WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Israel Discount Bank of New York v. Richard A. Galvin

Case No. D2000-1781

 

1. The Parties

The Complainant is Israel Discount Bank of New York, a company incorporated under the laws of the State of New York, with its principal place of business at 511 Fifth Avenue, New York, NY 10017-4997, USA.

The Respondent is Richard A. Galvin, c/o Vector Microsystems, Ltd., Claydon Industrial Park, Great Blakenham, Ipswich IP6 ONL, United Kingdom.

 

2. The Domain Name and Registrar

This dispute concerns the domain name <idbbank.com>. The registrar with which the domain name is registered is Easyspace, Ltd. (hereinafter referred to as "the Registrar").

 

3. Procedural History

On December 21, 2000 the Complaint was filed by the Complainant with the WIPO Arbitration and Mediation Center (hereinafter the "Center") pursuant to the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (hereinafter "ICANN") on October 24, 1999.

On December 28, 2000, the Center acknowledged receipt of the said Complaint and on the same date the Center forwarded a Request to Easyspace for Registrar Verification.

On January 19, 2001 the Registrar confirmed inter alia that it was in receipt of the Complaint sent by the Complainant, that the Registrar is the registrar of the said domain name, that the Respondent is the registrant of the said domain name, that the Uniform Domain Name Dispute Resolution Policy applies to the domain name and that the said domain name is not hosted on Easyspace.comís servers and is on "registrar locked" status.

On January 26, 2001 the Center issued a Formal Requirements Compliance Checklist and forwarded a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent.

On February 14, 2001 the Center received the Respondentís Response. On

February 27, 2001, the Complainant having elected to have a single member administrative panel, the Center appointed C. Ross Carson as the administrative panel, having received a Statement of Acceptance and Declaration of Impartiality and Independence from Mr. Carson. Also on February 27, 2001 the Center forwarded the case file to the administrative panel and advised that the Projected Decision Date was March 12, 2001.

This Administrative Panel is satisfied that it has been properly appointed under the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant is the owner of the following U.S. registered trademarks for the trademarks IDB and IDB Design and IDB & Circle Design registered in relation to banking services, in Class 36 (U.S. Cl. 102):

(1) U.S. Reg. No. 1,210,901 registered Sep. 28, 1982 IDB

(2) U.S. Reg. No. 1,208,988 registered Sep. 14, 1982 IDB Design mark

(3) U.S. Reg. No. 1,210,902 registered Sep. 28, 1982 IDB & Circle design

The Complainant is also the owner of the following U.S. registered trademark:

(4) U.S. Reg. No. 1,269,431 registered March 6, 1984: ISRAEL DISCOUNT BANK

The Complainant is also the applicant in respect of the following pending U.S. applications in relation to banking services as shown in the applications:

(1) U.S. Trade-mark Application for IDBBANK based on use since as early as October 1, 2000, dated November 29, 2000

(2) U.S. Trade-mark Application for IDBIDBBANK Design based on use since at least as early as Oct. 1, 2000, dated November 29, 2000

(3) U.S. Trade-mark Application for IDB Design based on use since at least as early as October 1, 2000, dated November 29, 2000

 

5. Partiesí Contentions

A. Complainant

(i) Complainant alleges that the domain name <idbbank.com> is identical or confusingly similar to the service marks in which the Complainant has rights; and

(ii) Complainant alleges that the Respondent has no rights or legitimate interests in respect of the domain name <idbbank.com>; and

(iii) Complainant alleges that the said domain name <idbbank.com> was registered and is being used in bad faith.

Identical or Confusingly Similar

The Complainant makes the following submissions:

The Complainant is the registered owner of the above referenced US registered and pending trademarks. The Complainant has provided evidence of its registration and pending applications for these marks. The Complainant has also provided copies of promotional material including the trademarks. The Complainant has also enclosed the Declaration of Dainow showing the Complainantís domain name <idbny.com>.

The Complainant, whose business name is Israel Discount Bank of New York, submits that it is currently using IDBBANK as a service mark and tradename in banking activities and that it has used the trademark IDB in connection with the provision of banking activities for many years in the U.S., Israel, U.K. and elsewhere.

Complainant submits that the IDBBANK and IDB service marks are important and valuable assets of Complainant, that they are well known service marks and tradenames of the Complainant and that Complainant has expended over three million dollars during the past 20 in advertisements and promotion of the IDB name.

