WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banque Worms v. FW
Case No. D2002-0418
1. The Parties
The Complainant in this administrative proceeding is BANQUE WORMS, 1 place des Degrés, Tour Voltaire, La Défense, F-92800 Puteaux, France.
The Respondent is FW, Spencer, Steven, 32 Plymyard Ave, Bromborough, Wirral, Chester, Cheshire CH62 6BN, United Kingdom.
2. The Domain Name and Registrar
The domain name in dispute is <banqueworms.com>.
The Registrar with which the domain name is registered is Tucows Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint on May 2, 2002, by e-mail and on May 6, 2002 in hardcopy. An amendment to the Complaint was filed on May 3, 2002. The Center had acknowledged receipt thereof on May 7, 2002.
On May 7 and 15, 2002 the Center sent the corresponding Request for Registrar Verification in connection with this case to Tucows Inc. On May 15, 2002 the Registrar's verification response confirmed that the Registrant was FW and that the domain name <banqueworms.com> was in "locked" status.
On May 23, 2002 after having verified whether the Complaint was satisfying the formal requirements, the Center notified the Commencement of Administrative Proceeding to the Parties, in accordance with Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
In the meantime, on May 15, 2002, the Respondent had inquired with the Center whether the matter was taken up by the WIPO and asked about the further course of action. The Center forwarded a reply to the Respondent the following day.
On June 11, 2002 the Respondent forwarded its response. The Center requested the Respondent on that same day whether this was its official response. The Respondent answered affirmatively on that same day.
On June 12, 2002 the Center issued by e-mail the Acknowledgement of Receipt of the Response and the Notification of the Response to the Complainant on June 12, 2002.
On July 3, 2002 the Center proceeded with the appointment of the Administrative Panel pursuant to Paragraph 6 of the Rules and advised the Parties of the appointment of the undersigned as sole panelist in accordance with Paragraph 6(f) of said Rules, after the latter had signed and forwarded to the Center on July 2, 2002 a statement of acceptance and declared his impartiality and independence in this matter.
Transmission of the file to the Sole Panelist was made on July 3, 2002 by e-mail and registered post, hard copy of which was received by the undersigned a few days later.
The Sole Panelist forwarded his decision to the Center within the time limit fixed.
4. Factual Background
The Complainant is the owner of 33 trademarks including the term « BANQUE WORMS » and particularly the following trademarks :
- BANQUE WORMS n°1 272 532, French trademark, that has been filed on May 14, 1984;
- BANQUE WORMS n°99 769 986, French trademark, that has been filed on January 20, 1999;
- BANQUE WORMS n°490 696, international trademark, that has been registered on November 14, 1984, and that aims Germany, Benelux, Spain, Italy and Monaco;
- BANQUE WORMS n°613 740, international trademark, that has been registered on February 10, 1994, and that aims China, Liechtenstein, Poland, Czech Republic, San Marino, Slovakia, Switzerland, and Vietnam;
- BANQUE WORMS ACCESS n°740 690, international trademark, that has been registered on August 11, 2000, and that aims 10 countries including United-Kingdom;
- BANQUE WORMS @CCESS n°740 542, international trademark, that has been registered on August 11, 2000, and that aims 10 countries including United-Kingdom.
National trademarks have also been filed in Australia, Canada, Chile, Denmark, Finland, Greece, Hong-Kong, India, Indonesia, Japan, Malaysia, Norway, New Zealand, Portugal, Singapore, Sweden, Thailand, Turkey and United States (Complaint's Annexes 17 to 22).
The Respondent registered the domain name <banqueworms.com> on February 2, 2000.
5. Parties’ Contentions
The Complainant essentially submits the following.
(i) The domain name <banqueworms.com> is identical or confusingly similar to the trademarks in which the Complainant has rights.
Indeed, the domain name <banqueworms.com> reproduces French trademarks BANQUE WORMS n°1 272 532 and BANQUE WORMS n°99 769 986 as well as international trademarks BANQUE WORMS n°490 696 BANQUE WORMS n°613 740 that are especially protected for business, advertising (class 35) and banking ( class 36); moreover, it reproduces distinctive part of international trademarks BANQUE WORMS ACCESS n°740 690 and BANQUE WORMS @CCESS n°740 542 in such a way that people could think that <banqueworms.com> is Banque Worms’ domain name and website.
(ii) The Respondent has no rights or legitimate interests with respect to the domain name.
In fact the Respondent has no legitimate interest in warehousing the domain name in dispute and has failed to respond to Complainant’s fair claim in the disputed domain name.
(iii) The domain name was registered and is being used in bad faith.
