WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Norisbank Aktiengesellschaft v. MSN

Case No. D2000-1307

 

1. The Parties

The Complainant is Norisbank Aktiengesellschaft, Rathenauplatz 12Ė18, 90489 Nürnberg, Germany.

The Complainant is represented by: Graefe & Partner, Attorneys-at-Law, Lucile-Grahn-Str. 38, 81675 München, Germany.

The Respondent is MSN, P.O. Box 1900, Charlottetown, PE C1A 7N5, Canada.

The Respondentís Administrative Contact is: Mullen, Daniel (DAMU100), P.O. Box 1900, Charlottetown, PE C1A 7N5, Canada.

The Respondentís Technical Contact is: Mullen, Daniel (DAMU111), Letzter Heller 10, Landkirchen, auf Fehmarn, 23769, Germany.

The Respondentís Billing Contact is: Mullen, Daniel (DAMU112), Letzter Heller 10, Landkirchen, auf Fehmarn, 23769 Germany.

The complainant has provided the following address for Daniel Mullen which it found through a private investigator: Weidestrasse 137a, 22083 Hamburg.

The Respondent has neither designated counsel nor filed a response.

 

2. The Domain Name and Registrar

The Domain Name at issue is "norisbank.com". It is registered with Registrars.com, 475 Sansome Street #570, San Francisco, CA, USA.

 

3. Procedural History

A hard copy of the Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on October 3, 2000. An email version followed on October 4, 2000. The Center acknowledged receipt of the Complaint on October 4, 2000.

On October 11, 2000 Registrars.com acknowledged receipt of a notification from the Center that a Complaint had been submitted concerning the domain name "norisbank.com". Registrars.com confirmed that the Registrant of the domain name is: MSN, P.O. Box 1900, Charlottetown, PE C1A 7N5, Canada; that the Administrative Contact for the domain name is: Mullen, Daniel (DAMU100), P.O. Box 1900, Charlottetown, PE C1A 7N5. Canada, that the Technical Contact for the domain name is: Mullen, Daniel (DAMU111), Letzter Heller 10, Landkirchen, auf Fehmarn, 23769 Germany; and that the billing contact is: Mullen, Daniel (DAMU112), Letzter Heller 10, Landkirchen, auf Fehmarn, 23769 Germany, Registrars.com further confirmed that the domain name in question was registered on February 5, 2000, and that the domain name was currently under "register-lock" pending the administrative proceeding.

On October 19, 2000 the Center determined that the Complaint satisfied the Formal Requirements of the Policy, Rules and Supplemental Rules; that payment of the required sum had been made by the Complainant; and that an administrative proceeding had been commenced against the Respondent. The formal date of the commencement of the administrative proceedings was fixed as October 23, 2000. The Respondent was notified by the Center of the proceedings on that date. A deadline of November 11, 2000 was fixed for its Response.

The Respondent failed to file a timely Response. The Center issued a Notification of Respondent Default on November 14, 2000.

On November 23, 2000 the Center notified the Parties that an Administrative Panel composed of a single member, Dr. Kamen Troller, had been appointed. The Center further notified the Parties that the Panellist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. Absent exceptional circumstances, the Panellist was required to forward its decision to the Center in accordance with Paragraph 15 of the Rules by December 6, 2000.

The Panellist examined all notifications of the Center and the Complaint, and finds that they comply with the formal requirements of the Rules and Supplemental Rules. It further finds that the Center has adhered to the Policy, Rules and Supplemental Rules throughout this proceeding, and that the Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant, Norisbank Aktiengesellschaft, is a corporation incorporated in Nürnberg, Germany with its principal place of business in Nürnberg, Germany.

The Complainant is the owner of the trademark "norisbank", registered in Germany at the German Patent and Trademark office (DDMA) on 20.11.1997 with priority from 28.08.1997. The registration number is 397 40 983; it is registered in classes 16 (goods) and 36 (services). The mark is used for printing industry products, and for monetary and financial transactions. There is also an IR Registration (No. 686 272) dated 19.02.98.

The Respondent is MSN, an entity about which nothing is known. A registered letter sent by the Complainant to the Registrant and to the Registrantís Administrative Contact was returned. A registered letter sent by the Complainant to the German address provided by the Registrant for the Technical and Billing contact was also returned. The Complainantís email attempts to reach the contacts specified by the Registrant were also unsuccessful.

The Complainant retained the services of a private investigator who found an address in Germany of an individual bearing the same name as the Respondentís Technical and Billing Contact: Daniel Mullen, Weidestrasse 137a, 22083 Hamburg. The Complainant subsequently sent a letter to that address, asking Mr. Mullen to bring forward any argument in favour of his registration. Daniel Mullen acknowledged receipt of the letter, but did not respond to it; neither did he react in any way whatsoever to the present procedure.

The Respondent has not provided proof of a trademark registration for "norisbank" in any jurisdiction.

 

5. Parties Contentions

The Complainant asserts that: (1) The domain name "norisbank.com" is identical or confusingly similar to the trademark "norisbank" in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and that (3) the domain name was registered and is being used in bad faith. The Complainant also disputes the registration information provided by the Respondent.

In accordance with paragraph 4(i) of the Policy, the Complainant requests the Administrative Panel to issue a decision that the domain name "norisbank.com" be transferred to the Complainant.

The Respondent is in default and has thus not denied any of the allegations made by the Complainant.

 

6. Discussion And Findings

Pursuant to paragraph 4(a), Norisbank Aktiengesellschaft as Complainant must prove that each of the following three elements are present if it is to prevail:

(i) the Respondentís "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;"

(ii) the Respondent has "no rights or legitimate interests in respect of the domain name;" and

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

Identical or confusingly similar

The Complainant asserts that the domain name "norisbank.com" is identical or confusingly similar to the trademark "norisbank". The Respondent has not denied this allegation.