Complainant submits that the IDB mark has been registered since 1982 with first use in 1962 in association with the terms "bank" and "banking" and that the IDB service mark and trade name are recognized in the trade. One example is the listing in the Bankerís Almanac (See Ex. 17 to Chang Declaration) showing IDB (stylized) Design. Complainant has submitted Declarations which provide examples of use of IDBBANK in promotional materials, on the Homepage of Complainantís website and in its U.S. Service Mark Application.

Complainant submits that its uses of the service mark are worldwide, with offices and or business associations in numerous countries including U.S., UK, France, Chile, Uruguay and Cayman Islands.

No Rights or Legitimate Interests

Complainant submits that Respondent apparently is not using and has not used the "idbbank" name except for registering same and establishing the website allegedly under construction.

Complainant has submitted a print out of the Respondentís site (Exhibit 19 to Dainow Declaration). The site includes the headings Ipswich & District Business Databank and IDB Data Bank.

Complainant engaged an investigation firm to investigate any known uses of idbbank in Respondentís business area or on the Internet. The investigation firm reported that it had contacted certain official agencies in the Ipswich and Suffolk area where managers advised that they had not heard the term IDBBank or the phrase District Business Area alone or in combination with Ipswich, nor the initials IDB in connection with Ipswich. Complainant avers that there is no commonly used phrase that would explain idbbank except Complainantís own name. Complainant also avers that it is not common or logical to use the word bank when one means databank.

Complainant submits that the investigation firm found no evidence of Respondentís use of the domain name in connection with any bona fide offering of goods or services and no evidence of trademark rights thereto.

Complainant submits that there is no evidence that Respondent intends to conduct banking business and therefore Respondent has no legitimate reason to include "bank" in its domain name. Complainant submits that if Respondent does not intend to conduct banking business, that the domain name idbbank is misleading and improper. Complainant further submits that if Respondent is contemplating a different business, the domain name implies banking. Complainant believes some of its customers will be drawn to Respondentís website and will be confused and believe it to be an operation of or endorsed by Complainant which is likely to damage and dilute Complainantís legitimate rights.

Registered and Used in Bad Faith

Complainant submits that there is no evidence of any need for the Respondent to include the word "bank" in its domain name. Complainant suggests that Respondent could have chosen the domain name <idbdatabank>.

Complainant submits that Respondentís registration and use are in bad faith in view of (1) Complainantís banking activities are well known in the U.S., U.K., Uruguay, France, Chile and British West Indies and the Complainant parent company, Israel Discount Bank Ltd. also operates in the Bahamas and Israel; (2) the worldwide awareness of the IDB name used in connection with banking; (3) the presence of an Israel Discount Bank Office in the U.K. and in other countries; (4) the absence of any banking activities that Respondent is or ever could be doing.

Complainant submits that Respondent is in the business of obtaining and selling domain names. Exhibits 21 to 23 to Chang Declaration consist of e-mails between the Complainant the Respondentís company.

Exhibit 21 is an e-mail dated October 6, 2000 from Ann Sargent of Respondentís firm to Mr. A. Landi, VP, Israel Discount Bank of New York, Ms Sargent advises she was contacted by Easyspace Ltd. who advised that Israel Discount Bank was interested in the domain <idbbank.com>. She advised Mr. Landi that Richard Galvin was away on holiday and that "certainly the domain name is for sale, subject to the amount offered - perhaps at this stage the best way to proceed would be for you to make an offer that Richard can consider on his return".

Exhibit 22 is an e-mail dated October 16, 2000 from Richard Galvin to A. Landi advising "I do have several other domain names which are for sale which I have not used and have no plans for now but unfortunately Ann has confused them. I am currently developing a new venture and extensive website design in relation to the <idbbank.com> domain in our local Ipswich and District Business area. I apologise for the mistake and I am sorry the domain name is not for sale at present."

Exhibit 23 is an e-mail dated October 19, 2000 from Richard Galvin to A. Landi. Mr. Galvin advises that he had spoken with Mr. Wen-Chi Chang and was surprised at Mr. Changís attitude as the bankís name is Israel Discount Bank (IDB) and not Israel Discount Bank Bank (IDBBANK). Mr. Galvin advised that he registered the name for a legitimate business use which has nothing to do with the bankís organization. In response to Complainantís question regarding the price, Mr. Galvin advised that he does not want to sell the name. He advised he had explained to Mr. Wen-Chi Chang that he would pursue other business options if the income he had been working towards was assured. His new business venture would net £200,000 in profit within a year and he was not willing to lose the income. He would be prepared to take payment for the domain name over a 12 months period to replace the lost income, or to lease the domain name.