The Respondent's bad faith follows from circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling it to the Complainant for a considerable sum of money. In a e-mail dated February 23, 2001, the Respondent wrote to the Complainant that he was open to discussion whether Banque Worms wanted to make an offer but when the latter offered to refund registration charges, the former refused this proposal under pretext that development’s website (i.e. a "worm" game) involved considerable expenses (Complainant's Annex 26); all this argumentation was wrong and was lead to misconduct the Complainant in order to obtain from it money. As a matter of fact, worm game does not exist and ever did as <banqueworms.com> website is a directory online website, divided in sections such as "business" or "finance" that give access to banking sites, but in which Banque Worms is not mentioned (Complainant's Annex 33).
The Respondent's bad faith also follows from the fact that the domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and the domain name registrant has engaged in a pattern of such conduct. The Respondent is using <banqueworms.com> in bad faith, as evidenced by Respondent’s having registered other domain names which are identical or confusingly similar to famous and/or well-known marks such as :
- <bundesbank.net>, registered on January 26, 2000, by the Respondent;
- <banknegara.net>, which corresponds to Malaysian central bank business name and that has been registered on January 28, 2000, in the name of the Respondent;
- <europeancommission.net>, registered on January 28, 2000, in the name of the Respondent;
- <cortesdeingles.com>, confusingly similar to Spanish chain store Cortes Ingles, registered on February 18, 2000, in the name of the Respondent;
- <voda-map.com> and <vodainfo.com>, registered on September 9, 2001, in the name of Dotcodesigns and which are confusingly similar to Vodafone which is the largest mobile telecommunication network company in the world (Complainant's Annex 34).
The Respondent’s bad faith also follows from circumstances demonstrating that by using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on the registrant’s web site or location. By using <banqueworms.com> to give access to a directory online with financial and business sections, the Respondent intentionally uses the Complainant's notoriety in banking domain to create a confusion between Banque Worms trademarks, protected for financial affairs, and the Respondent website.
The bad faith of the Respondent is also reported even if the website corresponding to the disputed domain name gives an access to another website, because it’s a way of using the domain name by keeping it and preventing the legitimate owner of the trademarks from enjoying of its use.
The Respondent, in its response dated July 2, 2002, does not dispute the Complainant's offer to buy the domain name at stake but points out that Banque Worms never asked it to justify its claim for expenses. The only offer made was to refund the domain registration costs.
It further submits that the Complainant wrongly assumes that the Respondent has registered several well known names, amongst the many (dozens of) other unknown domain names it owns, solely for profit. The Respondent states that it never sold or even attempted to sell any of the domain names that it registered.
The Respondent believes that, at that time, there was nothing wrong in purchasing some known domain names; however since then the law has changed slightly and consequently it "would not hesitate to return any or all of them if requested".
The Respondent also declares that it had no knowledge of the existence of a Banque Worms "… a small regional French bank with no branches in the UK".
Furthermore it rejects the claim that it is trying to sell the domain name based upon the contents of the hosting page. This is the default hosting page for any domain registered with DomainMonger.com and as such it is beyond its control what is put in this "parking" page.
The Respondent explains that the name " Banque Worms " was chosen because it was unable to use the English term for bank owing to severe restrictions on using the word "Bank" in the United Kingdom; it felt that the French word for bank was more suitable and would be easily recognizable to promote its "worms" game.
Moreover the Respondent denies having approached Banque Worms to ask for a profit but, instead, tried to cooperate in resolving this matter. It points out that it has delayed developing the site at the request of the Complainant's lawyer which, despite its own efforts, seem wholly uninterested in settling this matter amicably.
Finally, the Respondent notes that "Banque Worms" was registered as a trademark in the United Kingdom after it registered the domain name.
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy") sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.
The Administrative Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.
The administrative proceedings that are instituted under the ICANN Policy, Rules and Supplemental Rules are not opening a forum for adjudicating intricate questions of law under a given municipal; on the contrary they aim at eliminating various forms of flagrant misuses of the principle "first come first serve" for domain names registration. (see WIPO Case No. D2000-0450, Mutuelle d'Assurance du Corps de Santé Français v. SA CHA REBK LLC, p. 3).
A. Identity or Confusing Similarity
There is no doubt that there is identity between the Complainant's trademark "BANQUE WORMS" and the domain name <banqueworms.com>.
The Complainant has also established its rights in trademarks "BANQUE WORMS" with various registrations for such a name (see Complainant's Annexes 17 to 22).
The Respondent has submitted, however, that the domain name <banqueworms.com> was registered prior to the registration of the "Banque Worms" trademark in the United Kingdom.
The domain names are assigned on a first come first served basis. Some exceptions are provided to this rule of priority in time, for example concerning the protection of well-known trademarks or the registration in bad faith.
