The Complainant is Intesa Sanpaolo S.p.A., Torino, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Gordon Bewick, Massachusetts, United States of America (“USA”), represented by Holland & Knight LLC, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2014. On October 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2014 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 on November 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2014.
Following communications between the parties and the Center, on December 18, 2014 the Center suspended the proceeding until January 17, 2015 to allow time for the parties to explore settlement possibilities.
It would appear that the settlement discussions were not successful and the Response was filed with the Center on January 14, 2015.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 6, 2015. 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.
On February 5, 2015, a supplement filing was received from the Complainant. On the same day the Response replied to the filing stating “I stand by my original response to the complaint and wait further advices”. The Center acknowledged receipt of the filing on February 6, 2015. 4. Factual Background
The Complainant is a large banking group headquartered in Italy. In Italy, it has some 4,500 branches and 11.1 million customers with an average market share of 14%. It also has operations in “central-eastern Europe”, where the group has approximately 1,400 branches and 8.4 million customers. It has operations in some 29 countries.
It would appear that the group’s operations in Europe are carried on under several different names. The subsidiary in Hungary is CIB Bank Zrt. That subsidiary provides services in Hungary through a number of divisions: CIB Bank, CIB leasing, CIB Factor and CIB Insurance are identified in the Complaint. The CIB Bank operations in Hungary have more than 500,000 customers and operate through a branch network of almost 100 outlets.
The Complainant owns a number of registered trademarks. Those identified in the Complaint include:
(a) CTM No. 006433155 for “CIB” in respect of goods and services in International Classes 9, 16, 35, 36, 38, 41 and 42 registered on November 10, 2009;
(b) CTM No. 006662209 for “CIB” & device in respect of goods and services in International Classes 9, 16, 35, 36, 38, 41 and 42 registered on April 22, 2010;
(c) CTM No. 006433197 for “CIB BANK” in respect of goods and services in International Classes 9, 16, 35, 36, 38, 41 and 42 registered on September 26, 2010;
(d) CTM No. 006666531 for “CIB INSURANCE BROKERAGE” in respect of services in International Classes 35, 36 and 38 registered on January 22, 2009;
(e) CTM No. 006666812 for “CIB CREDIT” in respect of services in International Classes 35, 36 and 38 registered on December 16, 2008;
(f) CTM No. 006779623 for “CIB GROUP” in respect of services in International Classes 35, 36 and 38 registered on January 21 2009: and
(g) CTM No. 006666796 for “CIB INVESTMENT FUND” in respect of services in International Classes 35, 36 and 38 registered on December 5, 2009.
The disputed domain name was registered on May 22, 2013.
The Respondent is an insurance broker based in Boston. At the time the Complaint was filed, the disputed domain name resolved to a website which is a “parking page”. When accessed from Italy by the Complainant’s representatives, the page displayed a page “Why am I seeing this “Under Construction page?” which included links to a number of the Complainant’s competitor banks in Italy. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 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 directs the Panel to decide the 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.
Before proceeding to the substance of the dispute, the Panel needs to rule on the admissibility of the Complainant’s supplemental filing.
Paragraph 12 of the Rules empowers the Panel of its own motion to request further statements or documents from the parties. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response.
Paragraph 10 of the Rules, however, gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that parties are treated equally and given a fair opportunity to present their respective cases. Consistently with the objective of providing an efficient and effective online dispute resolution mechanism, paragraph 10(c) directs the Panel to ensure that the proceeding takes place with due expedition. Subject to the overriding obligations mentioned, paragraph 10(d) empowers the Panel to determine the admissibility, relevance materiality and weight of the evidence.
The Respondent does not object to the admissibility of the supplemental filing and stands on his Response. For the most part, the Complainant’s supplemental filing addresses matters raised in the Response which could not reasonably have been anticipated. The Panel, therefore, will include the supplemental filing in the record for this proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (”WIPO Overview 2.0”), paragraph 4.2. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks identified in section 4 above.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, it is permissible in the present circumstances to disregard the “.biz” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252.
