WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fortis NL N.V.- Fortis B S.A.- Fortis A.G. NL S.A. v. X.X
Case No. D2000-1453
1. The Parties
Complainants are :
Fortis NL N.V., having its registered offices at Archimedeslaan 6, 3584 BA Utrecht Netherlands;
Fortis B S.A., having its registered offices at Koningsstraat 20, 1000 Brussels, Belgium;
Fortis A.G.NL S.A., having its registered offices at Jacqmainlaan 53, 1000 Brussels, Belgium.
Complainants are represented by Houthoff Buruma, Attorneys, having their principal place of business at P.O. Box 75505, 1070 AM Amsterdam, the Netherlands.
Hereinafter referred to as "Complainants".
Respondent is X.X., a citizen of Belgium, and hereinafter referred to as "Respondent".
2. The Domain Name and Registrar
The domain name at issue is: "ag-fortis.com" (hereinafter referred to as "the Domain Name").
The registrar of the Domain Name at issue is Network Solutions Inc. (NSI), 505 Huntmar Park Drive, Herndon, VA 20170, USA (hereinafter referred to as "Registrar").
3. Procedural History
On December 5, 2000, after having received Benoit Van Asbroeckís completed and signed statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel.
The procedural history prior to the appointment of the Administrative Panel can be summarised has follows:
Notwithstanding due notification to Respondent, both electronically and at his official domicile, of the complaint, Respondent did not submit any response within the twenty days of the date of commencement of the administrative proceeding as provided under paragraph 5 (a) of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "Rules").
However, on December 12, 2000, Mr Delvaux, acting on behalf of Respondent, submitted a late response. According to the Respondent the complaint was sent to Respondentís former address and reached therefore Respondent with three weeksí delay.
According to paragraph 14 (a) of the Rules, unless there are exceptional circumstances, a late response shall not be considered by the Administrative Panel.
Considering that the complaint was sent electronically to Respondent by the WIPO Arbitration and Mediation Center and that Complainantsí representative also sent the draft complaint to Respondentís new address, the circumstances advanced by Respondent cannot be regarded as exceptional.
Therefore, the Administrative Panel shall not consider Respondentís late response.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complaint is based upon Complainantsí claimed rights to the trademark "FORTIS" "AG" and "FORTIS AG" respectively registered with the Benelux Trademark Office on May 1991, December 1987 and February 2000.
More specifically "FORTIS" is a registered trademark of sub 1 and sub 2 since May 1991;
"AG" is a registered trademark of Complainants, cf sub 3 since 1987; and
"FORTIS AG" is a registered trademark of Complainants, cf sub 1 and sub 2 since February 2000.
A copy of the registration certificates of these trademarks are filed by Complainants.
As a result, Complainants have, either jointly or individually, rights to the trademarks "FORTIS", "AG" and "FORTIS AG".
The trademark "FORTIS AG" was thus registered after registration of the Domain Name.
The requirements of Paragraph 4 (a) (i) of the Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (hereinafter referred to as "the Policy"), do not specify that the trademark at issue must have been registered prior to the disputed domain name. However, the scope of such subsequent trademark affects the test of bad faith under Paragraph 4 (a) (iii) of the Policy.
Complainantsí business is in the fields of banking and insurance.
On February 14, 2000, Respondent registered the domain name "ag-fortis.com".
In an electronic correspondence dated March 29, 2000, Respondentís representative offered for sale the Domain Name to Complainants in the following terms "It often happens that a company that is interested in the Internet does not fully secure its access to the web as regards its activity or its brand name. One of our clients has registered the following name which may have an interest for your company : "ag-fortis.com". We are willing to cede (sic) the name immediately for a lump sum amount of 1000 USD (Ö) We are specialised in the semantic research of domain name on the Internet".
On September 27, 2000, Complainantsí representative sent a formal notice to Respondent demanding transfer of the Domain Name free of charge.
Respondent did not answer this formal notice.
The disputed URL is not used as a web site.
5. Partiesí Contentions
According to the Policy, Complainants request a transfer in their favour of the Domain Name since the conditions listed under Paragraph 4 (a) of the Policy are met.
