WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

DG Bank AG v. Xuhui, Dai

Case No. D2000-0750

 

1. The Parties

The complainant in this administrative proceeding is DG Bank AG, Germany ("Complainant"), represented by Torsten Bettinger, Germany.

The respondent is Xuhui, Dai-Wn-Bgag, China ("Respondent").

 

2. The Domain Name and Registrar

This dispute concerns the domain name <dg-bank.com> ("Domain Name") registered with Network Solutions, Inc., Virginia, USA ("Network Solutions" or "Registrar").

 

3. Procedural History

A complaint ("Complaint") pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on July 7, 2000 by e-mail. A hardcopy was received by the WIPO Center on July 10, 2000. The Acknowledgement of Receipt of the Complaint was submitted on July 13, 2000.

On July 13, 2000 a Request for Registrar Verification was transmitted to the Registrar, Network Solutions, which confirmed on July 14, 2000 that it had received the Complaint, that the disputed Domain Name was registered with Network Solutions, and that the Respondent was the current registrant. In addition, the Registrar forwarded the WHOIS details, confirmed that its Service Agreement 4.0 was in effect, and stated that the Domain Name was on "active" status.

The assigned Case Administrator of the WIPO Center completed a Formal Requirements Compliance Checklist on July, 14, 2000. The Panel independently determines and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the applicable requirements.

No formal deficiencies having been recorded, a Notification of Complaint and Commencement of Administrative Proceeding was successfully transmitted to the Respondent and to its Technical Contact / Zone Contact on July 19, 2000 by e-mail. The submission of the Complaint, incl. enclosures, by fax and by courier service to Respondent failed. However, the delivery by courier service of the complete Complaint to the Technical Contact / Zone Contact was successful. In the Commencement Notification a deadline of August 7, 2000 was set, by which the Respondent could file a Response to the Complaint. Respondent did not file a Response neither by that date nor after the deadline.

On August 11, 2000 a Notification of Respondent Default was sent to Respondent by e-mail.

The Complainant had requested a single-member panel to be appointed. Since no divergent request was filed by Respondent, the WIPO Center invited Mr. Bernhard F. Meyer-Hauser to serve as panelist in Case No. D2000-0750 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

Having received Bernhard Meyer-Hauserís Statement of Acceptance and Request for Declaration of Impartiality and Independence on August 22, 2000, the WIPO Center transmitted on the same date to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The decision date was September 4, 2000. The Panel finds that the Administrative Panel has been properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.

 

4. Factual Background

The Complainant is a German banking corporation. The Complainant has registered the trademark and service mark "DG BANK" in international classes 14 (gold in form of ingots, non-monetary gold coins) and 36 (banking, financial and credit services) in the following countries:

Germany:

Trade- and Service mark "DG Bank"
Reg. No. 1016156
Class: 36
Registration date: March 27, 1981
Trade- and Service mark "DG BANK" (with design)
Reg. No. 1037917
Classes: 36 and 14
Registration date: September 6, 1982

United States of America:

Trade- and Service mark "DG BANK" (with design)
Reg. No. 1269148
Classes: 14 and 36
Registration date: March 6, 1984

International Registration:

Trade- and Service mark "DG Bank"
Reg. No. 467 085
Classes: 14 and 36
Registration date: December 7, 1981
Countries: Algeria, Austria, Egypt, Spain, France, Hungary, Italy, Morocco, Monaco, Romania, Saint-Marino, Czech Republic, former URSS and former Yugoslavia

 

5. Partiesí Contentions

A. Complainant

Pearl High-Tech Products International Trading Co, Ltd. ("Pearl") is a Chinese Company trading with high-tech products.

According to the Complaint, Complainant received an e-mail from Pearl on February 4, 1999 with the following message:

"Dear DG Bank, Guten Tag! We have reserved DG-BANK.COM for your company. How do you repay us for our kindness? BEST REGARDS, PEARL".

The sender-address of the e-mail was <gzbusins@public.guangzhou.gd.cn>. On the e-mail, Pearl indicated its phone and fax numbers as (86-20) 87509656 and (86-20) 85517705.

A verification of the Complainant as to the use of the Domain Name revealed that Pearl used the Domain Name "dg-bank.com" to redirect Internet users to its own website.

On March 1, 1999 Pearl sent another e-mail to the Complainant with the following wording:

"Dear DGBANK, Thank you for contacting Pearl High-Tech Products International Trading Co, Ltd. Worldwide Customer Services. How about take World Wide Web Site www.dg-bank.com to show your infinite power all around the world. Above all it is important to keep your competitors from using it, then turn your competitors into bugs and crush them. Think about it."

In addition to the above phone and fax numbers, the postal address of the Pearl Worldwide Customer Service indicated in the e-mail is "Rm. 402, No. 49, Liuyun St. 3, Tianhenan Rd. 1, Guangzhou, Guangdong, P.R. China".

In response to this e-mail, the Complainant informed Pearl by an e-mail answer of March 9, 1999 that it was the owner of a trademark and business name in the word "DG Bank" and that the registration of the Domain Name "dg-bank.com" by Pearl was an infringement of its rights. With the same e-mail, the Complainant requested Pearl to delete the Domain Name dg-bank.com and to cease using the Domain Name for the companyís website. The Complainantís e-mail received no response.

The actual registered holder of the Domain Name and, therefore, Respondent is Xuhui, Dai-Wn-Bgag. However, Respondentís address, phone and fax numbers as provided in the actual WHOIS Database is identical with all of the above contact data of Pearl.

