WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lukas Bank S.A. v. Express Ventures Ltd.
Case No. D2000-0328
1. The Parties
The Complainant is Lukas Bank S.A. (Lukas Bank Swietokrzyski Spůlka Akcyjna) a joint stock company listed in the commercial register conducted by Wroclaw Fabryczny District Court, Economic Registration Department, entry Ė RHB 1390: principal place of business Ė Kielce, ul.Sienkiewicza 76.
The Respondent in this administrative proceeding was szelf.com LLC, ul. Brzozowa 1, 05-806 Komorůw Mazowiecki, in the meantime a change occurred in the entity of the Respondent, and a response was given by Express Ventures Ltd., 1F, No.6. Alley 27, Lane 372, Sec. 5, Chung Hsiao East Rd. Taipei, Taiwan.
2. The Domain Name and Registrar
The domain name that is the subject of this Complaint is LUKASBANK.com. The Registrar of this domain name is Internet Domain Registrar.
3. Procedural History
The Complaint was received in hardcopy from Lukas Bank S.A. by WIPO Arbitration and Mediation Center (the "Center") on April 25, 2000. On April 27, and May 5, 2000, the Center requested the Internet Domain Registrar to verify their relationship to the case. The Registrar confirmed and submitted by e-mail their response to the Center on May 12, 2000. The Registrar confirmed that the domain name LUKASBANK.com, was registered with the holder LukasBank.com LLC 1F, No.6, Alley 27, Lane 372, Sec. 5, Chung Shiao East Rd. Taipei, Taiwan. On May 15, 2000, the Complainant received the list of administrative deficiencies, to which the Complainant responded on May 19, 2000. The Center received the hardcopy of the responses of the Complainant to the Complaint Deficiency Notification on May 24, 2000. On May 27, 2000, the Registrar repeatedly verified that the domain LUKASBANK.com was registered and was on hold in the Shared Registry Server.
On June 9, 2000, the Notification of Complaint and Commencement of Administrative Proceedings was sent to the Respondent, specifying June 28, 2000, as the deadline to submit a Response by the Respondent. The Response was received by the Center on June 30, 2000. Considering that the term set for the submission of the Response had expired, the Administrative Panel has a right to decide whether or not to consider a response submitted with a delay. On June 30, 2000, the Center reconfirmed receipt of the response.
On July 20, 2000, the Center issued to both Parties the Notification of Appointment of Administrative Panel. This Notification informed the Parties that in this case the Administrative Panel would be constituted of a sole Panelist, Dr. Katalin Szamosi.
4. Factual Background and Partiesí Contentions
4.1 Complainant attached its commercial registration verifying its name, according to which they changed the earlier trade name of the bank from Bank Swietokrzyski S.A. into Lukas Bank Swietokrzyski S.A.
Complainant did not verify that it possesses valid trademark protection, nor a date or case number. The Complainant could not verify that they had requested the registration of a trademark at the Polish Patent Office.
4.2 The Complainant
Complainant declared that the current domain dispute, which concerns the domain name LUKASBANK.com, is based on the legal fact that the domain name is identical to its trade name and confusingly similar with the trade name of Lukas S.A. Partnership. The latter company requested the Polish Patent Office for the registration of the name LUKAS as a trademark.
Complainant declared that the main element of LUKASBANK.com is the word LUKAS, which serves the function of identification, whereas the term "BANK" specifies activity. According to the Complainant the word BANK in the requested domain name is misleading. In the Complainantís opinion the term BANK refers to banking services offered, and the Respondent does not conduct any such activities.
The Complainant declared that by transferring the domain name from Network Solutions to Internet Domain Registrars the Respondent acted in bad faith. Furthermore, Respondent frequently changed registering and contact persons, although its address was 1F, No. 6. Alley 27, Lane 372, Sec. 5. Chung Hsiao East Rd. Taipei, Taiwan.
Complainant furthermore declared that he managed to contact the Respondent through Mr. Robert Tofil, who was named as mediator in the legal dispute. Respondent asked for the amount of USD 25.000 for the transfer of the domain. However, negotiations were interrupted.
Complainant, according to its own presentation, finds all three requirements supporting the Respondentís domain name registration in bad faith as proven.
4.3 The Response
The response to the Notification of Complaint was given by Express Ventures Ltd. Respondent declared having rightfully registered the name LUKASBANK.com, and that the Complainant had no trademark or service mark for LUKASBANK.
Respondent furthermore stated that there is no such legal stipulation according to which a company may not choose to use the term BANK in its name. Respondent declared that it carries out activities in the field of banking services by offering international credit card validation services, and is in commercial co-operation with the company FirstEcom.com of Hong Kong.
Furthermore Respondent declared that the word BANK is not necessarily associated with banking activities, as evidenced by the well-known "DomainBank.com" which does not conduct banking activities in the traditional sense.
Respondent furthermore declared that it did not have the domain name registered with the intent of subsequently selling it to the Complainant. Respondent stated that the Complainant could not prove that the selling of the domain name was initiated by the Respondent, but to the contrary Mr. Robert Tofil offered USD 5.000 for the transfer of the domain name.
Respondent declared it was not a competitor of the Complainant, it wishes to carry out its activities in the Far East in the special field of credit card validation services, whereas the Complainant is a Polish bank, offering financial services in the territory of Poland. According to the statement of the Respondent, Internet users do not assume any relationship and do not confuse the Complainant with the Respondent. In the Respondentís opinion the Complainant did not confirm the fact of use in bad faith either.
