WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IKB Deutsche Industriebank AG v. Bob Larkin
Case No. D2002-0420
1. The Parties
The Complainant is IKB AG, Wihelm-Bötzkes-Str. 1, 40474 Düsseldorf, Germany. The Complainant is represented by Dr. Axel Frhr. von dem Bussche of Attorneys-at-law Wessing, Düsseldorf, Germany.
The Respondent is Bob Larkin, c/o New Way, PO Box 269, Worcester, Worcester WR1 1ZG, Great Britain, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name is <ikb.com>.
The Registrar with which the disputed domain name is registered is Tucows, Inc., 96 Mowat Avenue, Toronto, Ontario, M6K 3M1, Canada.
3. Procedural History
On May 2, 2002, a Complaint was received via email by the WIPO Arbitration and Mediation Center ("the Center") for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999. The hard copy version was received on May 8, 2002.
On May 7, 2002, the Registrar responded to a request for verification of the disputed domain name, confirming:
h details of the Respondent;
h that the disputed domain name was registered with the Registrar;
h that the Policy applied to the disputed domain name;
h that the Respondent was the current registrant of the disputed domain name;
h that the language of the Agreement was English;
h that the status of the disputed domain name was "Registrar Lock" to ensure that no changes occurred to the ownership or Registrar for the duration of the dispute.
The Registrar also noted that:
(a) It had not received a copy of the Complaint; and
(b) The disputed domain name was due to expire on July 11, 2002. The Registrar cautioned that if the registration of the disputed domain lapsed, it may become available for (re) registration before the dispute was decided.
On May 13, 2002, the Center transmitted a Notification of Complaint Deficiency to the Complainant on the basis that the Registrar was incorrectly recorded in the Complaint. On the same day, the Center received an Amended Complaint (hereafter referred to as "the Complaint") incorporating the correct Registrar details.
On May 14, 2002, the Center transmitted a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. The Respondent was advised that a Response to the Complaint was required within 20 calendar days i.e. by June 3, 2002. The Center subsequently granted an extension of time for the filing of a Response as a result of a delay in the Respondent receiving the Complaint. The new deadline for a Response was June 7, 2002.
On June 6, 2002, the Center received the Response via email. The hardcopy version was received on June 13, 2002.
On July 10, 2002, the Center appointed a three member Administration Panel. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
The Panel has independently determined and agrees with the assessment of the 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.
4. Factual Background
The Complainant states that it is a specialist in the field of long-term finance and is the only nationally operating bank in Germany whose range of services is directed specifically at entrepreneurs and enterprises.
The Complainant was founded in 1924, when it was known as Bank für Industrieobligationen. The Complainant states that today it is a trusted partner of established medium-sized enterprises, as well as of innovative young companies and investors in commercial real estate.
The Complainant has 12 locations in Germany and abroad, and a global staff of more than 1,300. It states that it has a presence in Paris, London, Hong Kong and New York.
The services offered by the Complainant range from long-term export finance and the financing of foreign investment and industrial project finance, through to European Acquisition Finance. The Complainant states that it offers a broad array of services such as market and commercial viability analyses, as well as the structuring of projects. It states that it draws on all forms of country-specific and supranational development funding.
The Complainant is the registered proprietor of the following trademarks:
h Community trademark IKB registered in class 36 on February 23, 1999, in respect of banking, financial affairs, business consultancy, real estate affairs. .
h Community trademark IKB DEUTSCHE INDUSTRIE BANK registered in class 36 on February 23, 1999, in respect of banking, financial affairs, business consultancy, real estate affairs.
h German trademark IKB DEUTSCHE INDUSTRIE BANK. This trademark was registered on August 2, 1994.
The Complainant also owns the following domain names:
The Respondent states that he is a qualified Software Engineer (Physics/Computer Science BSc). He states that previously he was involved in contracts for the aerospace industry, and has now developed and formulated a number of ideas for "leading edge Internet infrastructure products." These products are based on Java beans JDK 1.2.2 using the Swing GUI (Graphic User Interface) front-end that allows "sophisticated web-enabled applications."
Registration of the disputed domain name
The Respondent registered the disputed domain name on July 12, 1996.
On August 2, 2000, the Complainant sent an email to the Respondent, stating:
"We would like to use the domain ikb.com for our business belongings.
