agrees, Respondent is deceptively diverting the public to the Disputed Domain Name by improperly capitalizing on the fame of ING and by confusing Internet users who are made aware on the website that the Disputed Domain Name is for sale. Thus, there is also the factor that Respondent is seeking commercial gain by offering the well recognized two trademarked names included in its Disputed Domain Name. See Bogart, Inc. v. Humphrey Bogart Club, NAF Case No. 162770 (August 4, 2003). See also Nordstrom Inc. and NIHC, Inc. v. Private Registration c/o WhoisGuardS, NAF Case No.1412491.
The Panel also notes that Complainant points out that the Real Respondent has taken similar actions seeking to sell the Disputed Domain Name in previous cases.
Of course Real Respondent’s obvious intent to conceal his true identity, by using the name “Personal use” is further evidence of bad faith. This Panel wishes to register its displeasure with the ability of registrars to grant domain names to obviously false applicants. As the Panel has said in the past, it is time to require more of the registrars of domain names to avoid this result so that we do not have to spend the time and money to return the domain name to its appropriate owner.
This third element has been satisfied.
The Panel would like to have been provided with information as to why this action was not brought by the Parent instead of the Complainant. The Letter of Consent dated July 12, 2013 seems obviously to have been completed solely for the purpose of granting Complainant the right to bring this action. However, while not disclosed, the reason will not detract from the outcome determined by the Panel. 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 Disputed Domain Name be transferred to the Complainant.
James H. Grossman
Sole Panelist
Date: August 26, 2013
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