WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PBS Privat Bank Schweiz A.G. v. Emek Tuzen
Case No. D2001-1311
1. The Parties
The Complainant is PBS Privat Bank Schweiz A.G., a Swiss corporation with its principal place of business at Zurich, Switzerland. The Complainant is represented by Mr. Manuel Senn of Staiger, Schwald & Roesle, Zurich, Switzerland.
The Respondent is Emek Tuzen of Batikent, Ankara, Turkey. The Respondent is represented by his administrative contact, Mr. Haluk Argun of Cankaya, Ankara, Turkey and by Mr. Marc L. Jordan of Jordan & Tell LLP, Columbia, Maryland, U.S.A.
2. The Domain Name and Registrar
The domain name at issue is <pbsbank.com>. The domain name is registered with Go Daddy Software Inc. of Scottsdale, Arizona, U.S.A. ("the Registrar"). The domain name was registered on July 30, 2001.
3. Procedural History
The Complaint submitted by PBS Privat Bank Schweiz A.G. was received on October 29, 2001, (electronic version) and October 31, 2001, (hard copy) by the World Intellectual Property Organization and Mediation Center ("WIPO Center"). Some minor amendments were made to the Complaint before dispatch to the Respondent.
On November 6, 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 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 Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") was in effect.
Indicate the current status of the domain name.
By email dated November 6, 2001, the Registrar advised WIPO Center as follows:
It had received a copy of the Complaint from the Complainant.
It is the Registrar of the domain name registration <pbsbank.com>.
The Respondent is shown as the "current registrant" of the domain name.
The administrative and technical contact is Haluk Argun.
The UDRP applies to the domain name.
The domain name registration <pbsbank.com> is currently in "registry lock" status.
The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution ("UDRP") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
The advice from the Registrar states that the domain name in question is in "registry lock". The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on November 8, 2001, transmitted by post-courier and by email a notification of the Amended Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Amended Complaint was also emailed to the Registrar and ICANN.
The Complainant elected to have its Complaint resolved by a single Panelist; it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent filed a Response by email on November 16, 2001, and by hard copy of November 21, 2001.
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.
The Panelist duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On November 27, 2001, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by December 11, 2001.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
The Complainant owns the following trademarks in Switzerland:
PBS PRIVATE BANK SWITZERLAND
PBS PRIVAT BANK SCHWEIZ
(Registration Nr. 480390)
PBS BANQUE PRIVÉÉ SUISSE
(Registration Nr. 480391)
(Registration Nr. 480392)
The trademarks are registered (and used) in connection with the following goods and services:
Int. class 16: Printed matters, cheque books; travel checks; banker’s drafts; printed cheques; all such goods of Swiss origin.
Int. class 35: Provision of economic and financial information and of economic forecasting data; provision of statistical data for business purposes with regard to economic and financial topics and provision of services in all such areas; consulting services with regard to economic topics; consulting services with regard to staff administration
Int. class 36: Banking services; tax consulting; consulting services with regard to banking, finance and investment topics;
Int. class 41: Educational services in the field of banking and finance services; investment consulting; publishing of texts of banking finance, economic and investment topics; organization of conferences and other arrangements to such topics.
Int. class 42: Legal consulting; provision of information; consulting services with regard to online client access software solutions to banking services and with regard to the provision of investment services and other services.
The trademarks have been registered with the Swiss Federal Institute for Intellectual Property on July 8, 1999. The registration has been confirmed on January 18, 2001. The Complainant has not yet been provided with the respective registration certificates. The Complainant also owns the domain name <psbank.ch>, which it uses in its business.
The domain name in dispute was originally registered by A&A Actienbank AG, Bahnhofstrasse 92, 8001 Zurich, a former shareholder of the Complainant. When the name’s administrative contact, Mr. Mueller Erkelenz, changed from A&A Actienbank AG to the Complainant, his email account with A&A Actienbank AG was deleted. According to the Complainant, an email notification from the Registrar claiming payment of the renewal fee for the period ending June 22, 2001, was not received by the administrative contact. The domain name was deleted on July 27, 2001, by the Registrar.