I think this should be an easy decision for you, since you did not really use it in the past months and according to our investigations your company (or the one that is registered with nsi) is no longer existent. The shortcut ikb is a registered trademark of my company, IKB Deutsche Industriebank AG.
Please contact me as soon as possible to discuss a "small" solution of this domain dispute."
On August 7, 2000, the Respondent replied to this email stating:
"The company does exist, correspondence can be sent to the NSI address. The investigations are incorrect.
Contact is normally via email (response a couple of days), the telephone number is out of date and I shall notify NSI.
The domain IKB is in use and will be developed fully when our main product which has taken several years of software development comes on-line in the next couple of months.
I note that you have the web domain ikb.de which is concerned with banking.
ikb.com is concerned with internet software infrastructure products, so there will be obviously no conflict of interests."
On November 26, 2001, the Complainant sent a further letter to the Respondent, demanding a transfer of the disputed domain name by December 15, 2001. The Complainant also noted in this letter that the only use of the disputed domain name since its previous correspondence with the Respondent was the establishment of a simple home page at the site.
The Respondent states that he did not receive this letter until the end of January 2002, as it was incorrectly addressed.
On February 4, 2002, the Respondent sent an email to the Complainant, explaining the reason for the delay in using the disputed domain name as follows:
"We would like to point out that there has been a massive down turn in the "dotcom" economy. This is the reason for the delay in "fully developing" ikb.com web site at present. Further more there are no time limits specified on using domain names or their uses by their owners.
For your information we are currently negotiating terms with another party."
On February 5, 2002, the Complainantís counsel sent a letter to the Respondent requesting a transfer of the disputed domain name within two weeks. The Respondent replied to this letter on the same day, reiterating his earlier claims and stating that he had considered his position to have been accepted by the Complainant in August 2000 as it did not pursue the matter further at that time.
5. Partiesí Contentions
A. The Complainant
The Complainant contends that the disputed domain name is identical to its registered trademark IKB and is confusingly similar to its registered trademark IKB DEUTSCHEINDUSTRIE BANK.
The Complainant alleges that the Respondent has no rights or legitimate interest in respect of the disputed domain name for the following reasons:
(a) Respondent registered the disputed domain name on July 12, 1996. Four years later the website was still blank. Following an email from the Complainant on August 2, 2000, the Respondent placed the statement "IKB INVESTMENTS COMPANY HOME PAGE" on the website, without any further information;
(b) On November 26, 2001, when the Complainant again contacted the Respondent, there had been no further development of the website Ė despite a statement by the Respondent to the contrary;
(c) The Respondent does not use the disputed domain name to offer any goods or services and it is unlikely that the Respondent has been commonly known by the disputed domain name, because neither the Respondentís name nor his "pretended business" have a connection with the domain <ikb.com>;
(d) The Respondent has not made any use of the disputed domain name since its registration nearly six years ago.
The Complainant also contends that the Respondent registered the domain name in bad faith. It points out that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction falls within the concept. It points to the principle that if the Respondent fails to make good faith use of a domain name for a substantial period of time, it may be inferred that the domain name was registered without a bona fide intent to make good faith use of the domain name.
The Complainant alleges that the Respondent is not planning any further development of the website. It bases this contention on the Respondentís statement in his email of February 4, 2002:
"For your information we are currently negotiating terms with another party."
The Complainant understood this statement to mean that the Respondent was already in negotiation with a third party for a transfer of the disputed domain name.
B. The Respondent
The Respondent accepts the disputed domain name is identical to the Complainantís registered trademark IKB. However, he submits that the Complainant cannot rely on this trademark as it was not registered at the time the Respondent registered the disputed domain name on July 12, 1996.
The Respondent points out that at the time he registered the disputed domain name in 1996, the trademark IKB had been registered in Germany, where the Complainant is located. However, this trademark was registered not by the Complainant but by an international company, IKB Industries Ltd, Lagos. The Complainant obtained a Community trademark registration for the mark IKB in 1999, almost three years after the Respondent registered the disputed domain name, but has never registered the trademark IKB in Germany.
The Respondent alleges that the Complainant is known as "IKB Deutsche Industrie Bank", not IKB. This is what appears on the Complainantís letterhead. The Respondent claims that there could be no confusion between IKB DEUTSCHE INDUSTRIEBANK and the domain name <ikb.com>.
