The Complainant is Interbanking S.A. of Buenos Aires, Argentina, represented by AVOA – Abogados, Argentina.
The Respondent is Alexander Lerman of Berkeley, California, United States of America, represented by John Berryhill, Ph.d. esq., United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2013. On November 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced November 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response December 4, 2013. The Response was filed with the Center on December 6, 2013.
The Center appointed Christopher J. Pibus, Gustavo Patricio Giay and Richard G. Lyon as panelists in this matter on January 7, 2014. 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 on September 25, 1996, when Datacash S.A. and Newnet S.A. merged to form Interbanking S.A. The Complainant initiated its commercial activities in Argentina, as an e-commerce business permitting payments and money transfers to be made via the Internet. At the date the Complaint was filed the Complainant’s core business consists a system and platform which permit customers to view current account information from several banks, download data to perform bank reconciliations, invoices and payments, and make on-line real-time electronic money transfers. The Complainant today has more than 110,000 clients and supports over 165,000,000 transactions per month through the Complainant’s website at “www..ar”. The Complainant carries on business principally in Argentina and neighboring countries in South America.
The Complainant owns a number of trademark registrations in Argentina including:
INTERBANKING – Registration No. 2037652 dated June 21, 1996 for insurance, financial affairs, monetary affairs, real estate affairs.
INTERBANKING – Registration No. 2756543 dated July 5, 2007 for insurance, financial affairs, monetary affairs, real estate affairs.
INTERBANKING Logo – Registration No. 2662447 dated April 7, 2006 for insurance, financial affairs, monetary affairs, real estate affairs.
B INTERBANKING – Registration 2268254 dated February 15, 2000 for insurance, financial affairs, monetary affairs, real estate affairs.
The disputed domain name was created on March 4, 1997. At the time the Complaint was filed the disputed domain name reverted to a website that provided links to websites of other third party entities. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant submits that it owns registered trademark rights in INTERBANKING, including those particularized above in Section 4.
The Complainant contends that the disputed domain name is identical to INTERBANKING trademark. The Complainant notes that the disputed domain name was registered on April 3, 19971, 10 months after the Complainant’s first trademark application for INTERBANKING was filed in Argentina. Rights or Legitimate interests
The Complainant submits that the Respondent has not registered or applied for the trademark INTERBANKING in the United States Patent and Trademarks Office (USPTO), and cites this failure to file an application as evidence of a lack of right or legitimate interest in the disputed domain name.
The Complainant also submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods. At the time the Complaint was filed, the disputed domain name reverted to a website that provided links to third parties which relate inter alia to banking, e-banking, on-line banking and financial services. The Respondent is alleged to be using the disputed domain name to divert genuine Internet traffic to its website for purposes of monetary gain. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent registered and is using an identical domain name for commercial gain, by creating a likelihood of confusion with the Complainant’s mark; (ii) the Respondent is intentionally diverting Internet users seeking the Complainant’s website to its website for purposes of monetary gain; (iii) the Respondent registered the disputed domain name for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant, the owner of the INTERBANKING trademark, or to a competitor of the Complainant, for purposes of monetary gain; (iv) the Respondent owns 5,490 domain names; and (v) the Respondent’s registration and use of the disputed domain name is causing enormous damage to the Complainant’s reputation and business. B. Respondent
The Respondent submits that the combination of the terms “inter” and “banking” is and has been widely adopted to denote Internet-related transactions, and is commonly associated with Internet banking. The Respondent notes that the Complainant admitted that the term interbanking” has “commonly understood meaning in relation to the banking activity.” The Respondent contends that the Complainant does not have registered trademark rights in association with the services of Internet banking and e-banking, which are the areas where it actually conducts business under the INTERBANKING mark.
