WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Governor and Company of the Bank of Ireland v. Escape Ventures Inc.
Case No. DBIZ2001-00039
1. The Parties
1.1 The Complainant is the Governor and Company of the Bank of Ireland doing business as Bank of Ireland Group. The Complainantís principal place of business is Lower Baggot Street, Dublin 2, Ireland.
1.2 The Respondent is Escape Venture Inc of 4400 N. Scottsdale Rd., Suite 9-332, Scottsdale, AZ 85251, United States of America.
2. The Domain Name and Registrar
The domain name upon which this Complaint is based is <boi.biz> ("Disputed Domain"). The registrar of the domain name as at the date of the Complaint is Intercosmos Media Group d/b/a directNIC.com ("Registrar").
3. Procedural History
3.1 An amended Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by NeuLevel, Inc. and approved by Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("WIPO Supplemental STOP Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center ("Center") via email on December 14, 2001. Pursuant to Paragraph 4(b) of the STOP Rules, the Center notified the Complainant via e-mail on December 21, 2001, of deficiencies in the Complaint. A request for additional time to submit amendment to the Complaint was received by the Center via e-mail from the Complainant on December 27, 2001. The Center granted the request, notifying the Complainant via e-mail on January 3, 2002.
3.3 The amended Complaint was received by the Center via e-mail on January 4, 2002, and in hard copy on January 9, 2002. The fees prescribed under the STOP Rules, the WIPO Supplemental STOP Rules and the STOP Schedule of Fees have been paid by the Complainant.
3.4 The Center sent the Notification of STOP Complaint and Commencement of Administrative Proceeding (including the domain name registrant, administrative contact, technical contact, zone contact and billing contact, as required by Paragraph 2(a) of the STOP rules) on January 11, 2002, to the Respondent by post/courier (with enclosures) and by email (without attachments), and to the Complainantís representative via e-mail with attachments. The Center sent a copy of the Complaint (without attachments) on January 11, 2002, to the ICANN and the Registrar.
3.5 On January 23, 2002, the Respondent filed a request for extension to file a Response. The Center granted the request, notifying the Respondent via e-mail on January 24, 2002. The Complainant notified the Center via e-mail on January 25, 2002, that it consented to the extension request.
3.6 The Respondent filed a Response on February 9, 2002.
3.7 An Acknowledgment of Receipt of Response was sent by the Center to the Respondent and the Complainantís representative via email on February 15, 2002. The parties were notified in the Acknowledgment of Receipt of Response that the Center would proceed to appoint the Administrative Panel.
3.8 Pursuant to Paragraph 6(c) of the STOP Rules, the Center notified the Complainant and Respondent via e-mail of the appointment of the Administrative Panel and that, pursuant to Paragraph 7 of the STOP Rules, the Panelist had submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
3.9 The Center sent a Transmission of Case File to the Panel by email on February 26, 2002. The documentation was received in hard copy by the Panel in Sydney, Australia on March 6, 2002.
3.10 In accordance with Paragraph 4(a) of the STOP Rules, the Center has verified that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules. The Panel has reviewed the Complaint and is satisfied with the Centerís assessment that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
3.11 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information is asserted as fact in the Complaint and remains uncontested.
The Complainant is a limited liability company that was established in Ireland by charter in 1783. The Complainant has headquarters in most major cities including London and New York. The Complainant has offices worldwide including in Canada, United States of America, Jersey, Great Britain, Isle of Man, Northern Ireland, Germany, Japan and Australia.
4.2 The Complainantís trademarks
The following information is asserted as fact in the Complaint and remains uncontested.
The Complainant states that since March 30, 1998, it has been the registered proprietor of the community trademark BOInet (number 785287).
The Complainant states that it is the registered proprietor of the domain name <boi.com>.
4.3 The Complainantís Use of trademarks
The Complaint does not provide details of use by the Complainant of the trademark "BOInet".
The Complainant asserts that it actively uses the domain name <boi.com> to refer to its principal websites.
4.4 Activities of the Respondent
The Respondent asserts that it uses the Disputed Domain to provide a free international Internet business directory. The Respondent asserts that its directory service is an Internet organisational tool that can be categorised as a worldwide public service "by increasing the efficiency of the worldwide web, sorting and fixing a potentially confusing situation caused by a generic domain name and helping a multitude of Internet users find their desired business of choice (even if that choice happens to be the Complainant)".
The Panel has undertaken a search (as authorised by Paragraph 10 of the STOP Rules) of the Respondentís web site <ev.com>. The search undertaken by the Panel has determined that the Respondent asserts that:
- the Respondent is primarily an "Internet incubator" that creates and operates a multitude of new Internet and e-commerce businesses; and
- the Respondent is expanding its Business-To-Business Internet presence via the acquisition of many new ".BIZ" domains.
A search by the Panel of the Respondentís web page determined that the Respondent offers free directory services, supported by advertising, at, amongst others, the Disputed Domain, <ahi.biz>, <cui.biz>, <cwi.biz>, <doi.biz>, <jsi.biz>, <kvi.biz>, <ldi.biz>, <bigbrain.biz>, <bootleg.biz> and <bootlegger.biz>.