Accordingly, the disputed domain name differs from the Complainant’s CIB trademark merely by the addition of the descriptive word “online”. The addition of such a descriptive term, particularly one so apt to identify the “online” presence of a business or entity associated with a particular trade mark, is insufficient to dispel any potential for confusion. The distinctive component of the disputed domain name, CIB, is identical to the distinctive component of the Complainant’s CIB trademark.
The potential for confusion is increased to the extent it is permissible to take into account that the Complainant has a family of “CIB” trademarks which consist of the distinctive element “CIB” plus a descriptive term or descriptive terms.
In these circumstances, therefore, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or 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) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. Further, the disputed domain name is plainly not derived from the Respondent's name nor, so far as the Complainant is aware, is the Respondent commonly known by the disputed domain name. Finally, the Complainant contends that any use of its trademarks (or, the Panel infers, anything confusingly similar to the Complainant’s trademarks) must be authorized by the Complainant.
At this stage, the Panel notes that the last proposition is overstated: otherwise the matters identified in paragraph 4(c) above would not provide a basis for a respondent to show it had rights or legitimate interests in the disputed domain name.
With that qualification, the matters identified by the Complainant are sufficient to raise a prima facie case against the Respondent that he does not have rights or legitimate interests in the disputed domain name: see e.g., paragraph 2.1 of the WIPO Overview 2.0”.
The Respondent is the president of an insurance brokerage firm, Boston Insurance Brokers which is a wholesale commercial intermediary located in Boston Massachusetts, USA. He says he wishes to extend his business into retail commercial insurance and for that purpose has incorporated a new company, Commercial Insurance Brokerage Direct LLC. That company was incorporated on June 20, 2013. The company has been registered in Massachusetts to carry on business in the insurance field.
The Respondent further says he registered the disputed domain name with some other domain names in connection with that proposed business. When he did so, he says he was not aware of the Complainant’s Hungarian operations or its trademarks. He notes that CIB is a common acronym, even in the banking and insurance fields. Examples in the Google search annexed to the Response include Central Illinois Bank, Citizens Independent Bank and Commercial International Bank. Many of the “hits” returned are also to the Complainant’s Hungarian arm. Finally, he says that he played no role in the choice of links displayed on the “parking page”. He was unaware it was even happening and has made no financial gain from it.
In its supplemental filing, the Complainant points out that the incorporation of the new company and its registration for business in Massachusetts occurred almost one month after the disputed domain name was registered. The Complainant also points out that the name of the new company as registered in both Delaware and Massachusetts is not “CIB”. It is possible, given the timing, that the corporate name could have been chosen to reflect the acronym “CIB” embodied in the disputed domain name. But it is equally possible that the acronym was chosen to reflect the name of the proposed business. It is a common, if not everyday, experience to find businesses registering and using acronyms of their proper names as domain names. Just in the banking field alone, the Panel is aware by way of example of for Australian and New Zealand Banking Group Limited and for National Australia Bank Limited. A multitude of other examples are possible. The Panel therefore considers that the inclusion of the acronym, CIB, in the disputed domain name rather than the new company’s full name is not in itself disentitling.
Similarly, given the comparatively short space of time between registration of the disputed domain name and incorporation of the new company, the Panel is not prepared to find that disentitling either. It is not uncommon for people to secure suitable domain names for a proposed business before registering the corporate name.
In its supplemental filing, the Complainant contends that the Respondent cannot make out his rebuttal because he is only planning to use the disputed domain name and has not in fact used it. However, the fact that the Respondent is only proposing to use the disputed domain name and has not in fact used it in a bona fide business is also not conclusive. As the terms of Policy paragraph 4(c)(i) show, demonstrable preparations to use can suffice, actual use is not required. The real question in this case is whether or not the Respondent has demonstrated that the disputed domain name was registered for use in connection with a bona fide business and legitimately reflects a name or trademark associated with that business.
Given he is involved in insurance brokerage in the USA and the Complainant’s relevant business operates in Hungary, the Respondent’s statement that he was not aware of the Complainant’s trademark or Hungarian business when he settled on the name for his new business is not inherently implausible.
