WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

BBBank eG v. Dreamline.net

Case No. D2001-0080

 

1. The Parties

The Complainant is BBBank eG, a German corporation with its principal place of business at Karlsruhe, Germany. It is represented by Mr Andreas Hotz of Durm & Durm of Karlsruhe, Germany.

The Respondent is Dreamline.net of 516-1402, Sinnamusil Jugong Apt., 964-5 Yeongtong, Suwon, Gyeonggi, Seoul, Korea. The Respondent is not represented and has filed no response.

 

2. The Domain Name and Registrar

The domain name at issue is <bbbank.net>. The domain name is registered with Dot Registrar.com of Miami, Florida, U.S.A. ("the Registrar"). The name was registered on September 27, 2000.

 

3. Procedural History

The Complaint, submitted by BBBankeG was received on January 16, 2001, (electronically) and on January 18, 2001, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

On January 26, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:

- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

- Confirm that the domain name at issue is registered with the Registrar.

- Confirm that the person identified as the Respondent is the current registrant of the domain name.

- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.

- Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") was in effect.

- Indicate the current status of the domain name.

By email dated January 26, 2001, the Registrar advised WIPO Center as follows:

- The Registrar had not received a copy of the Complaint from the Complainant.

- Dot Registrar.com is the Registrar of the domain name registration <bbbank.net>.

- Dreamline.net at the above address is shown as the "current registrant" of the domain name at the above address.

- The technical, administrative and zone contact for the domain name was shown as Soonin Lee at the same address.

- The domain name registration <bbbank.net> is currently on "Registrar hold".

The Registrar has currently incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The advice from the Registrar that the domain name in question is "on hold" indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Registrarís Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.

The Complainant filed an amended complaint on February 1, 2001.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on February 2, 2001, transmitted by post-courier and by email a notification of Complaint and Commencement of Administrative Proceeding to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.

The Respondent was advised in the couriered and emailed communication that a Response to the Complaint was required within twenty (20) calendar days from the date of the commencement of the administrative proceeding. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by one original and four sets of hard copy and by email.

The Respondent filed no Response. A notice of Respondent default was given by the Center on February 23, 2001.

The Complainant elected to have its Complaint resolved by a single member panel:

It has duly paid the amount required of it to the WIPO Center.

On March 7, 2001, the WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On March 7, 2001, the Honorable Sir Ian Barker QC advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On March 7, 2001, WIPO Center forwarded to the Honorable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on March 12, 2001. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by March 21, 2001.

On March 12, 2001, the Respondent emailed WIPO Center and the Panelist offering to transfer the name to the Complainant without any condition. WIPO advised this offer to the Complainant, which did not indicate whether it would accept the offer.

The Respondent repeated the offer on March 20, 2001, this time sending a copy to the Complainantís lawyer. In view of the lack of finality, the Panel has decided to issue the decision. The decision date has been delayed for this reason.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant is the owner of the following German Trademarks:

- word mark No. 369 18 676 "BBBank", which claims protection in class 36 for "Finanzwesen" (i.e. finance);

- combined mark No. 369 55 823 "BBBank", which seeks protection in classes 35, 36, 38 and 42 for "Werbung" (advertising), "Geschäftsführung" (executive); "Unternehmensverwaltung" (business management); "Büroarbeiten" (office work); "Versicherungswesen" (insurance); "Finanzwesen" (finance); "Geldgeschäfte" (money-transactions); "Immobiliengeschäfte" (real estate businesses); "Telekommunikation" (telecommunication); "Erstellen von Programmen für die Datenverarbeitung" (creating of programs for data processing);

- word mark No. 396 23 419 "BBBank-Direkt", which is protected for "Finanzwesen" (finance) in class 36;

- word mark No. 300 38 612 "BBBank-Select", word mark No. 300 38 613 "BBBank-Trust" and word mark No. 300 38 614 "BBBank-Share", which are likewise protected for "Versicherungswesen" (insurance); "Finanzwesen" (finance); "Geldgeschäfte" (money-transactions); "Immobiliengeschäfte" (real estate matters) in class 36;

The Complainant permanently uses cited trademarks in connection with all registered services. The Complainant uses the sign "BBBank" throughout Germany as firm name, which therefore seeks protection as mark of an undertaking according to paras. 5(2), 15 German Trade Mark Act.