5. The Complainantís contentions in the Complaint
5.1 The Complainant asserts that each of the elements specified in Paragraph 4(a) of STOP have been satisfied.
5.2 The Complainant asserts that there is a substantial identity between the Disputed Domain and the Complainantís trademark "BOInet".
5.3 The Complainant asserts that there would be widespread confusion on the part of the public if separate entities were to own the Complainantís domain <boi.com> and the Disputed Domain.
5.4 The Complainant asserts that unless the Respondent sets out full details in its Response "the presumption should be that the Complainant, BOI, should be entitled to registration".
5.5 The Complainant asserts that the Respondent must have been aware of the local and international reputation of the Complainant at the time the Disputed Domain was registered and therefore must have registered the Disputed Domain with a view to taking advantage of the Complainantís trademark rights and reputation.
5.6 The Complainant asserts that unless the Respondent can demonstrate a good reason for registering the Disputed Domain "the presumption should be that the domain name was registered and/or used in bad faith".
6. The Respondentís Contentions in Response
The Respondent asserts that the Complainant has not proven any of the elements of Paragraph 4 of the STOP.
In reference to the element in Paragraph 4(a)(i) of the STOP the Respondent asserts, amongst other things, that:
- the Complainantís trademark "BOInet" is not contained in any way or manner in the Disputed Domain;
- the Complainantís trademark "BOInet" is comprised of 3 uppercase characters and 3 lowercase characters and does not feature a period or dot between the 2 sets of characters;
- the Complainantís domain <boi.com> is not being used to display webpages of its own but rather it is only a redirect to "http://www.bankofireland.ie/html/gws/";
- there are only two "text" usages of "BOI" on the Complainantís website and no graphic logo representations of any of "BOI", "BOInet" or "BOI group";
- the Complainant has "allowed" several other major international banks, including the Bank of India and the Bank of Illinois, to do business and operate for decades under the "BOI" name in the same type of business as the Bank of Ireland Group;
- "BOI" is not distinctive, being solely comprised of 3 common letters of the English alphabet and "BOI" has substantial third party use;
- the 3 characters making the mark are not fanciful and are not a coined term and have not acquired a "secondary world-wide meaning" as described in Creager v. Russ Togs, Inc. (CD Cal. 1982) 218 USPQ 582;
- third party usage of the "BOI" mark is "ridiculously" widespread, with hundreds of firms known worldwide as "BOI" or using "BOI" to identify themselves or their products. The Respondent annexed to its Response numerous examples of entities and trademarks using and containing "BOI";
- the initials "BOI" were in common use worldwide long before "BOInet" was obtained as a trademark by the Complainant. The Respondent cites WIPO Case D2001-0388 (GA Modafine S.A. v. Mani.Com) and states "the term "BOI" is not in and of itself, a trademark of international significance and recognition, such as IBM or AT&T. Neither is the use of the term "BOI" as a trademark solely associated with the Complainant or the products of the Complainant";
- "BOI" has multiple meanings, significance and legitimate uses by many different businesses and individuals worldwide. The Respondent cites examples including a modern slang term for "boy" in the USA and other English speaking countries, a reference to the Celtic "Book of Invasions", a festival and a group of ritualistic dancers in Brazil, the "Boi Valley" in Spain and the "Bay of Islands" in Newfoundland and New Zealand.
In reference to the element in Paragraph 4(a)(ii) of the STOP the Respondent asserts that:
- the Respondent expended a substantial amount of time and money in researching its business listings and in the development of the <boi.biz> logo and web page design;
- the Respondent paid Ballard Dezign US$850.00 for logo and web design and submitted the Disputed Domain to search engines;
- the Respondent is currently using the Disputed Domain in connection with a bona fide offering of goods and services;
- the Disputed Domain website provides a means to enhance the Disputed Domain with updates and corrections to the Respondentís directory listings and has become affiliated with businesses including Amazon.com and the FBIN business organisation; and
- the Respondent did not offer to sell the Disputed Domain to the Complainant at any time.
In reference to the element in Paragraph 4(a)(iii) of the STOP the Respondent asserts that:
- it is not marketing similar products or services as the Bank of Ireland Group and therefore a reasonable person would not be confused between the Respondent and the Complainant;
- if a customer of the Complainant accidentally accesses the Respondentís website by using the Disputed Domain that customer would instantly realise that "banking business was not being conducted" at the site;
- the Respondentís directory service at the Disputed Domain is a worldwide public service increasing the efficiency of the worldwide web and helping Internet users find their desired business of choice including the Complainantís business.
- the Respondent is not in the banking and investment business and is not in competition with the Complainant;
- the Respondent does not use the Disputed Domain to "palm off its international business directory as relating to or being similar to any products or services offered by the Complainant"; and
- the Disputed Domain site contains a legal disclaimer stating that the Respondent is not affiliated with any of the entities named on the site including the Complainant.