On July 30, 2001, the domain name was registered by the Respondent.
On August 2, 2001, the Complainant emailed the Respondent, stating that he owned <pbsbank.com> and that he knew that Complainant would start its complete website in October. The Respondent stated:
"I am a student and if you want this domain also, please, let me know. The price is very cheap, now. Because I need money to travel now (in summer holiday). Please, reply me even if it is negative"
The Complainant replied that it would give the Respondent an answer a week later.
On August 4, 2001, the Complainant received a further email from the Respondent wherein the latter offered to provide programming services to it.
The Complainant emailed the Respondent on August 7, 2001, stating that the domain name was recently owned by A&A Actienbank and that in the process of transferring this domain name from A&A Actienbank to the Complainant obviously "something went wrong". The Complainant asked the Respondent to agree to the transfer of the domain name to the Complainant and offered to cover the costs of such transfer. It pointed out, inter alia, that a private person can hardly justify registration of a name including the word ‘bank’.
The Respondent rejected such request by email dated August 8, 2001. He threatened to sell the domain name to an investment / reseller of domain names called "Invest Co. Ltd. – S. Haluk Argun", presently registered as the administrative and technical contact of the domain name. He asserted that he had registered the name "for business purposes". He was – "and perhaps still am" – planning to use it for a website which will contain "addresses/service price comparisons of different "Private Business Sites".
The Respondent was contacted by a Turkish lawyer acting for the Complainant on August 24, 2001. In an email sent to the Respondent in Turkish language the Respondent was informed of the trademark registrations of the Complainant. The immediate transfer of the domain name to the Complainant was sought. In a further email dated September 18, 2001, the Respondent was asked to contact the lawyer to discuss whether a fair and acceptable solution could be found. No acceptable solution has been found.
5. Parties’ Contentions
The domain name in complaint is confusingly similar to the above-mentioned trademarks owned by the Complainant. The trademarks consist of the acronym "PBS" (which is the characterizing part of the Complainant’s trademarks) and the word "Bank". Three of the Complainant’s trademarks include words meaning ‘private’ and ‘Switzerland’ in three languages. These words are absent from the domain name. The other mark is just "PBS’. The domain name is identical to the domain name <pbsbank.ch> presently owned by the Complainant.
The use of the domain name <pbsbank.com> by the Respondent could cause confusion with regard to the companies standing behind the websites <www.pbsbank.com> and <www.pbsbank.ch>. Any third party could get the impression that the operator of the website <www.pbsbank.com> is somehow related to the Complainant, which is not the case.
The Respondent has no rights or legitimate interests in the domain name.
The fact that the Respondent registered the domain name only 3 days after the expiration of the Complainant’s registration and that the Complainant was offered the domain name by the Respondent only two days later, clearly shows that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the domain name registrant’s out-of-pocket costs. The Respondent does not have a serious intention to operate a website under the domain name in dispute. The announcement presently placed on the website has to be considered as a pro-forma announcement used to disguise a serious and legitimate intention to use the domain name in dispute in such kind of cases. The Respondent’s registration of <pbsbank.com> is a typical example of cyber-squatting.
Complainant does not allege that it has any rights in the mark "PBSBANK". This mark has not been registered, nor has registration been sought. The term "bank" is generic and Complainant offers no evidence that the mark "PBSBANK" has acquired a secondary meaning such that consumers identify the mark with goods or services provided by Complainant.
Of the four proffered marks, only "PBS" constitutes part of the disputed domain. The mark "PBS" is registered in the United States to a different entity, ie Public Broadcasting Service Corporation, 1320 Braddock Place, Alexandria, Virginia,U.S.A. A TESS search indicates that there are 169 records incorporating "pbs" in a United States trademark registration or application.