The Respondent states that the Complainant is not widely known in Europe or worldwide and that according to Die Welt (German Financial Press) the Complainant ranks in the lower quartile of 50 German national banks in 1999-2000. He claims that a search on the first-ranked bank (Deutsche Bank) on the BBC News search engine resulted in 4,500 hits, while a search for "IKB" resulted in zero hits.
The Respondent also pointed out that there are numerous domain name registrations incorporating or consisting of the term "IKB" registered by parties other than the Complainant. These include:
The Respondent claims that he had "a pre-named company IKB Investments Limited", which was formed in 1997. Annexed to the Response was a letter from a firm of solicitors confirming that the firm had acted for IKB Investments Limited in 1997 regarding the potential purchase of property and that instructions were received via Mr. Larkin.
In support of his contention that he has legitimate rights in the disputed domain name, the Respondent claims that he registered the disputed domain name as an acronym for the term "information knowledge base", which he claims is an accepted software term. The Respondent states that he had the option to register the domain name <ikb.co.uk>, but selected the .com domain for the US market.
The Respondent states that he has developed a software application called "IKB" for the US gaming/media market. He states that the project was financed primarily through his own funds, with additional venture capital from an investor. The Respondent annexed an email from his investor dated June 6, 2002, which states:
"(1) Prior to 2000 Bob Larkin was involved in an enterprise known as IKB Investments which began researching & evaluating an idea for a software information product for the gaming & media industry.
(2) Since the mid 1990s to my knowledge he has held ikb.com which he has used as part of the continual development of the product & associated ideas.
(3) I have seen 5 evaluation trials on the website ikb.com during the period 1998 Ė 2000 (Feb). (I will have to refer to my back diaries for exact dates.) This indicated and gave me a view of the complex level of code being produced for the product.
Since October 1997 I have invested in the scheme Ö
To avoid any claim that I do not exist I have instructed payment today for a 3-man panel via bank transfer."
The Respondent states that he developed an extensive amount of programming code for the IKB product. The code consists of 212 Java class files based on 418 Java source files. He states that each class averages 200 lines and he has coded approximately 80,000 lines in total, including a Macromedia Flash version, which he states is not yet fully available for end users.
The Respondent states that throughout the development period, he has used the disputed domain name for emails, evaluation testing and demonstrations. He acknowledges that on occasions, however, the site was blank.
The Respondent states that he was approached on a number of occasions to display third party advertisements on the website, but declined as he did not wish to be associated with "spurious advertising". He admits that while it might have appeared that there was little activity on the site over the past six years, most of the work was behind the scenes.
The Respondent states that he is intending to patent his IKB software, and is therefore unable to provide specific details due to commercial confidentiality. He also states that he has been unable to make the software visible on the <ikb.com> website because of the existence of sophisticated Java decompilers. The Respondent further states that the IKB product can only be made available to end-users once patent protection is in place.
The Respondent claims that he did, however, keep a contemporaneous diary with notes regarding the development of the IKB software product. A diary extract referring to the IKB product dated August 18/19, 1999, was annexed to the Response.
Also, in February 2000, the Respondent approached law firm Sidley Austin. The Respondent states that he attended a meeting on February 2, 2000, at which matters relating to trademark classes for software and gaming in the US and further venture capital were discussed. The Respondent states that he was not made aware of any problem with the disputed domain name.
The Respondent states that he sent instructions to Sidley Austin in April 2000 - some months prior to his first contact with the Complainant - to arrange for trademark applications to be filed in specific classes.
The Respondent also annexed to the Response a design logo prepared in respect of the Respondentís IKB product. This logo has not been used.
The Respondent explained the reason for the delay in developing the IKB software (and making full use of the website at <ikb.com>) on the following grounds:
(a) The drying up of venture capital for Internet development at this time. He referred to the comment in WIPO Case No. D2000-1001 Physik Instrumente GmbH & Co v Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited:
"Respondents anticipated that they would experience difficulties raising finance due to the general difficulties faced by Internet start ups looking to raise finance in early 2000."
(b) The dramatic change in Microsoftís policy to Java. Instead of being able to rely on there being a fully Swing (Graphic front-end) enabled JVM (Java Virtual Machine) on every userís machine, it now means that the JVM/Swing JAR files will now have to be downloaded with the associated applet files. Due to large file size, this will only become practicable when broadband becomes commonplace. This restriction has resulted in altered plans with the Respondent currently involved in a Flash version of the IKB software.