According to a WHOIS database, Respondent owns a long list of registrations probably including several hundred domain names. It is impossible to mark with figures the exact number of registrations by the Respondent, because a search in the database is aborted after 50 detected records. Four research protocols, proving that Respondent has at least registered 105 domain names, are provided as Annexes [10] Ė [13] to the Complaint. Disregarding the firm homepage under the domain name "dreamwiz.com", the Respondent makes no use of any of the registered domain names. At the time the Respondent registered the disputed domain name, the Respondent had actual knowledge of the prior use of the firm name BBBank, because it was prevented from registering the domain name in the top level domain ".com", which was already occupied.

 

5. Partiesí Contentions

A. Complainant

The Complainant alleges:

The domain name "bbbank" of the Respondent is identical with its registered mark and the firm name "BBBank". It is also identical in sound with the integral part of the combined mark No. 369 55 823 "BBBank" and is very similar to this mark in pictorial and conceptual regards. Respondentís domain name is furthermore confusingly similar to the Complainantís word marks No. 396 23 419 "BBBank-Direkt", No. 300 38 612 "BBBank-Select", No 300 38 613 "BBBank-Trust" and No. 300 38 614 "BBBank-Share". The integral part of these four marks in each case is "BBBank", because the word components "Direkt", "Select", "Trust" and "Share" are descriptive.

The Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint. Respondent has acquired no trademark or service mark rights in the past concerning the sign "bbbank". Since the registration of the domain name, there is no evidence of Respondentís use of, or demonstrable preparations to use, the domain name. There is especially neither evidence of a use of the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, nor is there evidence for a legitimate non-commercial or fair use of the domain name. The registrant has never commonly been known by the domain name.

The domain name has been registered and is being used in bad faith. The domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the corresponding trademarks or to a competitor of the Complainant, for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain name.

The domain name was also registered in order to prevent the Complainant who is the owner of the trademark from reflecting the mark in a corresponding domain name and the Respondent has engaged in a pattern of such conduct.

Respondent should have known of Complainantís trademarks and therefore had constructive notice as a matter of law that the name is a registered trademark of the Complainant. It therefore knew or should have known that its registration of "bbbank.net" prevented Complainant from reflecting its "BBBank" trademark in a corresponding ".net" domain. The Respondent is obviously engaged in a pattern of conduct involving the speculative registration of domain names for profit (see only for one special example the comparable registration of the domain name "aqbank.net"). It is a speculator that registers domain names in the hopes that others will seek to buy or licence the domain names from it. This pattern of conduct prevents the Complainant from making bona fide use of the desirable domain name. However, speculation in the registration and use of domain names corresponding to anotherís trademark is an abusive registration and Respondent therefore has registered and used the domain name "bbbank.net" in bad faith.

B. Respondent

The Respondent has not filed a Response and has offered to transfer the name to the Complainant without any condition.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint 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."

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- 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;

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and is being used in bad faith.

The domain name <bbbank.net> is, in the judgment of the Panel, identical to the Complainantís marks.

Likewise, the Panel decides that the Respondent has no rights or legitimate interests in the domain name at issue. The Respondent has never suggested to the contrary.

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name 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 complainantís 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."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Respondent has registered and used the domain name <bbbank.net> in "bad faith" for the following reasons:

(a) The Respondent, about whom very little information is known, appears to be a domain name speculator which registers many names in bulk Ė some of which clearly belong to established marks.

(b) The Respondent has not set up a website.

Futhermore the Respondent has offered to transfer the name to the Complainant.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;

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

(c) That the Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <bbbank.net> be transferred to the Complainant.

 


 

Hon. Sir Ian Barker QC
Sole Panelist

Dated: March 27, 2001