A print-out from the site <namedroppers.com>, shows the results of a search of the term "pbs" among domain names on the Internet. The exhibit notes that there are 1,494 registered domain names containing the term "pbs". The exhibit shows that the domain <pbs.org> is registered to the Public Broadcasting System. The domain <pbs.com> is registered to Publishing Business Systems. None of these entitles are related to Complainant. Given the large difference in population between the United States and Switzerland, it is unlikely that most Internet users will associate domains with the letters "pbs" as identifying Complainant’s products or services, rather than those associated with the Public Broadcasting Service, or another entity.
Thus, this is not a case, as Complainant contends, where a famous or strongly distinctive mark has been paired with generic suffixes or prefixes. It resembles Micron Technology, Inc. v ThisDomainsForSale, WIPO Case No. D2001-0712 (July 24, 2001), where the owner of the mark "MICRON" sought the transfer of the domain <microncommunications.com>. The Panel noted, in refusing an order the transfer, that "[i]t is incontrovertible that there are other companies, business, and organisations, which will appropriately use the word ‘MICRON’ in their names". Similarly, in this case, it is just as incontrovertible that there are other companies, businesses, and organizations which will appropriately use the letters "pbs" in their names. See also Virgin Enterprises Limited v Internet Domains, involving the domain <virginmail.com>, WIPO Case No. D2001-1008 (October 16, 2001).
Neither the term "pbs" nor the term "bank" is a term to which Complainant can assert exclusive rights. Putting the two words together does not give it greater rights absent a trademark registration or secondary meaning. Therefore, the domain <pbsbank.com> is not confusingly similar to a mark in which Complainant has rights.
Respondent is a web designer and developer. As such, he registers domain names which he thinks he can develop into profitable sites. An email from Respondent to Complainant stated, among other things, that Respondent "was – and perhaps still am – planning to use [the domain] for a website I will prepare, which will contain names and addresses/service price comparisons of different "Private Business Sites".
A decision in Complainant’s favor discourages all web designers from developing sites, since they run the risk that a third party – even someone like Complainant who has no trademark or service mark rights in a disputed domain name – will challenge their ownership and reduce their investment to zero.
The domain name <pbsbank.com> became available and entered the public domain after Complainant did not renew its registration. Although it claims inadvertence, there is no way this claim can be proven in these summary proceedings. Moreover, Complainant does not contend that Respondent knew that Complainant’s release of the name was unintentional. Complainant admits that the name was available for 3 days before Respondent registered it. In these circumstances, Respondent cannot be charged with having acted in bad faith.
Respondent had no way of knowing that the non-renewal of the registration was unintentional. As noted above, there are over 1,400 websites using some variation of "pbs" in their domains. The <pbs.com> domain may have value for many of those registrants, as it does for Respondent. Allowing Complainant to recover a lapsed registration in these circumstances would be inequitable and disruptive of the efficient working of the Internet, especially since Respondent has incurred substantial expense and expended substantial amounts of time in connection with the acquisition of the domain.
Complainant’s contention that Respondent acquired the name in bad faith because it was subsequently offered to Complainant for sale is insufficient to establish bad faith. As has been noted by other panels, "the domain name must be registered primarily for the purpose of selling it to the owner of the trademark for an amount in excess of out-of-pocket expenses". See CBS Broadcasting, Inc. v Worldwide Webs, Inc., WIPO Case D2000-0834 (September 4, 2000). That Respondent did not acquire the name primarily for sale to Complainant is evidenced by the fact that the domain may be of value to innumerable other businesses.
The contention that Respondent intends to disrupt Complainant’s business or that it intends to create a likelihood of confusion with Complainant’s products is meaningless, since Respondent is not marketing any goods or services at the site. (Given the regulatory restrictions on banking in every country, Respondent could not possibly offer any products or services that compete with Complainant’s.)
Similarly, given the multitude of domains under which Complainant already does business, and given the numerous domains using "pbs" as part of the name, there is no possibility that Respondent could disrupt Complainant’s business, or attract for commercial gain Internet users to its website.
In this case, given that Complainant has no rights in the mark "PBSBANK", Respondent’s vocation as a web designer and developer, and the large number of entities that may be interested in the domain <pbsbank.com>, there is no basis for any finding of bad faith.
