WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net

Case No. D.2000-1400

 

1. The parties

Complainant is Arab Bank for Investment And Foreign Trade (ARBIFT) P.O Box 46733 Abu Dhabi, United Arab Emirates.

Respondent is Mr. Kenn Wagenheim / 07@usa.net, 528 North New Street Bethlehem, PA 18018, USA.

 

2. Domain Name and Registrar

The domain name at issue is <arbift.com>.

This domain name is registered with Network Solutions, Inc. 505 Huntmar Park Drive, Herndon VA 20170, USA.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received by e-mail and by courier the Complaint of the Arab Bank For Investment And Foreign Trade (ARBIFT) on October 17, 2000 and October 18, 2000 respectively. An Acknowledgement of Receipt of Complaint was sent by the Center to the Complainant on October 19, 2000.

On October 20, 2000 a request for Registrar Verification was transmitted to the Registrar, Network Solutions, requesting inter alia to confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name at issue.

On October 26, 2000 the Registrar transmitted via e-mail to the Center, the Registrarís Verification Response, confirming that the Policy is applicalbe to the disputed domain name, that the domain name is in active status and that:

Network Solutions is the Registrar of the domain name registration(s) and

confirms that the current registrant (s) of the domain name registration(s)

is/are:

Registrant:

07@usa.net
528 North New Street
Bethlehem, PA 18018
USA

Administrative Contact, Billing Contact:

Wagenheim, Kenn
07@USA.NET
07@usa.net
528 North New Street
Bethlehem, PA 18018
610-317-9370

Technical Contact, Zone Contact:

Clature, Nomen
domreg@HOSTME.COM
Internet Unlimited, Inc.
3894 Courtney Street, Suite 150
Bethlehem, PA 18017
USA
610-317-9370
Fax- 610-997-5752
Fax- - 610-997-5752

A Formal Requirements Compliance Checklist was completed by the Center on October 31, 2000. The Center verified that the Complaint meets the formal requirements of ICANNís Uniform Domain Name Dispute Resolution Policy (the Policy) and the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules).

On October 31, 2000 a Notification of Complainant and Commencement of Administrative Proceeding was transmitted to the Respondent. In this notification the Center advised that the Response was due by November 20, 2000.

On November 16, 2000 by e-mail and on November 21,2000 in hardcopy the Center received a Response by the Internet Service Provider housing the domain name at issue i.e. FASTNET.

On November 29, 2000 in view of the Complainantís designation of a single member Panel, the Center invited Dr. Mohamed-Hossam Loutfi to serve as a panelist and transmitted to him the Statement of Acceptance and Declaration of Impartiality and Independence.

Having received Dr. Loutfiís Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel in which Dr. Loutfi was formally appointed as the sole panelist.

The Administrative Panel has ascertained that this dispute is to be decided under the Internet Corporation For Assigned Names and Numbers Uniform Domain Name Dispute Resolution Policy and Rules as approved on October 24, 1999 (hereinafter, ICANN, the Policy and the Rules) and the Supplemental Rules adopted by the World Intellectual Property Organization Arbitration and Mediation Center (hereinafter, the Supplemental Rules and Center).

The sole panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, the Rules and the Supplemental Rules.

Having received the communication records in the case file, the Administration Panel finds that the Center has discharged its responsibility under paragraph 2 (a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".

The fixed date for the decision in accordance with paragraph 15 of the Rules for Uniform Domain Dispute Resolution Policy was December 12, 2000. The decision date was later re-set to December 19, 2000.

 

4. Factual Background

(a) The Trademark:

The Complainantís trademark ARBIFT was registered on June 24, 2000 with the Commercial Registration Department of the Ministry of Economy and Commerce of the United Arab Emirates, copy of which appears in Annex 3.1 of the Complaint.

The trademark registration relates to Class No.36 and has been used by the Complainant since its establishment as a bank by Union Decree No. 5/76 dated July 7, 1976 in all of its documents, bankís stationaries and has been used both internally in the United Arab Emirates and abroad, aswell as trade directories and advertisements published in international trade directories, magazines, periodicals, and newspapers.

