WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

EFG Bank European Financial Group SA v. Jacob Foundation

Case No. D2000-0036

 

1. The Parties

Complainant is EFG Bank European Financial Group SA, 24 quai du Seujet, case postale, 1211 Geneva 2, Switzerland.

Respondent is Jacob Foundation, Calle 53, Urbanizacion Obarrio, Torre Swiss Bank, Piso 16, Panama 1, Panama.

 

2. Domain Names and Registrar

The domain names at issue (the Domain Names) are :

The Registrar is Network Solutions, Inc. of Herndon, Virginia, USA.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received Complainantís complaint on February 4, 2000 (by fax), on February 8, 2000 (by e-mail) and on February 11, 2000 (hard copy). On February 14, 2000, the Center received from Complainant an amendment to the complaint, according to which Complainant chose the Courts of Virginia (home of the Registrar) as having jurisdiction for the purpose of paragraph 3 (xiii) of the Rules for Uniform Domain Name Dispute Resolution Policy.

The Center verified that the complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) and the Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).

On February 7, 2000, the Center transmitted via e-mail to Network Solutions, Inc. a request for Registrar verification in connection with this case. Network Solutions confirmed with an e-mail of February 8, 2000 that it had received the complaint from Complainant, that Jacob Foundation was the registrant of the four Domain Names, and that such Domain Names were in "Active" status. The Registrar moreover informed the Center that the contact for both administrative and billing purposes was Michael Borkowetz.

The Center transmitted on February 14, 2000 a Notification of Complaint and Commencement of Administrative Proceeding to postmaster@efgprivatebank.com, postmaster@efg-private-bank.com, postmaster@efgprivate.com, postmaster@efgpb.com and mborkowetz@bluewin.ch. On the same day, the Center transmitted the mentioned notification by fax to Michael Borkowetz, Jacob Foundation (no. 0041 91 993-1049), and by air courrier to:

Jacob Foundation
Calle 53, Urbanizacion Obarrio
Torre Swiss Bank, Piso 16
Panama 1
PANAMA

The Center advised in the notification that the response was due by March 4, 2000.

On February 14, 2000, Respondent sent the following letter to Complainant:

"DOMAIN NAME REGISTRATIONS FOR efgprivatebank.com, efg-private-bank.com, efgprivate.com and efgpb.com

Dear Sirs,

We are writing to inform that we have already requested to our provider to annul the above mentioned domain names.

We know that the domain names arenít annul, so we complained to our provider and we pressed him for annul them. We kindly ask you not to worry.

[...]".

Complainant replied with a letter of February 23, 2000 that it took note that Respondent had requested the cancellation of the Domain Names, but that as long as the Domain Names remained registered, the complaint should be pursued. On the same day, Complainant forwarded by fax copies of Respondentís letter of February 14, 2000 and of its letter of February 23, 2000 to the Center.

On March 6, 2000, having received no response from Respondent, the Center issued to the postal, fax and e-mail addresses of Respondent and to the e-mail address of Complainant a Notification of Respondent Default.

The company Interservices Trust SA, apparently intervening on behalf of Respondent, addressed to the Center a fax dated March 7, 2000, received by the Center on March 8, 2000. In substance, this fax explained that Respondent had registered the Domain Names as a favor to Complainant, and that it had requested their cancellation as soon as Complainant had required it. Respondent claimed further that it could not be held responsible for the Registrarís delay in canceling the domain names. No documents were submitted as evidence.

On March 7, 2000, in view of Complainantís designation of a single panelist, the Center invited Ms. Anne-Virginie Gaide to serve as a panelist and transmitted to her the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.

Having received, on March 8, 2000, Ms. Anne-Virginie Gaideís Declaration of Impartiality and Independence and her Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Ms. Anne-Virginie Gaide was formally appointed as the Sole Panelist. The Projected Decision Date was March 22, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

 

4. Factual Background

Complainant has demonstrated that it is the owner of the trademarks "EFG" and "EFG Private Bank (and device)" in the following countries: European Union ("EFG" only), Finland, Guernsey, Hong Kong, Ireland and Norway.

Both trademarks are also registered in the United Kingdom, France and Germany. However, the submitted certificates of registration mention "Banque de Dťpôts SA" as the owner. Since Complainant does not allege to be the successor of Banque de Dťpôts SA, such trademarks will not be taken into consideration for the purpose of this Decision.

Complainant demonstrates that as of September 29, 1999, notices were posted at the addresses "www.efgprivatebank.com" and "www.efg-private-bank.com" indicating that these Domain Names were for sale.