Complainants contend that the Domain Name is confusingly similar to the Complainantsí registered trademarks "FORTIS AG", "FORTIS" and "AG". By registering the Domain Name, Respondent has merely inverted Complainantsí trademark "Fortis AG" which is a reputable Belgian insurance company. Any use of a combination of the words "FORTIS" and "AG" will lead the public to think of Complainantsí business and will leave confusion among the public when used by others than Complainants.
Moreover, the offer for sale of a domain name reflecting a Benelux trademark is infringing Belgian law.
Respondent cannot demonstrate or establish any legitimate interest in the Domain Name.
Respondent is not engaged in any activity involving a combination of the name "AG FORTIS" or "FORTIS AG".
Respondent has not established an active web page with the Domain Name.
The Domain Name has been registered merely for selling purposes.
Respondent has registered other domain names which are related to famous trademarks like .e.g. "yves-st-laurent.com".
No response was submitted within time period specified under paragraph 5 (a) of the Rules (see supra).
6. Discussion and Findings
Pursuant to paragraph 15(a) of the Rules, the Administrative Panel shall issue its decision on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy provides that a Complainant must cumulatively establish each of the following three conditions to successfully challenge a registered domain name:
(1) 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; and
(2) that the Respondent has no legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
On December 9, 2000, the Administrative Panel tried without success to open Respondentís URL http://www.ag-fortis.com. An error message appeared.
The Administrative Panel shall now examine whether the conditions specified under paragraph 4 (a) of the Policy are satisfied here.
1) Right in a trademark - Identity or Confusing Similarity
"FORTIS AG" is Complainantsí sub 1 and 2 registered trademark.
The domain name "ag-fortis" is confusingly similar to the trademark "FORTIS AG".
The inversion of the terms and the addition of a dash are not sufficient to avoid confusion.
With regard to avoiding confusion, addition of the top level domain name ".com" is irrelevant.
For the sake of completeness, the Administrative Panel considers that the Domain Name is also confusingly similar to the trademark "FORTIS". The addition of the terms "ag" and a dash are not sufficient to avoid confusion since it is public knowledge in Belgium that the company "AG" is a prominent member of the banking and insurance group "FORTIS".
2) Respondentís rights or legitimate interests in the Domain Name
According to Paragraph 4(c) of the Policy, evidence of any of the following circumstances shall demonstrate rights or legitimate interests of Respondent in the domain name at issue:
(i) before any notice was given to Respondent of the dispute, Respondent used, or demonstrably made 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) Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even though it has not acquired any trademark or service mark rights; or
(iii) Respondent is 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."
By not submitting a valid response, Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4 (c) of the Policy, any rights or legitimate interest in the Domain Name.
However, considering that Respondent does not use the Domain Name and that he has offered the Domain Name for sale to Complainants sub 3, it can reasonably be considered that Respondent would not be able to bring evidence of any the circumstances described in paragraph 4 (c) of the Policy.
The Administrative Panel therefore finds that Respondent has no rights or legitimate interest in the Domain Name.
3) Registration and Use in Bad Faith
According to Paragraph 4 (b) of the Policy, evidence of any of the following circumstances shall demonstrate a bad faith registration and use of the domain name at issue:
(i) circumstances indicating that Respondent has registered or that Respondent has 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 Respondentís documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, Respondent has intentionally attempted to attract for commercial gain, Internet users to his web site or other online location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location.
It appears from Respondentís representative mail dated March 29, 2000 that Respondent tried to sell the Domain Name to Complainants sub 3.
Moreover, Respondent has registered other domain names related with famous trademarks like "yves-st-laurent.com".
In view of the foregoing and pursuant to Paragraph 4 (b) (i)of the Policy, the Administrative Panel finds that Respondent registered and used the Domain Name in bad faith.
Consequently, the Administrative Panel considers that the three cumulative conditions provided under paragraph 4(a) of the Policy are met in this case.
In light of the foregoing, the Administrative Panel decides that the domain name "ag-fortis.com" must be transferred to Complainants in accordance with the ICANN Policy and Rules.
Benoit Van Asbroeck
Dated: January 19, 2001