To some extent and contrary to the Respondent's opinion, BANQUE WORMS may be deemed to be a well-known trademark since, in the Sole Panelist’s view, the Complainant has established that the trademarks "BANQUE WORMS" have been known worldwide for a significant period of time (see Complainant's Annexes 3 to 16 and 17 to 22).
According to the general rule of Article 16 para. 1 TRIPS, the trademark is protected only against its use by the Respondent for products or services identical or similar to those in respect of which the mark is registered and where there is a likelihood of confusion; this likelihood is presumed only where both the mark and the goods or services are identical (see WIPO Case No. D2000-0450, cited above, p. 2 and references).
As rightly pointed out by the Complainant in its Complaint the domain name <banqueworms.com> reproduces French trademarks BANQUE WORMS n°1 272 532 and BANQUE WORMS n°99 769 986, as well as international trademarks BANQUE WORMS n°490 696 BANQUE WORMS n°613 740 (Complainant's Annexes 17 to 20) that are especially protected for business, advertising (Class 35) and banking (Class 36); moreover, it reproduces distinctive part of international trademarks BANQUE WORMS ACCESS n°740 690 and BANQUE WORMS @CCESS n°740 542 in such a way that people could think that <banqueworms.com> is "Banque Worms" domain name and website (Complainant's Annexes 21 and 22).
In addition, as an online directory website <banqueworms.com> redirects, among others, to banking and business sites under headings "Finance" or "Business" (see Complainant's Annex 32) the products of which are competing with those of the Complainant. The Respondent's submission that the welcome page is only a "parking" page does not alter this conclusion. Clearly and from an objective point of view competition exits between the Parties so as to create a risk of confusion in the mind of the consumers and protection should therefore be granted to the Complainant.
Moreover, the Respondent's bad faith behavior is evidenced as examined below.
B. Rights or Legitimate Interests of the Respondent
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.
The Respondent, in its response to the Complaint, has not invoked, as such, any of the circumstances, which could demonstrate, pursuant to Paragraph 4 (c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute.
Should be, however, considered the Respondent's assertion that it was in the course of promoting on the Web its "worms" game, such a contention is not convincing in the Sole Panelist's opinion and is wholly unsubstantiated.
As a matter of fact, the Respondent itself admitted, as mentioned above, that "since […] the law has changed slightly and consequently it would not hesitate to return any or all of them if requested"; the Respondent only limits itself to put the blame on the Complainant which "despite its own efforts, seem[s] wholly uninterested in settling this matter amicably" whilst the evidence submitted in this matter demonstrates the contrary.
C. Registration and Use in Bad Faith
Paragraph 4 (b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of 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 complainant's 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.
The Complainant invokes the provisions of Paragraph 4 (b) (i), (ii) and (iv) of the Policy so as to describe the Respondent's bad faith conduct in the registration and use of <banqueworms.com>.
The Complainant has demonstrated that the Respondent has registered domain names containing well-trade marks of third parties (see Complainant's Annex 33).
Numerous decisions have determined that this amounts to unambiguous evidence of registration and use of a domain name in bad faith within the meaning of Paragraph 4 (b) (ii) of the Policy (e.g. WIPO Case No. D2000-1207, Fortnum & Mason PLC v Corporate Business Sales Limited., p. 8; WIPO Case No. D2000-0636, National Westminster Bank PLC v. Purge I.T. and Purge I.T. Ltd., p. 4; WIPO Case No. D2000-0501, Hunton & Williams v. American Distribution Systems, Inc. et al., p. 8). Whether the Respondent has attempted to sell or not those other domain names is not relevant for the purpose of Paragraph 4 (b) (ii) of the Policy.
The Respondent's pattern of conduct falls therefore under these provisions and, as result, bad faith is given in the instant case without the need to examine further the others grounds provided for by the Policy.
The Respondent's bad faith is, in any case, also evidenced by its behavior throughout the exchange of correspondence that took place between the Parties : on one hand the Respondent declared its readiness to discuss the transfer of the domain name in dispute whilst, on the other hand, it delayed itself such a process in raising all kind of unsubstantiated and not convincing arguments (see Complainant's Annexes 25 to 30). This pattern of conduct amounts to bad faith within the general meaning of Paragraph 4 (b) of the Policy.
Transfer of <banqueworms.com> in favor of the Complainant shall therefore be ordered.
In light of the foregoing, the Sole Panelist decides that the domain name registered by the Respondent is identical to the corresponding trademarks of the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name in issue has been registered and is being used in bad faith by the Respondent.
Accordingly, pursuant to Paragraph 4 (i) of the Rules, the Sole Panelist requires that the registration of the domain name <banqueworms.com> shall be transferred to the Complainant.
Dated: July 12, 2002