By a letter of November 18, 1999, Complainant requested Respondent to cancel the four Domain Names. By a fax of November 24, 1999, Respondent replied that it had requested the Registrar to cancel those Domain Names. Respondent reiterated this assertion in its fax to Complainant of February 14, 2000.

It appears from Network Solutions' verification response that Respondent is the registrant of the four Domain Names.

As of the day of this Decision, the Domain Names do not resolve to a web site or other on-line presence, but are still registered in the name of Respondent.

 

5. Parties' contentions

A. Complainant

Complainant contends that the Domain Names are identical or confusingly similar to Complainant's registered trademarks, that Respondent has no rights or legitimate interests in respect of the Domain Names, and that such Domain Names were registered and used in bad faith.

Consequently, Complainant requires the transfer of the Domain Names to Complainant.

B. Respondent

Respondent does not allege to have rights or legitimate interests in the Domain Names. It results from its fax of November 24, 1999 and its letter of February 14, 2000 to Complainant, both submitted by Complainant, that Respondent only contends that it has requested the cancellation of the Domain Names.

 

6. Discussion and findings

a) Consideration of the fax of March 7, 2000

As a preliminary question, the Administrative Panel must decide whether to consider the fax of March 7, 2000 sent to the Center by Interservices Trust SA.

According to the Centerís notification of February 14, 2000, the deadline for Respondent to submit its response was March 4, 2000. Thus, provided that the fax at issue could be considered as a valid response from Respondent, such response would not meet the deadline of March 4, 2000. Paragraph 6 of the Centerís Notification of Complaint and Commencement of Administrative Proceeding states that the Administrative Panel shall not be required to consider a late response, but shall have the discretion to do so. The Administrative Panel notes here that March 4, 2000 was a Saturday, which is not a business day in many countries. The fax at issue was received by the Center on Wednesday (March 8), on the same day that the Administrative Panel was appointed and before the Panel began any substantive review of this matter. As far as the deadline to submit the response is concerned, the Administrative Panel would in fairness consider the fax of March 7, 2000.

However, there is another reason which prevents the Administrative Panel from considering the fax of March 7, 2000 as a valid response from Respondent. The fax is sent under the letterhead of Interservices Trust SA, and is signed by Mr. Massimo Bettosini. Although it appears from the content of the fax that Mr. Bettosini speaks on behalf of Respondent, there is no explanation as to the relationship between Respondent and Interservices Trust SA, and no allegation that this company or Mr. Bettosini himself acts as an authorised representative of Respondent. The names of Interservices Trust SA or of Mr. Bettosini do not appear in the verification response of February 8, 2000 communicated by the Registrar, which only mentions Mr. Michael Borkowetz. Moreover, Respondentís previous letters to Complainant were sent under the letterhead of Jacob Foundation, and make no mention of Interservices Trust SA or of Mr. Bettosini. In such circumstances, the Administrative Panel cannot consider the fax of March 7, 2000 as a submission made by Respondent or by an authorised representative of Respondent.

In view of the above, the Administrative Panel decides not to consider the fax of March 7, 2000, and shall issue its Decision based on the complaint, its attachments, Respondentís letter of February 14, 2000, Complainantís letter of February 23, 2000, the Policy, the Rules and the Supplemental Rules.

b) Merits of the Complaint

According to paragraph 4(a) of the Policy, the Complainant must assert and prove each of the following:

i) the domain name registered by the Respondent 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 domain name; and

iii) the domain name registered by the Respondent has been registered and is being used in bad faith.

i) Identity or confusing similarity

The Domain Names "efgprivatebank.com" and "efg-private-bank.com" consist in exactly the same verbal elements as Complainant's protected trademark "EFG Private Bank (and device)". Only the graphic elements of such trademark (triangular device and special font), which anyway cannot be reproduced in a domain name, were left out. The Administrative Panel is satisfied that the Domain Names "efgprivatebank.com" and "efg-private-bank.com" are identical to Complainant's trademark "EFG Private Bank (and device)".

The Domain Name "efgprivate.com" is also confusingly similar to the trademark "EFG Private Bank (and device)". This Domain Name contains two of the three verbal elements of the trademark ("EFG" and "Private"). The only difference consists in the absence of the word "Bank" in the Domain Name. This difference is not apt to influence the overall impression left by the Domain Name. Indeed, the term "bank" belongs to the public domain, and as such possesses no distinctiveness for banking services. Moreover, it is the last element of Complainant's trademark, and is as such the less conspicuous.