Complainant submits that certain of Complainantís business activities have been disrupted by Respondentís registration of the domain name <idbbank.com>. Complainant is heavily using and promoting its name IDBBANK and is barred from operating a website under the preferred domain name <idbbank.com>.

Complainant quotes the Bank Technology Bulletin (Exhibit 26) which advises banks that the number of incidents involving disputes, confusion and fraud related to their Internet domain names has increased.. Internet domain names have been used to perpetrate fraud and have led to public confusion and legal disputes. Fraudulent operators have created Web sites that attempt to mislead customers into disclosing their passwords or other sensitive information. Cybersquatters have attempted to sell desirable domain names to companies at exorbitant prices. Complainant advises it considers the dangers listed in the Bulletin as real and imminent as regards the Respondentís domain name <idbbank.com>.

B. Respondent

Identical or Confusingly Similar

Respondent submits that the ID Bank (should read IDB BANK) promotional materials and IDB Bank home page on Complainantís website were not used as a service mark by the Complainant until approximately 6 months after the Respondent registered and started to use the domain name <idbbank.com> for a legitimate business purpose. Respondent submits that Complainant filed its U.S. service mark application for the mark IDBBANK after it had contacted Respondent disputing rights to the domain name <idbbank.com>. Respondent submits that Complainant has deliberately added the terms idbbank to its promotional materials and Complainantís website and subsequently at the top and bottom of every page of its website after making contact with the Respondent concerning its domain name.

Respondent submits that the Complainant is attempting to complicate the issue by combining the term idbbank with an IDB logo. Respondent submits that combining the logo with the term idbbank is irrelevant in this case as Respondent has no intention of using the IDB logo referred to by the Complainant.

Respondent submits that the initials IDB are merely an abbreviation of Complainantís business name, Israel Discount Bank. Respondent submits that since the commencement of the domain name dispute, Complainant adopted a new service mark of IDBBANK, purely for the purposes of influencing the outcome of the dispute. The new service mark IDBBANK was adopted at least 8 months after the Respondent registered the domain name <idbbank.com>.

Respondent submits that the Complainantís domain name was idbny.com (Israel Discount Bank New York). Complainant added the letters BANK to the abbreviation IDB which, when expanded, would result in the term Israel Discount Bank Bank.

Respondent submits that Complainant has not proved rights or legitimate interests in the term IDBBANK.

Respondent submits that Exhibit 2 to the Response clearly demonstrates that the term IDB is referred to on approximately 36,000 web pages and is a common abbreviation of many terms and used by many organizations in the banking world (see also Exhibits 1-14) and by other organizations.

Respondent points out that Complainant states that it expended over 3 million dollars on promoting the IDB mark. It did not provide evidence of investment on the IDBBANK mark.

Respondent submits that when registering the domain name in dispute he had never heard of the Israel Discount Bank or the term IDB. A search on Yahoo for the term IDB does not find the Israel Discount Bank, IDB or IDBBANK in connection with the Complainant. 300 matches were examined and found no reference to the Complainant in any form. The Respondent draws attention to the site matches (Exhibit 1), in particular the second and only entry in relation to banking refers to Inter-American Development Bank (IDB). The IDB is referred to many times in the first 100 matches. The Islamic Development Bank also uses the acronym IDB and is matched many times with IDB.

Respondent suggests that the Complainant is commonly known as Israel Discount Bank. Complainantís Exhibits 17 and 18 refer to the website <www.bankersalmanac.com>, on which site Respondent advised that a search for IDBBANK shows no result in connection with the Complainant (see Exhibit 7a of Response). The listing for the Complainant only shows the IDB logo.

Respondent submits that a search was carried out of the Service Mark which Complainant displays at the bottom of the home page of its web site (Exhibit 2 of Complainant). The search shows the Service Mark to be IDB BANK and not IDBBANK as asserted by Complainant.

Respondent submits that the word "bank" has many meanings in the dictionary. The definition "any supply, store or reserve; a data bank" demonstrates the meaning applicable to the Respondentís business.

