ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION ABN AMRO Bank N.V. v. Motasem Alomari, WG Case No. DAI2024-0057 1. The Parties The Complainant is ABN AMRO Bank N.V., Netherlands (Kingdom of the), represented by CSC Digital Brand Services Group AB, Sweden. The Respondent is Motasem Alomari, WG, Jordan, self-represented. 2. The Domain Name and Registrar The disputed domain name
is registered with 1API GmbH (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2024. On July 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted | EU Registrar, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 30, 2024, 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 July 30, 2024. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2024. The Response was filed with the Center on August 10, 2024.
page 2 The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 26, 2024. 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 is third largest bank in the Netherlands, formed by the merger of Algemene Bank Nederland (“ABN”) and Amsterdam-Rotterdam Bank (“AMRO”) in September 1991. The Complainant has had a net profit of EUR 2,325 million in 2018, and presently employs approximately 18,830 people across five continents. The Complainant is the owner, amongst others, of the domain names , registered on October 13, 1995, and , registered on September 3, 1996, in addition to the following, amongst other, trademark registrations: - United States of America trademark registration No. 1748791 for the word mark ABN AMRO, registered on January 26, 1993, successively renewed, in class 36; - Benelux trademark registration No. 478647 for the word mark ABN AMRO, registered on July 6, 1990, successively renewed, in classes 9, 16, 18, 25, 35, 36, 38, 39, 41, 42, and 45; - International trademark registration No. 561342 for the word mark ABN AMRO, registered on October 12, 1990, successively renewed, in classes 16, 35, and 36; and - European Union trademark registration No. 005796263 for the word mark ABN AMRO, registered on August 14, 2008, in classes 9, 35, 36 and 41. The disputed domain name was registered on April 13, 2023, and presently does not resolve to an active webpage. Previously, the disputed domain name resolved to a parked webpage indicating that it might be for sale, having it been listed for sale for USD 100,000 (Annex 9 to the Complaint). 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that since its creation in 1991 and trademarks dating back to 1990, the Complainant spent substantial time, effort, and money advertising and promoting the ABN AMRO brand which became well recognized and respected worldwide and in its industry. Under the Complainant’s view, the disputed domain name entirely reproduces the Complainant’s well-known ABN AMRO trademark thus being clearly identical thereof. Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that: (i) the Respondent is not commonly known by the disputed domain name and has not acquired any trademark rights in the disputed domain name; (ii) the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark;
page 3 (iii) the Respondent has failed to legitimately use the disputed domain name and has not demonstrated any attempt to make a legitimate use thereof; and (iv) the Respondent, by exhibiting a willingness to accept solicitations to purchase the disputed domain name, strongly suggests that the Respondent does not have any rights or legitimate interests in the disputed domain name. As to the registration and use of the disputed domain name in bad faith, the Complainant asserts that its ABN AMRO trademark is known internationally, with trademark registrations across numerous countries. The Complainant further contends that ABN AMRO is so closely linked and associated with the Complainant that the Respondent’s use of this mark, strongly implies bad faith. While passively holding the disputed domain name, the Respondent has offered it for sale for the exorbitant amount of USD 100,000 (Annex 9 to the Complaint), what characterizes the Respondent’s intent to sell, rent, or otherwise transfer the disputed domain name for valuable consideration in excess of his out-of-pocket expenses. Furthermore, two other factors indicate the Respondent’s bad faith: the Respondent’s choice to retain a privacy protection service to hide his identity and the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding (Annex 11 to the Complaint). B. Respondent The Respondent describes himself as a “seasoned domain investor and reseller from the Middle East”, focused in acquiring domain names for investment, based on factors like market demand and naming conventions, having acquired the disputed domain name as part of his strategy, seeing its potential in the AI and tech sector. The Respondent asserts that he was unaware of the Complainant and its trademark when registering the disputed domain name, having purchased it in good faith for its generic value, particularly in the Middle East where the name “abnamro” is “linguistically common”. The Respondent further contends that his approach has always been rooted in good faith, with a focus on the disputed domain name's inherent value as an investment, rather than any intent to capitalize on the Complainant’s reputation, not having used the disputed domain name in bad faith, and never having contacted the Complainant or its competitors to offer the disputed domain name for sale. The Respondent further stresses that he acquired the disputed domain name in view of its its generic value and linguistic significance, with no desire to mislead or confuse consumers, nor to profit from the Complainant’s reputation, being the present complaint an attempt to acquire the disputed domain without fair compensation and in an effort to “sidestep the legitimate market process”. Lastly, the Respondent asks the Panel to consider his true legitimate and good faith motivations while remaining “open to negotiating a mutually beneficial resolution” for the sale of the disputed domain name based on its “assessed value and demand”. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
page 4 (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. The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. In special, the Respondent states, without evidence, that the disputed domain name would be linguistically common in the Middle East and there would be a “generic value and linguistic significance” in the disputed domain name. This assertion, however, appears to be without merit, since there is no evidence of such generic nature or linguistic significance in Arabic, or in the Middle East generally, for “ABN AMRO”, as a name or otherwise, which is rather a coined trademark resulting from the acronyms of the two institutions that were merged to form the Complainant (Algemene Bank Nederland (“ABN”) and Amsterdam-Rotterdam Bank (“Amro”)). Even a cursory Internet search for the term “abnamro”, together with “name” and either “Arabic” or “Middle East”, furnish results only relating to the Complainant, particularly its widespread activities
page 5 in the Middle East, further casting doubt on the Respondent’s alleged defence.1 The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances: (i) the well-known status of the Complainant’s distinctive trademark; (ii) the lack of any evidence to support the Respondent’s claim that “ABN AMRO” would be of “generic value and linguistic significance” in Arabic or the Middle East; (iii) the listing of the disputed domain name for sale for USD 100,000, which is clearly an amount in excess of out-of-pocket costs incurred in the registration of the disputed domain name; (iv) the Respondent’s affirmation to be a “seasoned domain investor and reseller” from the Middle East and therefore a higher standard expected from him as to mitigate the risk of registering as domain names those which likely refer to third parties’ well-known trademarks; (v) the present inactive use of the disputed domain name; and (vi) the lack of reply to the cease-and-desist letter sent prior to this procedure. The Panel finds that the Complainant has established the third element of the Policy. 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. /Wilson Pinheiro Jabur/ Wilson Pinheiro Jabur Sole Panelist Date: September 9, 2024 1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8, on general powers of panels to perform limited factual research into matter of public record if deemed useful in assessing case merits.
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