Complainant contends that Pearl and Respondent have registered as a domain name a mark which is identical to the trade- and service mark registered and used by Complainant, that Respondent has no rights or legitimate interests with respect to the Domain Name at issue, and that Respondent has registered and is using the Domain Name in bad faith.

Complainant further contends that, under the factual circumstances, the bad faith usage of the domain name by Pearl is attributable to the Respondent and that such usage has to be treated as if Respondent itself had used the domain name for its website even if the Respondent and Pearl should not be identical legal personalities.

B. Respondent

Respondent has not reacted to the Complainant within the time period set by the WIPO Center and consequently, is in default. Under these circumstances, all allegations contained in the Complaint are deemed to be correct to the extent not contradicted by any evidence or documents on file.

 

6. Discussion and Findings

Complainantís allegations are factually referring to Pearl but are formally directed against Respondent. According to Complainant, Pearl transferred the Domain Name registration to Respondent in the course of the events. It is not set forth in the Complaint, whether Respondent was the original holder of the Domain Name registration or whether the Domain Name was actually transferred to it. However, it is evident, that Pearl and Respondent are not unrelated parties: Pearl and Respondent have the same postal address, the same telephone number, the same fax number and the same e-mail address. It is apparent, that Respondent is identical with or very closely affiliated to Pearl.

Especially the fact, that the e-mail address of Respondent and the e-mail address of Pearl through which the contact with Complainant was established are identical is conclusive evidence for the close connection or the common identity of Pearl and Respondent. An e-mail address in a company is normally allocated to one individual person or a closed group of persons only and is not shared by unrelated parties.

Therefore, the Panel considers it to be established that Respondent was directly involved in and responsible for the actions of Pearl in connection with the registration and use of the Domain Name. For the purpose of the following considerations regarding legitimate interest and bad faith in registering and using the Domain Name (paragraphs 4(a)(ii) and (iii) of the Policy) the Panel will make no distinction between the Respondent and Pearl. In other words, Respondent is considered as fully responsible for all actions of Pearl and vice versa with regard to the disputed Domain Name.

According to Network Solutionsí Verification Response of July 14, 2000, Network Solutionsí Service Agreement 4.0 is in effect with regard to the Domain Nameís registration. Complainant refers in annex B of the complaint to Network Solutionsí Service Agreement version 5.0. Nevertheless, Respondent is bound to the provisions of the Policy under both versions of the Service Agreement.

According to Paragraph 4(a) of the Policy, Complainant must prove the following:

(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

(ii) that Respondent has no legitimate interests in respect of the domain name; and,

(iii) that the domain name has been registered and used in bad faith.

Identical or Confusingly Similar Domain Name

The domain name at issue is <dg-bank.com>. The Panel finds that the relevant part of this domain name "dg-bank" is identical with the numerous trade- and service mark registrations of the word "DG BANK" held by Complainant.

Respondentís Rights or Legitimate Interests in the Domain Name

The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted to apply for or use any domain name incorporating those marks. Furthermore, the word "DG Bank" appears to be an invented word (derived from "Deutsche Genossenschaftsbank"), and as such is not a word a trader would legitimately choose unless seeking to create an impression of an association with the Complainant or intending to sell, rent or otherwise transfer the name to Complainant. Consequently, the Panel finds that Respondent had and has today not shown any right or legitimate interests in the Domain Name.

Domain Name Registered and Used in Bad Faith

According to paragraph 4(b)(i) of the Policy, the circumstances indicating that a domain name was registered or acquired primarily for the purpose of selling it to the owner of the involved trademarks or service marks shall be evidence of a bad-faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.

In view of the above circumstances, the above quoted e-mail of February 4, 1999 was an obvious offer to sell the Domain Name to Complainant. Even if the second e-mail from Respondent to Complainant of March 1, 1999 was less clear, Respondentís intention to sell the Domain Name was quite apparent.

The explicit wording of the e-mail is a strong indication that Pearls registered the Domain Name ("we have reserved DG-BANK.COM for you") for the purpose of selling it to Complainant ("how do you repay us for our kindness?"). Thus, the elements required under paragraph 4(a)(iii), i.e. bad faith in registering and using the Domain Name, are established.

Even though Respondent did not mention a sales price in its e-mails, it seems apparent - based on the situation, Respondentís wording of the above mentioned e-mail and the status of the parties - that Pearl expected to obtain a sales price higher than its own out-of-pocket expenses directly related to the Domain Name.

In addition - according to Complainantís uncontested allegations - Respondent used the Domain Name to redirect internet users to its own web site. By doing so, Respondent created a likelihood of confusion with Complainantís trade- and service marks as to the source, sponsorship, affiliation or endorsement of the web site or location, or of a product or service on its web site or location.

In the light of the above, the Panel finds that bad-faith within the meaning of paragraph 4(a)(iii) of the Policy by Respondent is also established.

 

7. Decision

For these reasons, the Panel decides that the Domain Name registered by Respondent is identical or confusingly similar to the mark in which the Complainant has rights, that Respondent has no right or legitimate interests in respect of the Domain Name, and that the Domain Name was registered and used in bad faith by Respondent. Accordingly, the Panel orders that the registration of the domain name <dg-bank.com> be transferred to the Complainant.

 


 

Bernhard F. Meyer-Hauser
Presiding Panelist

Dated: September 4, 2000