Respondent refers to Complainantís Exhibit 23. Respondent states that he is currently developing a new venture. Respondent submits that Exhibit 19 only shows the front page and that Complainant has not shown the mechanics of the database driven system or extensive code involved. Respondent submits that he has been working intensively on a system for clients to produce and manage their own websites in association with another local Internet based business. Respondent submits that Complainant has not proved that Respondent is not using either the domain name or the website.

Respondent submits that the report of Complainantís investigation firm which failed to locate a listing of Respondentís business was to be expected as Respondent is developing a new venture and the business will be launched when the software is complete and the database compiled.

Respondent refutes Complainantís statement that there is no commonly used phrase of words that would explain "idbbank" except Complainantís name. Respondent submits that he uses the term IDBBANK as an abbreviation of the business name, IPSWICH and DISTRICT BUSINESS DATABANK. Respondent submits that use of the term BANK is not illogical, as the Oxford English Dictionary definition of "bank" includes databank. Respondent submits that it is not required to conduct banking business and does not intend to do so.

Respondent refers to Complainantís statement that its current or prospective customers will be drawn to Respondentís website and be confused. Respondent advises that his web site states on the Header Bar, Title of the Page ĎIpswich and District Business Databankí which cannot confuse the public or customers.

Registered and Used in Bad Faith

Respondent denies that he registered and is using the domain name in bad faith. Respondent advises that he has discussed use of the word "bank" in its domain name. Respondent advises that he preferred to keep his domain name as short as possible. Respondent submits that Complainant has no rights or legitimate interests in the IDBBANK mark, that IDB and IDBBANK are associated with the Inter-American Development Bank (IDB), the Islamic Development Bank (IDB). As shown in Respondentís exhibits 1-14 there are about 36,800 other references to IDB which do not refer to the Complainant. Respondent repeats that Complainant is commonly known as Israel Discount Bank (Exhibit 10).

Respondent submits that Complainant is shown in the London telephone directory as Israel Discount Bank Ltd. Respondent submits that Complainantís Exhibit 15 evidences the Complainant displaying themselves in a confusing manner with relation to the domain dispute, because the text states Israel Discount Bank with a website address of <www.discountbank.net> and use of a logo bearing term DB.

Respondent submits that he does not have to conduct banking business in order to have a legitimate reason to include the word Ďbankí in his domain name. Respondent provides examples of other domain names including bank but whose contents relate to databank, bloodbank, protein bank, sperm bank, milk bank. etc.

Respondent denies that he is in the business of obtaining and selling domain names. Respondent submits that Complainant has not provided any evidence to this effect. Respondent submits that he has never directly or indirectly sold or actively attempted to sell a domain name. Respondent submits that he only reluctantly agreed to sell its domain name when threatened with legal action. £200,000 was the figure described as the Business Plan net profit anticipated in the first twelve months.

Respondent submits that in the Complainantís Exhibits 21, 22 and 23 the Respondent mentions some other domain names which are registered and for which it now has no plans but does not mention the names, which is not evidence of an attempt to sell a domain name.

Respondent repeats that at the time of registering the domain name he had never heard of Israel Discount Bank or the term IDB. Respondent submits that the name by which Complainant is most commonly known is Israel Discount Bank.

Respondent advises that he registered the domain name on April 6, 2000 and actively began to develop the new business venture, Ipswich and District Business Databank.

Complainant contacted the Registrar Easyspace in October 2000 (Exhibit 16) expressing their interest in acquiring the domain name. Easyspace contacted Respondent by e-mail on October 5, 2001 (Exhibit 16 to Response). Mrs. Sargent responded by e-mail, saying the domain was for sale. Respondent submits that this was a genuine error on Mrs. Sargentís part and Respondent advised Mr. Landi of the error upon his return from vacation. (Exhibit 22 to Complaint).

Respondent submits that on October 18, 2000 Respondent spoke with Mr. Wen-Chi Chang and explained that the domain name was not for sale; Mr Chang became aggressive and threatened legal action if Respondent failed to transfer the domain name to the Complainant for the registration fee. Respondent then received an e-mail requesting the asking price. Repondent replied that the name was not for sale. Respondent denies mentioning a selling price for the domain name. Respondent mentioned the anticipated net profit from the project underway in the first twelve months.

Respondent submits that he worked on the project for more than 7 months in association with other companies. Respondent submits that it would be unreasonable for Complainant not to recompense Respondent for this work and make a sensible offer for the transfer of the domain. Respondent denies that he demanded over one quarter million dollars. Respondent submits that he has never demanded anything.