The Respondent’s failure to respond to the Complainant’s letter of demand sent in September 2014 does not impugn that analysis. There is a dispute between the parties about whether the Respondent received it or, if he did, read it at the time. Whatever the position may be, it was not sent until more than one year after the Respondent registered the disputed domain name and incorporated the new company. It can hardly have affected his knowledge when he did those acts.
The Complainant also invokes the inclusion of pay-per-click links to its competitors to impugn the Respondent’s bona fides. As the Complainant points out, the use of a domain name which is confusingly similar to another’s trademark is typically found not to be use in connection with a bona fide offering of goods or services and respondents cannot rely on their lack of direct involvement to escape liability under the Policy. As paragraph 3.8 of the WIPO Overview 2.0 states, however, respondents are normally deemed responsible (emphasis supplied). It is not invariably the case. Typically, responsibility is imposed where the respondent is a “domainer” or otherwise appears to have registered the domain name to generate pay-per-click revenues or otherwise to take advantage of the trademark significance of the domain name. In the end, whether such conduct is disentitling turns on whether the respondent can show some legitimate basis for use of the domain name independent of its trademark significance.
So far as the record in this case shows, the Respondent is in fact associated with an existing insurance brokerage business, Boston Insurance Brokerage. See e.g., ””. It is not inherently implausible that the persons conducting such a business might want to expand into the retail sector. Nor is it inherently implausible that they would wish to adopt a different name. While branding theories may differ about whether business names should be distinctive or descriptive, “Commercial Insurance Brokers” is not an inherently implausible choice for such a business even if the Respondent was not aware of the Complainant or its trademarks.
In correspondence between the parties submitted to the Center, the Respondent submitted a letter from an associate which appears to be intended to demonstrate that plans for the use of the disputed domain name are still being developed. It is not clear what the relationship of the author of that letter with the Respondent is or what steps have been taken or are being explored in connection with the use of the name. If that were all, the Panel would not be willing to find that the Respondent was making demonstrable preparations to use the disputed domain name.
However, it appears that the Respondent or the Respondent’s new company registered another domain name, , on May 29, 2013: that is, shortly after the disputed domain name was registered. The Panel notes that that registration has been placed on “Registrar lock”, but has been unable to ascertain why. For present purposes, the significance of the registration of this second domain name, , is that it resolves to a website, CIB Direct Workers’ comp insurance, which appears to be for a business offering workers’ compensation insurance to businesses in the USA. According to that website, the business operates from the Respondent’s address, which is also the address of the Respondent’s Boston Insurance Brokerage business. That is, as the Respondent has claimed he was planning, he does in fact appear to be operating an insurance business associated with “CIB”. He is doing so in the USA where there are other “CIB” businesses in the banking and insurance field and where the Complainant has not claimed any trademark rights.
So far as the Panel can ascertain, the website does not appear to be targeting the Complainant or the Complainant’s trademark: it is directed to customers in the USA in connection with the provision of insurance in the USA, where the Complainant’s trademarks do not extend.
While it would be a simple enough step to have redirected the disputed domain name to the CIB Direct website, on balance the Panel finds that the Respondent has demonstrated a sufficient interest in the disputed domain name to rebut the prima facie case against him:
- he says, and there is not really any credible basis to disbelieve him, that he was not aware of the Complainant and its trademark when he adopted the disputed domain name;
- he says he adopted the disputed domain name for use in connection with a proposed business, Commercial Insurance Brokers;
- he does in fact appear to be operating an insurance brokerage business in the USA by reference to CIB Direct; and
- the Complainant’s business appears to be located in Hungary and its trademarks are registered in and extend to the European Community while the Respondent’s business activities appear to be directed only at customers in the USA.
In these circumstances, the Complainant has not established that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
In view of the Panel’s finding in section 5B above, the Complainant cannot succeed under the Policy and no purpose would be served by addressing the third requirement under the Policy. 6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: February 20, 2015
Full & Egal Universal Law Academy