Respondent is a web designer and developer who had in mind several possible uses for the domain <pbsbank.com> when he noticed its availability through an authorized registrar. Respondent is not a traditional cyber-squatter who registers multiple domain names, multiple variations of Complainant’s mark. He has never sold another domain name. Nor does Complainant allege that Respondent operates a business of marketing domain names, or that he has hyperlinked his domain name to any of Complainant’s websites.
Complainant had not developed a site under the domain <pbsbank.com> and allowed the registration to expire. Complainant alleges that its failure to renew was inadvertent, but under any rule of legal responsibility it must be considered as Complainant’s intentional act. There is a highly competitive market for domain names and domain names have value. Complainant is asserting that it has perpetual rights in the domain name <pbsbank.com>, regardless of whether it has intellectual property rights in the mark or whether or not it elects to pay a registration renewal fee. In any balancing of the equities, Complainant’s negligence, the potential disruption to the markets, and the availability of other options to Complainant, all weigh in favor of denying Complainant the relief it seeks.
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 legitimate rights or interests in respect of the domain name; and
- The domain name has been registered and used in bad faith.
The Panel considers that the domain name is confusingly similar to the Complainant’s registered marks. If the mark had been ‘pbs’ solely, then there could be an argument that it was simply a generic combination of letters. However, it is the addition of the word ‘bank’ in the domain name that would automatically direct the Internet user to a banking organisation which is known by the letters ‘pbs’ and by further words indicating a Swiss private bank. As the Respondent quite rightly pointed out in his Response, there are regulatory restrictions on banking in every country. Consequently, any user would infer from the name <pbsbank.com> that he/she would be accessing a site that offered banking services. Any other suggestion, such as that ‘pbs’ is an abbreviation for "private business sites", is fanciful because of the addition of the word ‘bank’ in the domain name. A disputed domain name which consists of the Complainant’s mark plus the addition of a descriptive word linked to the services that the Complainant markets can be confusingly similar to a mark. See Harrods Ltd v AB Kohler & Co – WIPO Case No. D2001-0544 (decision July 3, 2001), over the names <harrodswatch.com> and <harrodsjewellery.com>. The cases cited by Respondent are easily distinguished for this reason.
The fact that there may be other trademarks and domain names incorporating the letters ‘pbs’ is irrelevant. It is the juxtaposition of the word ‘bank’ with these letters which changes the whole complexion of the domain name from being one depicting anything at all to one connected with a banking institution.
Nor has the Respondent demonstrated any legitimate rights or interests in respect of the domain name. Complainant gave him none. He has offered no proof of any preparation to develop a website of his own. In fact, he asked the Complainant if it would like him to develop one. One has to wonder why, if he was developing a legitimate site for himself – nothing to do with the Complainant – he would be asking the Complainant if it wanted to avail itself of his services. Lack of development of a website has often been taken in WIPO decisions as indicating both lack of legitimacy and bad faith.
The Panel considers that the Respondent has registered and is using the name in bad faith because of the following:
(a) His decision to acquire a name which incorporated the word ‘bank’ appears highly opportunistic. As he himself stated in the Response, every country has regulations about banks. A domain name containing the word which happens to come on the market may well have had an association with a bank – as this one did.
(b) His offer to sell because he was an impecunious student and needed the money for travel points to acquisition of the domain name for the purpose of selling it to the rightful owner at a profit. There was no suggestion of his wanting to develop a website in this first communication. His threat to sell to an ‘investment’ reseller of domain names confirmed this attitude of wanting financial gain, as did his rejection of an approach to him in his own language by a Turkish lawyer.
(c) His assertion that this particular domain name may be of use to other businesses is just not credible. If he wanted to compile a list of private business sites, he could have thought up a variety of unexceptionable domain names which would have reflected that initiative. The sheer breadth of the expression ‘private business sites’ without any categorization into kinds of businesses, augments the general aura of incredulity surrounding his assertions in this regard.
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is 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) The Respondent’s 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 <pbsbank.com> be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: December 5, 2001