Respondent submits that Complainant has provided no evidence to show that any of its business activities have been disrupted by the Respondentís registration of the domain name <idbbank.com>. Respondent submits that the IDBBANK promotional materials and IDBBANK home page on Complainantís website were not used until 6 months after the Respondent registered its domain name. The U.S. service mark was applied for 8 months after Respondent registered his domain name.

Respondent submits that Complainant deliberately added the terms idbbank to its promotional material and to the Complainantís web site home page after Mr. Wen-Chi Chang telephoned the Respondent.

Respondent denies that he has ever engaged in cybersquatting.

 

6. Findings

Pursuant to paragraph 4 of the ICANN Uniform Domain Name Dispute Resolution Policy the Complainant must prove each of three elements to succeed:

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

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

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

Each of the three elements will be reviewed consecutively having regard to the evidence and submissions of the Complainant and Respondent.

Identical or Confusingly Similar

The Respondent is the Registrant of <idbbank.com> which was registered on April 6, 2000 and last updated on November 8, 2000. The Complainant has been using the service trademarks IDB, IDB & Circle Design and IDB Design mark in association with banking services in the United States since 1962. The Complainant is the registered owner of one United States trademark registration for each of the above trademarks. The Complainantís banking activities are known in the U.S., U.K., Uruguay, France, Chile and the British West Indies. Those consumers familiar with the Complainantís banking business associate the trademarks IDB, IDB & Circle Design and IDB Design with Complainantís banking services. Those consumers familiar with the Complainantís banking business would find the trademarks IDB, IDB & Circle Design and IDB Design confusingly similar to the domain name in dispute <idbbank.com>. The Complainant also relied upon additional trademarks which Complainant commenced using after the Respondent had registered the domain name in dispute <idbbank.com>. The trademarks which the Complainant adopted after registration of the domain name in dispute are not considered as part of the panelís findings. I find that the domain name in dispute <idbbank.com> is confusingly similar to the Complainantís registered trademarks IDB, IDB Design and IDB & Circle design which are registered and have been in use since 1962 in association with banking services.

Respondent Has No Rights or Legitimate Interest

The Complainant must establish on a balance of probabilities that the Respondent has no right or legitimate interest in the domain name in dispute. The Respondent has a business located in Ipswich and stated in a letter dated October 16, 2000 (Respondentís Exhibit 22) to Andrew Landi of the Complainant Corporation: "I am currently developing a new venture and extensive website design in relation to the <idbbank.com> domain in our local Ipswich and District Business area." The Respondent states that the letters idb of the domain name <idbbank.com> represent the intended customers of the new website which are persons carrying on business in the Ipswich and District Business area. The Respondent states that the word bank which is also part of the domain name in dispute is an abbreviated version of databank. The information on business in the local Ipswich and District Business area will appear in the proposed databank for those businesses contracting with the Respondent to be represented on Respondentís proposed website. The Respondent relies on a definition of "bank" found in the Oxford English Dictionary page 83 (Exhibit 15) which reads "6. any supply, store or reserve: a data bank." As seen from the page 83 from the Oxford English Dictionary the word "bank" used in different contexts has a multiplicity of meanings from a bank of a river to a word describing the motion of an airplane when turning. The Respondent further submits that "bank" is used as part of the domain name in dispute because a domain name to be effective should be short. The Respondent submits on page 10 of the Response that there are many thousands of domain names worldwide which include the word "bank" but whose contents bear no resemblance to the highly government-regulated field of banking as carried on by the Complainant. Examples listed by the Respondent are: databank, bloodbank, protein bank, sperm bank, milk bank, coin bank, lead bank, soil bank, agent bank, organ bank, etc. The Respondent states that the Respondent is not in the banking business and never intends to be or claims to be in the banking business.

Use of the word bank depends on the context in which the word is used. While shortness is a desirable criteria for a domain name, informative is also a criteria for a domain name. The use of bank in the domain name is highly suggestive of a financial institution and does not imply a website incorporating a database on local businesses or other local resources. I find that the Respondent has no rights or legitimate interest in respect of the domain name in dispute <idbbank.com>.