(b) The Respondent registered the domain name more than three years ago and has not used the domain name for any purpose. By registering the domain name <arbift.com> the Respondent is preventing the Complainant from reflecting the mark in a corresponding domain name.

(c) FASTNET corporation (FASTNET), the Internet Service Provider housing the domain name at issue underlined in its Response that neither Kenn Wagenheim nor FASTNET is the owner of the disputed domain name.

FASTNET indicated that the Complaint was sent to the address listed as the Administrative Contactís address, 528 North New Street, Bethlehem, Pennsylvania, PA 18018, USA. This address is the former location of the Internet unlimited, Inc. a company that FASTNET acquired on July 30, 1999. And a former employee of FASTNET i.e. Mr. Wagenheim registered the domain name at issue. The latter registered this domain name at the direction of a FASTNET customer, who provided Mr. Wagenheim with a contact e-mail address i.e. 07@usa.net. The customer provided no other contact or identifying information to Mr. Wagenheim, Internet unlimited or FASTNET.

In light of the above facts, the Panelist is satisfied that this case addresses the registrant of the disputed domain name in accordance with the information that was provided by the Registrar itself.

 

5. The Parties Contentions

5.1 The Complainantís Contentions

A. The Complainant accuses the Respondent of being aware and conscious of the domain name at issue. By applying to register <arbift.com>, he was infringing upon the rights of the Complainant.

B. Additionally, by registering the above mentioned domain name <arbift.com>, the Respondent is preventing the Complainant from reflecting the mark in a corresponding domain name.

C. The Complaint requests the Administrative Panel appointed in this Administration Proceeding issue a decision in accordance with paragraph 4(b) (i) of the Policy and that the domain name at issue be transferred to it.

Based on that, the Complaiant`s belief and conviction is that the Respondent is cybersquatting and that he had registered at an opportune moment.

5.2 The Respondentís Domain Name Contentions

A. The Respondent did not submit Response. However the Internet Service Provider housing the domain name at issue responded to the statements and allegations of the Complainant by underlining that neither Kenn Wagenheim nor FASTNET is the owner of the disputed domain name. The Response was submitted by FASTNET as being the recipient of the instant Complaint at the contact details provided by the Registrar.

B. Exhibit A of the Response contains a message sent "to whom it may concern" by the authorized representative from FASTNET in this administration proceeding, WOODCOOK, WASHBURN KURTZ MACKLEWICZ & NORRIS LLP, which we reproduce it hereunder as follows:

"It is my understanding that you registered <arbift.com> via Internet Unlimited in March of 1997, using KENN WAGENHEIM as the contact for biling and technical. FASTNET Corporation has since acquired Internet Unlimited. We have been notified that a Complainant has been filed against the owner of <arbift.com> with the WIPO Arbitration and Mediation Center in Switzerland.

Should you wish to defend your ownership /intended use of this domain, you have until November 20, 2000 to respond to this domain name Dispute. Should you have further questions, please contact our attorney, Camille Miller et emiller at e-mail@woodcock.com".

This message got no reply.

 

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registrations.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

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

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

Each of the aforesaid three elements must be proved by Complainant to warrant relief.

The fact that the owner of the domain name < arbift.com > has chosen although being informed by the Internet Service Provider hosting the domain name at issue (Exhibit A attached to the Response made by FASTNET) not to submit a Response is particularly relevant to the issue of whether the Respondent has registered and is using the domain names in bad faith. Rule 14(b) of the Uniform Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences, or as it considers appropriate from the failure of a party to comply with a provision or requirements of the Rules. This Administrative Panel finds there are no exceptional circumstances for the failure of the Respondent to submit a Response. In any event, even in the absence of a Response, the Panel is charged with rendering its decision "on the basis of the statements and documents submitted", Rules paragraph 15(a). This Administrative Panel draws from this failure the inference that the Respondent does not deny the facts, which the Complainant asserts nor its conclusion.