7. Discussion and Panel Findings
This section is structured by reference to the elements required by Paragraph 4(a) of the STOP Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
Domain name identical to a trademark or service mark in which the Complainant has rights
The Disputed Domain is <boi.biz>. The Complainant owns registration for the trademark BOInet. It is also the registrant of the domain <boi.com>. BOI as a common law mark is not pressed as the basis for the Complaint and it seems more likely that the Complainant is not known as BOI except in a relatively narrow geographic area since the expression is ambiguous rather than distinctive in most contexts.
The Complainant asserts that "there is a substantial identity between" the Disputed Domain and the Complainantís trademark "BOInet". However, unlike in Paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999, it is not enough that a domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. Under STOP the Disputed Domain must be identical to the trademark or service mark in which the Complainant has rights.
The Complainant asserts it is the proprietor of the gTLD <boi.com>, that it actively uses <boi.com> to refer to its principal websites and that widespread confusion on the part of the public would occur if separate entities were to own the Disputed Domain and <boi.com>. The Respondent asserts that when used together the letters "BOI" are not distinctive, have common meanings and are used by numerous entities to refer to, or in the course of, their businesses, including the Bank of India and the Bank of Illinois. The Panel does not accept the Complainantís unsupported proposition that "widespread confusion on the part of the public" would occur if separate entities were to own the Disputed Domain and <boi.com>. In any case, as stated above, <boi.com> is not identical to the Disputed Domain and it is not sufficient by itself to create in favour of the Complainant a common law right in the mark "BOI".
The Complainant has not demonstrated that it has any rights either at common law or otherwise in the trademark or service mark "BOI". Accordingly, the Panel finds that the Complainant has not proven Paragraph 4(a)(i) of the Policy.
Because of the Panelís finding in respect of Paragraph 4(a)(i) of STOP it is unnecessary for the Panel to discuss in any detail whether the Complainant has proven the elements in Paragraphs 4(a)(ii) and 4(a)(iii) of STOP. Nevertheless, the Panel will briefly address each of those Paragraphs below.
No rights or legitimate interests in respect of the domain name
The Complainant alleges that the Respondent registered the Disputed Domain to take advantage of "the considerable local and international reputation and goodwill of the BOI Group". However, the Complainant does not provide any evidence to support its proposition.
The Respondent asserts that it expended a substantial amount of time and money on researching its business listings, the development of its <boi.biz> logo and the design of its web page. The Respondent asserts that it is using the Disputed Domain in connection with a bona fide offering of goods and services and that it has not offered at any time to sell the Disputed Domain to the Complainant.
As part of its evidence the Respondent annexed a copy of a signed cheque from the Respondent in favour of Ballard Dezign for $850 for <boi.biz> LOGO + WEB DESIGN". The cheque was dated December 25, 2001, and issued by First Union National Bank of Virginia, Virginia Beach, VA. The Respondent asserts that the cheque was given to Ballard Dezign pursuant to a contract under which Ballard Dezign promised to design the Respondentís logo and web design. The date of the cheque (December 25, 2001), is before the date that the Center issued the Notification of STOP Complaint & Commencement of Administrative Proceedings (January 11, 2002).
Although the Panel finds it unusual that the Respondent wrote a cheque on Christmas Day 2001, that the Respondent asserts it paid to the payee, and absent any ability to test the Respondentís assertions, the Panel finds on the evidence presented that the Respondent has demonstrated use or preparations to use the Disputed Domain or a name corresponding to the Disputed Domain in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute.
Pursuant to Paragraph 4(c)(ii) of STOP the Panel finds that the Respondent has rights or legitimate interests in respect of the Disputed Domain and that the Complainant has not proven Paragraph 4(a)(ii) of STOP.
Domain name was registered or is being used in bad faith
The Complainant asserts that the Respondent must have been aware of the local and international reputation of the Complainant at the time that the Disputed Domain was registered and therefore it must have registered the Disputed Domain with a view to taking advantage of the Complainantís trademark rights and reputation.
The Respondent asserts that:
- it is not marketing similar products or services as the Complainant and that a reasonable person would not be confused between the identity of the Respondent and the Complainant;
- there is no evidence that the Respondent attempted to attract the Complainantís customers to the Disputed Domain or to create confusion between the identity of the Respondent and the Complainant;
- the Complainant and Respondent are not competitors;
- the Disputed Domain site contains a legal disclaimer that none of the entities mentioned in the Respondentís directory, including the Complainant, are affiliated with the Respondent.
On the balance of probabilities the Panel finds that the Disputed Domain was neither registered nor being used in bad faith and therefore the Complainant has not proven Paragraph 4(a)(iii) of the STOP.
The Complainant having failed to prove any of the requirements of Paragraph 4(a) of STOP, the Panel dismisses the Complaint. There are no other pending STOP challenges in respect of the Disputed Domain Name, so no ruling is required for the purposes of Paragraph 15(e) of STOP.
Philip N. Argy
Dated: March 17, 2002