The Domain Name "efgpb.com" is confusingly similar to Complainant's trademark "EFG". The Domain Name contains the protected trademark in its entirety, with the adjunction of the letters "pb". Clearly, Complainant cannot monopolise all domain names including the letters "efg", no matter what other elements appear in the domain name. Complainant can only prevent the registration of such domain names when the additional elements are less distinctive than the letters "efg". The question here is therefore whether the letters "pb" are less distinctive than the letters "efg". Admittedly, all consumers might not guess that the letters "pb" stand for "private bank", and are thus an acronym for descriptive terms. However, consumers who use banking services and who know Complainantís trademarks "EFG" and "EFG Private Bank (and device )" are likely to recognize the trademark "EFG", and infer that "pb" is the abbreviation for "private bank". Moreover, notwithstanding its meaning, the block "pb" is shorter than the block "efg" and comes at the end of the Domain Name, and has as a consequence a lesser influence on the overall impression left by the domain name than "efg". In view of the foregoing, the Administrative Panel considers that the risk of confusion must be admitted.

ii) Rights or legitimate interests

Respondent has never alleged to have any rights or legitimate interests in the Domain Names. On the contrary, when requested by Complainant in November 1999 to cancel the four Domain Names, Respondent replied within a few days that it had instructed the Registrar to proceed with such cancellation, without giving any explanation as to why the domain names had been registered.

The Administrative Panel infer from these facts that Respondent has no legitimate rights or interests in the domain names at issue.

iii) Registration and use in bad faith

According to paragraph 4(b)(i) of the Policy, circumstances indicating that a Respondent registered a domain name primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant for valuable consideration shall be evidence of registration and use of a domain name in bad faith.

Complainant submitted with its complaint copies of notices which were posted at "www.efgprivatebank.com" and "www.efg-private-bank.com" as of September 29, 1999, consisting in the following text:

"DOMAIN FOR SALE
Questo dominio Ť in vendita
This domain is for sale
for any informations:

MBORKOWETZ@BLUEWIN.CH"

In the opinion of the Administrative Panel, such notices constitute satisfactory evidence that Respondent tried to sell the Domain Names "efgprivatebank.com" and "efg-private-bank.com" to Complainant or a competitor of Complainant, and that, in the absence of legitimate rights or interests in the Domain Names, Respondent had registered these Domain Names for this purpose.

Regarding the two other Domain Names at issue, "efgprivate.com" and "efgpb.com", the Administrative Panel shares Complainantís view that those Domain Names were registered in order to oblige Complainant to buy "efgprivatebank" and "efg-private-bank", by preventing it from registering alternative domain names. It is indeed clear that the four Domain Names are part of the same registration plan.

The Administrative Panel also considers as evidence of registration in bad faith the fact that Respondent never offered a plausible explanation for the registration of the four Domain Names. When requested to cancel them in November 1999, Respondent immediately replied that it had requested such cancellation. This suggests that Respondent itself did not believe that it had a valid argument to keep the Domain Names.

Finally, Complainant submits with its complaint the results of an on-line Compu-Mark Saegis search which, according to Complainant, demonstrates that as of September 29, 1999, Respondant was the registrant of 89 domain names, many of which correspond to names of banks. The Administrative Panel notes that the search criteria were defined as follows : "domain owner : jacob and foundation". This means that the search revealed all domain names registered by companies whose names contained the terms "jacob" and "foundation". Since other companies than Respondent might have names including such terms, the list supplied by Complainant is not a conclusive proof that all the domain names listed were registered by Respondent. For such a list to constitute satisfactory evidence, the full name and address of the registrants would need to appear. This being said, it is likely that at least some of the domain names listed were indeed registered by Respondent, as shown by the fact that the four Domain Names at issue appeared in the listing.

In view of the foregoing, the Administrative Panel will only give a limited weight to the Saegis listing submitted by Complainant. Thus, the listing does not constitute evidence that Respondent has engaged into a pattern of registering domain names corresponding to trade or service marks of third parties (in the sense of paragraph 4(b)(ii) of the Policy), but is only a circumstance corroborating the evidence of bad faith brought by the sales notices posted at "www.efgprivatebank.com" and "www.efg-private-bank.com" and by Respondentís lack of explanation as to the reason for the registrations.

Even though Respondent may have requested the cancellation of the Domain Names from Network Solutions, the relevant fact for the Administrative Panel is that the Domain Names are to this day still registered in the name of Respondent.

 

7. Decision

In light of the foregoing, the Administrative Panel decides that the Domain Names registered by Respondent are identical or confusingly similar to the trademarks of Complainant, that Respondent has no rights or legitimate interests in respect of the Domain Names, and that Respondentís Domain Names have been registered and are being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Administrative Panel requires that the registration of each of the four Domain Names at issue be transferred to Complainant. The Domain Names are :

efgprivatebank.com
efg-private-bank.com
efgprivate.com
efgpb.com

 


 

Anne-Virginie Gaide
Sole Panelist

Dated: March 22, 2000