Hence, the Panel accepts as true all of the allegations of the Complaint (See WIPO case No. D2000-0009).

However, before studying each of the aforementioned elements, we first address the question of jurisdiction.

A Jurisdiction

The Administrative Panel is satisfied that all fundamental due process requirements are met. Such requirements include inter alia that both parties have notice of proceeding. No objection has been made that the necessary parties are not properly before this Panel nor that this Panel lacks any authority to rule upon the requested relief. (See WIPO case No. D2000-0431).

Hence, the Panel has undoubtedly jurisdiction to decide this dispute as submitted.

B (1) The identity or confusing similarity of the domain name with the trade-mark

(a) It is generally understood that an exclusive right in a trademark can be acquired with, or without, registration. This is the case when the mark has been established on the market.

(See WIPO cases Nos. D2000-0003 and D2000- 0442).

Since the Complainant has been established as a bank by a Union Decree No.5/76 dated July 7, 1976 by the state of United Arab Emirates, Libya, Arab Foreign Bank and Banque Exterieure DíAlgerie, a right to the trademark ARBIFT was acquired prior to the Respondentís domain name registration.

(b) Moreover it is already well established that the specific top level of the domain name such as "org", "net", "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. (See for examples WIPO cases Nos. D2000-0135 and D2000-0429).

Based on the above the Administrative Panel is of the opinion that the Respondentís domain name i.e. ARBIFT.com is identical or confusingly similar to the Complaintís trademark "ARBIFT". Therefore, the requirements of paragraph 4(a)(i) are met and satisfied.

(2) Rights or legitimate interests in respect of the domain name

In the absence of a Response and in the context of this case, there is no evidence that the Respondent is able to demonstrate rights to and a legitimate interest in the domain name at issue. Further, the Complainant has not licensed or otherwise permitted the Respondent any use of Complainantís trademark (See WIPO case No. D2000-0206).

Therefore, the Administrative Panel, as permitted by paragraph 14(b) of the Rules, drawn the inference from the Respondentís failure to respond to this administrative proceeding, that the Complainant is correct in its assertion that the Respondent has no rights or legitimate interests in the domain name (See WIPO case No. D2000-0205).

The above mentioned facts undoubtedly indicate that the Respondent has no rights or legitimate interests in respect to the domain name at issue. Therefore, the requirements of paragraph 4(a)(iii) of the Policy have been properly proved by the Complainant.

(3) Bad faith

There are sufficient grounds to persuade this Administrative Panel to conclude that the domain name "arbift.com" was registered and is being used by the Respondent in bad faith, these grounds are as follows:

(a) Respondent gave no updated information as to where he may be reached.

(b) Respondent failed to respond to the Internet service provider housing the domain name at issue.

(c) Respondent failed to respond to the Complaint at issue or to deny any of its allegations.

(d) There is no evidence that the Respondent has associated the domain name with any website or online presence (See WIPO cases Nos. 2000-0022 and 2000-0023).

Hence, the Respondentís inactivity constitutes bad faith registration and use of the domain name at issue (See WIPO case No. D2000-0425).

The only plausible conclusion to draw from these facts is that the Respondent intended to warehouse for his own use the domain name at issue. The effect of this warehousing is to prevent the Complaint from reflecting this trademark in a corresponding domain name (See WIPO case No. 2000-0034). All circumstances lead this Administration Panel to conclude that all the prerequisites for the transfer of the domain name according to the Policy and the Rules are fulfilled.

 

7. Decision

With respect to the request for transfer of the domain name at issue, the Panel decides that ARBIFT has met its burden of proving (a) that the domain name at issue is identical or confusingly similar to the ARBIFT trademark (b) that the Respondent has no rights or legitimate interests in respect of the domain name and (c) that the domain name has been registered and used in bad faith by the Respondent.

Pursuant to paragraph 4(i) of the Rules, this Administrative Panel orders the transfer of the disputed domain name <arbift.com> to the Complainant.

 

 


 

 

Mohamed-Hossam Loutfi
Sole Panelist

Dated: December 19, 2000.