Registered and Used in Bad Faith

The Respondent submits that when registering the domain name in dispute <idbbank.com> the Respondent had never heard of the Israel Discount Bank or their trademark IDB. Respondent advises that Respondent registered the domain name on April 6, 2000 and actively began to develop the new business venture Ipswich and District Business Databank. The Complainant submits that it has an office in London England and attaches as Exhibit 16 a copy of a page showing Israel Discount Bank listing in the London Telephone Directory. The Complainant also attached as Exhibit 17 Israel Discount Bank of New York listing in the Bankerís Almanac on its website, www.bankersalmanac.com and Exhibit 18 Israel Discount Bank Limited listing in the Bankerís Almanac on its website, www.bankersalmanac.com. The Complainant further submits that the inclusion of the word bank in the domain name in dispute is consistent with the Respondent registering the domain name in bad faith. The Respondent attached as Exhibits a search on Yahoo for the term IDB and states that the search did not disclose Israel Discount Bank of New York but did disclose use of IDB as an acronym for Inter-American Development Bank in many instances and Islamic Development Bank in some instances. With respect to the Inter-American Development Bank and the Islamic Development Bank the acronym IDB followed the banksí respective names.

The Yahoo search, Exhibits 1 to 6 to Respondentís submission, include references in Exhibit 2 to International Data Base [IDB], Exhibit 4, Integrated Database [IDB],in which the letters DB are used as an acronym for data base. Websterís Ninth New Collegiate Dictionary, Copyright 1988 by Merrian-Webster Inc. defines data banks as "n (ca. 1966): DATA BASE". The word DATA BASE is defined as "n (1967): a collection of data organized esp. for rapid search and retrieval (as by computer)." I find on a balance of probabilities that the domain name <idbbank.com> was registered knowing that search engines seeking out IDB used in association with banks would locate the site <idbbank.com>. The word data bank or data base used in association with IDB would be relatively short and informative concerning the nature of the information on the website and would avoid confusion with Complainantís banking services associated with its trademarks for IDB, IDB Design and IDB & Circle design.

Correspondence between the Complainant and the Respondent disclose that in an e-mail dated Friday October 6, 2000, the General Manager of the Respondentís company advised Mr. Landi of the Complainant that certainly the domain name <idbbank.com> is for sale subject to the amount offered. She advised that the best way to proceed was to make an offer which Richard Galvin the Managing Director can consider on his return from his holiday on October 16. On October 16, Richard Galvin sent an e-mail to Andrew Landi of the Complainant stating that Mr. Galvin had several other domain names for sale which he has not used and has no plans for using but unfortunately the General Manager has confused them with <idbbank.com>. Mr. Galvin stated that he was currently developing a new venture and extensive website in relation to the <idbbank.com> domain in his local Ipswich and District Business area. Mr. Galvin apologized for the error and stated "... I am sorry the domain name is not for sale at present." In a subsequent e-mail to Mr. Landi dated October 19, 2000 Mr. Galvin said ĎFrankly I do not want to sell the name as I have been working on a project associated with it for the past seven months, however,.... I would be prepared to pursue alternative business options I have at this time provided that the income I have been working towards is assured. My new business venture will net £200,000 profit within the coming 12 months and obviously I do not see why I should forego this wasting my hard work, innovation and opportunity". A review of the evidence leads to the conclusion that the development of the website for use in association with the domain name <idbbank.com> was not the subject of very much work at Vector as the General Manager advised that the domain name was for sale while the Managing Director was on holidays. If the project of developing a web site specifically for use with the domain name <idbbank.com> had been a major project the General Manager is unlikely to have been confused or mistaken and advised Complainant that the domain name in dispute was for sale. Pursuant to paragraph 4.b(i) of the ICANN Uniform Domain Name Dispute Resolution Policy I find that the facts indicate that the Respondent registered or 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 IDB, IDB Design and IDB & Circle Design for banking services or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. I also infer from the word bank in the domain name <idbbank.com> that the Respondent will be attracting Internet users to Respondentís website when active by creating a likelihood of confusion with the Complainantís mark and increasing the number of hits on Respondentís website.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) that the domain name <idbbank.com> registered by the Respondent is confusingly similar to the trademarks IDB, IDB Design and IDB & Circle Design used in association with banking services since 1962;

(b) that the Respondent has no rights or legitimate interest in respect of the domain name;

(c) that the Respondent has registered and is using the domain name in bad faith.

Accordingly, pursuant to paragraph 4.i. of the ICANN Policy, the Panel requires that the registration of the domain name in dispute <idbbank.com> be transferred to the Complainant.

 


 

Ross Carson
Sole Panelist

Dated: March 12, 2001