The relevant part of the domain name is "norisbank". The Panel finds that but for the ".com" designation, which has no distinguishing capacity, the terms "norisbank" and "norisbank.com" are identical. The Panel therefore concludes that the domain name is identical to a trademark in which the Complainant has rights. A similar result was reached in Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, Case No. WIPO D2000-0190.

Rights or legitimate interests

Paragraph 4(c) of the Policy defines the circumstances required for the Respondent to demonstrate "rights to and a legitimate interest in the domain name". The Respondent is only required to demonstrate any one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant argues that the respondent has no legitimate interest in the domain name "norisbank.com" because: (1) the domain name is not being used for business or private matters; (2) the Respondent is not related to the Complainant and is not licensed by the Complainant to use the "norisbank" mark; and (3) the Respondent has failed to declare what rights he may have in the name.

The Respondent has not provided any evidence of legitimate use of the nature specified in paragraph 4(c).

Paragraph 4(c)(i) of the Policy requires the Complainant to demonstrate that the domain name in question is not being used in connection "with a bona fide offering of goods or services". By alleging that the domain name is still not being used for any business or private matters, the Complainant has made a prima facie case that the domain name in question is not being used in connection with the bona fide offering of goods and services. The Complainantís position was confirmed by the Panelís independent attempt to visit the website on several occasions. The Panel found that the website is not being used, and has concluded that the domain name is not being used by the Respondent in connection with a bona fide offering of goods or services.

Paragraph 4(c)(ii) requires the Complainant to demonstrate that the Respondent is not commonly known by the name at issue. The Complainant states that the Respondent has no relationship with the Complainant and that the Respondent is not a licensee of the Complainant. Again, the Panel finds that the Complainant has made a prima facie case that these circumstances have not been met. The Panel further observes that the Respondentís name, MSN, is not at all similar to the domain name in question, and that when given an opportunity to state what rights the Respondent may have in the domain name, the Respondent chose not to do so. The Panel concludes that the Respondent has not been commonly known by the domain name in question and that the Respondent has failed to satisfy the requirements of 4(c)(ii).

Paragraph 4(c)(iii) of the Policy places the burden on the Complainant to demonstrate that the Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panelís conclusion is similar to that of 4(c)(i) above. The Complainant has alleged, and the Respondent has not denied, that the domain name is not being used for a legitimate non-commercial use (what the Complainant terms a "private" use). The Complainant has made a prima facie case of non-use which the Respondent has not rebutted. The Complainantís position is further confirmed by the panelís unsuccessful attempts to visit the website. The Panel concludes that the website is not being used for a legitimate non-commercial or fair use.

The Panel concludes that in each instance the Complainant has made a prima facie case of no legitimate use of the domain name by the Respondent and that the Respondent has not rebutted this case. The Panelís finding of no legitimate use are supported by some of the same elements that are present in its analysis of bad faith. First, the Respondent registered the domain name "norisbank.com" after the Complainant registered the trademark and had begun to publicise it. Second, the Respondent either provided false registration information to the Registrar, or failed to update the Registrar with new contact information. Third, the address given for the Respondentís Technical and Billing Contacts is in Germany, leading the Panel to conclude that the Respondent had knowledge of the Complainantís mark. These factors have influenced the Panelís conclusion that the Respondent has not made legitimate use of the domain name.

Bad faith

Paragraph 4(b) of the Policy sets forth a list of circumstances which shall be evidence that the registration and use of a domain name is in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name 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 service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

This list of circumstances is not exclusive and is not directly relied upon by the Complainant. The Complainant states that the domain name should be considered as having been registered and used in bad faith because: (1) the domain name is still not in use for any business or private matters, there is no online presence and no website; (2) the domain name indicates no reference to the Respondent; (3) the contact addresses provided by the Respondent were not accurate; (4) a private investigator hired to find the Administrative Contact determined that he lives in Germany (where the trademark "norisbank" is promoted and therefore well-known to the German public); and (5) the domain name has only been registered for six months.

The Panellist in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, found that in certain circumstances the passive holding of a domain name could constitute bad faith. The special circumstances in Telstra strongly resemble the circumstances in this case. As in the present case, Telstra involved a defaulting Respondent, the trademark was widely known, the Respondent had taken deliberate steps to conceal its identity by providing false contact information which it failed to correct, communications between the Complainant and the Respondent were rendered impossible, the domain name did not resolve to a website, and there was no evidence that the domain name was being advertised or promoted.

On the above grounds alone, the Panel believes that there is sufficient evidence to sustain a finding of bad faith registration and use. The Panel, however, finds additional support for this conclusion from the fact that the Respondentís Technical and Billing Contacts both have German addresses, suggesting a strong likelihood that the Respondent had knowledge of the value of the domain name "norisbank.com", and from the fact that the trademark "norisbank" is relatively new, and has been highly promoted, making it likely that a cybersquatter would become interested in registering this name.

The Panel concludes that the domain name "norisbank.com" was registered and used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

 

7. Decision

The Panel decides that 1) the domain name "norisbank.com" is identical to the trademark "norisbank", 2) that the Respondent has no rights or legitimate interest in respect of the domain name, and 3) that the domain name has been registered and is being used in bad faith by the Respondent.

Pursuant to paragraph 4(i) of the Policy and pursuant to paragraph 15 of the Rules, the Panel requires that the Registrar, Registrars.com, transfer the domain name "norisbank.com" to the Complainant.

 


 

Dr. Kamen Troller
Sole Panellist

December 6, 2000