5. Discussion and Findings
5.1. As the Response to the Center arrived by e-mail on June 30, that is, two days after the term set by the Center for the receipt of the Response, it had first of all to be determined whether the Response could be taken into consideration in the decision.
Respondent in its declaration supplied sufficient reason for giving its Response after the expiry date, and as the delay had no damaging effect on Complainant, the Response is accepted in the interest of the decision. Therefore the Panel considered in its decision the declarations of both the Complainant and the Respondent.
5.2 The Response of the Respondent was given by Express Ventures Ltd. the present domain name owner of LUKASBANK.com. The Panel had to determine whether the Response was given by the legally authorized person. The Web Address Search Results attached to the Complaint provided the following data. The registrant of LUKASBANK.com was Twoja Domane.com 1F, No.6. Alley 27, Lane 372, Sec. 5. Chung Hsiao East Rd. Taipei. Administrative contact is Express Ventures com. Similarly, the technical contact and the billing contact is Express Ventures.com.
The domain was subsequently transferred to szelf.com LLC, where the administrative and billing contact was already the Bank Domen.
According to Registrarís data the domain name holder is the LukasBank.com LLC (administrative, technical, billing contact LukasBank.com). The Response by Express Ventures.com was given on behalf of LukasBank.com. LLC. According to the Panelís evaluation the change which occurred in the entity of Respondent indicated by the Complainant in the Complaint does not influence the facts, as the validity of the decision is extended onto the new entitled as well. The relationship between the new domain name owner and the legal entity giving the Response on its behalf is verifiable with regard to the domain name.
5.3 According to Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "policy") Lukas Bank S.A. has to prove the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; (ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and (iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondentís rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of the registration and use of the domain name in bad faith.
A) Identity or confusing similarity to the trademark or service mark in which the Complainant has rights
Complainant does not possess its own trademark or service mark. According to presentation of the Complainant there is a filing request for registration with the Polish Patent Office for the trade name LUKAS, but neither its priority date, nor the person of the filling has been verified.
Consequently the Panel does not find such a trademark, or service mark on the basis of which the requirement prescribed in paragraph 4(a)(i) of the Policy would have been met.
B) Rights or legitimate interests in respect of the domain name
When registering the domain name, according to statement of Respondent, its intention was to have a domain name, which is easy to pronounce and to recognize. Complainant is not such a well-known company that its trade name should be taken into consideration in the name selection of a company operating on another continent. At the time of registration of the domain name, the registrant was the Twoja Domane.com company in Taipei, which, according to its allegation, wished to offer credit card validation services under the domain name LUKASBANK.com. Prior to the commencement of the legal dispute Respondent did not have to be aware of the use of the trade name Lukas bank S.A. therefore it requested domain name registration under the name LUKASBANK.com in good faith. The Panel finds that based on the requirement contained in paragraph 4(a)(ii) of the Policy, the Complainant has no right and legitimate interest for the use of the domain, therefore the requirements contained in paragraph 4(a)(ii) of the Policy have not been met.
C) Bad faith
As a consequence of the decision brought by the Panel and written in the preceding points A) and B), it would not be necessary to elaborate the standpoint in connection with bad faith, as the Complaint can only be considered in case points 4(a)(i), 4(a)(ii), and 4(a)(iii) of the Policy are jointly valid. However, the Panel found that even the requirements of use in bad faith have not been proven. Complainant could not enclose any such correspondence or confirmation which proved that the Respondent had the domain name registered explicitly with the intent of selling it. The fact in itself that the Complainant and the Respondent carried out negotiations with the involvement of a mediator does not serve as a basis for the criteria of bad faith as stipulated by the Policy. In order to verify bad faith the following has to be confirmed in the proceedings:
Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or the service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain name; or
The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or
The domain name was registered primarily for the purpose of disrupting the business of a competitor; or
By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrantís web site or other
on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of the registrantís web site or location or of a product or service on the registrantís web site or location.
Considering therefore that Complainant does not own a trademark or service mark at all, therefore there is no trademark which is identical or confusingly similar with the domain name, respectively the Complainant could not prove that the Respondent had no rights or legitimate interests in respect of the registration of the domain name and that the domain name was registered and is being used in bad faith, the requirements stipulated in point 4(a) of the Policy have not been met.
5.4. The Panel establishes that the reference by the Complainant to the case Panavision International v. Toeppen (9755467) is incorrect.
The reason is that Panavision is a registered trademark, furthermore a trademark and trade name well known and having a good reputation worldwide since a long time. Therefore contrary to the domain name dispute initiated by Complainant, in the legal case referred to the well-known trademarks and the good reputation of the company differs from the facts proven by Complainant.
The Administrative Panel finds no evidence in support of the three essential elements which would require Respondent to submit to a mandatory administrative proceeding. The evidence does not establish that the Complainant is the owner of such a trademark with which the domain name is identical or confusingly similar, nor was it supported that the Respondent had no rights or legitimate interests in the domain name and does not establish that the Respondent registered the domain name in bad faith. Accordingly, the remedy requested by Complainant pursuant to paragraph 4(i) of the Policy is denied.
Dr. Katalin Szamosi
Dated: August 3, 2000