The Respondent submits that it has a right and legitimate interest in the disputed domain name, particularly in the United States where he resides. The Respondent contends that the absence of a USPTO registration for the trademark INTERBANKING supports the conclusion that he was at all times free to use the term “interbanking” in the manner which he has been doing for many years. The term “interbanking” is primarily associated with Internet banking services and the disputed domain name has been used in connection with this ordinary meaning since 1997. The Respondent further contends that UDRP panels have recognized that the use of a domain name to post a parking page or links to other websites may be permissible in some circumstances. The Complainant has failed to demonstrate the Respondent’s lack of any rights or legitimate interests. The Respondent also submits that UDRP panels have found that the use of a domain name in association with pay-per-clicks may be evidence of bona fide use. Lastly, the Complainant’s trademark may be well-known in Argentina, but that reputation does not extend to the U.S.A., and does not preclude a registrant from using or owning a “generic” term in a domain name, outside that limited territory.
The Respondent submits that he was not aware of the Complainant’s trademark when he registered the disputed domain name, and there is no reason that the Respondent should have been aware of the Complainant’s rights which were limited to Argentina in 1997. The Respondent further submits that he has owned and used the disputed domain name since 1997. The Complainant’s claim that the registration and use of the disputed domain name is causing “enormous damage” is not credible in view of the long term ownership and use by the Respondent and the Complainant’s inaction during such time. 6. Discussion and Findings Preliminary Finding on Late Filing of Response
The Panel is prepared to permit the late filing of the Respondent’s submissions in this proceeding. The Panel agrees with the principles laid out in Internationale Spar Centrale B.V. v. Scientific Process & Research, Inc.WIPO Case No. D2005-0603, that the Panel must ensure the parties are treated with fairness and equity. The Response was filed before the commencement of the decision making process and the lateness does not delay the decision. With these criteria met, the Panel accepts the late filing.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have registered trademark rights in the mark INTERBANKING by virtue of its trademark registrations namely Argentine Registration Nos. 2037652; 2756543; and 2662447 in association with insurance, financial affairs, monetary affairs, real estate affairs. The Panel further finds that the disputed domain name is identical to the Complainant’s registered trademark INTERBANKING.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In view of the findings on bad faith below, it is not necessary for the Panel to make a finding on rights or legitimate interests. C. Registered and Used in Bad Faith
The Panel accepts the evidence that the term “interbanking” is a common and widely used term to denote Internet banking and transactions between banking institutions. The Panel recognizes that the Complainant has established a substantial reputation in Argentina, but at the time the disputed domain name was registered by the Respondent, the Complainant’s business had only recently started, and was only operating in Argentina. The Respondent resides in the United States and submits that he was unaware of the Complainant’s trademark rights when he registered the disputed domain name in 1997. The Panel, after considering the evidence submitted and the generic nature of the terms which form the disputed domain name, finds that the Respondent was not aware, and had no reason to be aware, of the Complainant’s trademark rights at the time the disputed domain name was registered.
With respect to the Respondent’s use of the disputed domain name, the Panel finds that the use of a pay-per-click site, in the circumstances of this case, is not probative of bad faith under the Policy. Given that the terms “inter” and “banking” are widely used for the purpose of denoting Internet banking services. It is not surprising that the disputed domain name currently reverts to a website which provides links to websites offering on-line banking, Internet banking, e-banking and other financial services. These businesses are all logically connected to the generic meaning of the combination of the terms “inter” and “banking”.
Accordingly, the Panel finds that the registration and use of the disputed domain name does not constitute bad faith, and that the Complainant has therefore not satisfied the requirement under paragraph 4(a)(iii) of the Policy.2 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Presiding Panelist
Gustavo Patricio Giay
Panelist
Richard G. Lyon
Panelist
Date: January 23, 2014
1 The Panel notes however that the WhoIs database annexed to the Complaint indicates the “Creation Date” as “1997-03-04”, which appears as “March 4, 1997” at the upper part of the same page.
2 On the authority of RPG Life Sciences Ltd. v. James Mathe,WIPO Case No. D2013-2094, and Aero Club v. Domain Admin - DomainG,WIPO Case No. D2013-1656, one Panel member would include a finding of Reverse Domain Name Hijacking in the Decision: Given the difficulties in proving that the Respondent in a distant country both knew of the trademark at issue and chose it for a free ride on its goodwill sixteen years ago, and only one year after the mark was registered, “the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.17.
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