The Respondent states that he has shown demonstrable preparation to use the disputed domain name by virtue of the sheer volume of software coded for his business idea. He states that his meeting with Sidley Austin also demonstrates prior bona fide intention and preparation to use the disputed domain name.
The Respondent also claims that he has been commonly known by the disputed domain name via his company, IKB Investments Limited, which was formed prior to any contact by the Complainant. The Respondent also alleges that he has made some use of the disputed domain name over the last six years and that there has been no inactivity on his part.
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 names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
∙ That the Respondents have no rights or legitimate interests in respect of the domain names; and
∙ That the domain names have been registered and are being used by the Respondents in bad faith.
Domain names are confusingly similar or identical to a trademark or service mark in which the Complainant has rights
The Complainant is the registered owner of the Community trademarks IKB and IKB DEUTSCHE INDUSTRIEBANK. It has also registered the trademark IKB DEUTSCHE INDUSTRIEBANK in Germany.
The disputed domain name is identical to the Complainantís registered trademark IKB. However, as the Respondent notes, this trademark was not registered until after the registration of the disputed domain name. While the Policy applies to both registered and unregistered trademarks, the Panel is not satisfied on the evidence that the Complainant had rights in the mark "IKB" (on its own) at the time of registration of the disputed domain name in July 1996. The Panel also notes in this regard that in 1996, there was already a trademark registration in place for the mark IKB in Germany (where the Complainant is located) but this trademark was registered in the name of an unrelated third party.
It is plain, however, that the Complainant does have rights in the trademark IKB DEUTSCHE INDUSTRIEBANK, which has been registered as a trademark in Germany since 1994. The most distinctive part of this trademark is the "IKB" component. The Panel therefore finds that the disputed domain name is confusingly similar to the trademark IKB DEUTSCHE INDUSTRIEBANK in which the Complainant has rights.
No legitimate rights or interest in respect of the domain name
The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondentsí rights or legitimate interest in the domain names. These circumstances are:
(i) before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial 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 Panel is satisfied that the Respondent made demonstrable preparations to use the disputed domain name before any notice of the dispute in terms of paragraph 4(c)(i) above.
The Complainantís first contact with the Respondent was via email on August 2, 2000. The Respondent provided evidence corroborating his claim that he had made preparations to use the disputed domain name before that date:
(a) a diary extract dated August 18/19, 1999, demonstrating that he was already developing his IKB software product at that time;
(b) an email from the Respondentís investor dated June 6, 2002, confirming that the investor had seen five evaluation trials on the website <ikb.com> during the period 1998 Ė 2002 and that the investor had been involved in the scheme since October 1997.
The Panel also considers that the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name in terms of paragraph 4(c)(ii) above. The Respondent claimed that he formed the company IKB Investments Limited in 1997. This company is also referred to in the email of the Respondentís investor, and by the letter from his solicitors. The solicitorsí letter also included the Company Registration Number, which lends credibility to the Respondentís claim that he had in fact incorporated a company under this name.
The Panel therefore concludes that the Respondent has legitimate rights or interest in respect of the disputed domain name.
Domain name has been registered and is being used in bad faith
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.
The only evidence which the Complainant has put forward of evidence of the Respondentís alleged bad faith, is the fact that:
(a) since the disputed domain name was registered in 1996, the Complainant does not believe the disputed domain name to have been used; and
(b) the Respondent has no intention of developing the disputed domain name.
The Panel finds the Respondent has adequately explained the reason for the delay in the development of the disputed domain name. Further, the Respondent has provided evidence that the disputed domain name has in fact been used to date, albeit only sporadically.
The Complainantís basis for alleging that the Respondent had no intention of developing the disputed domain name (other than the time already elapsed to date) is the statement in the Respondentís email of February 4, 2002, that he was "currently negotiating terms with another party". The Respondent explained that this statement was misconstrued. He claims that he was negotiating terms with another party for additional finance for his IKB software product, not for the transfer of the disputed domain name.
In light of these explanations from the Respondent, the Panel finds that the Complainant has failed to prove the disputed domain name was registered and is being used in bad faith.
Reverse Domain Name Hijacking
A claim of reverse domain name hijacking has been articulated by the Respondent.
Rule 1 defines Reverse Domain Name Hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." (See also Rule 15(e).) To prevail on such a claim, Respondent must show that Complainant knew of either the Respondentís unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See, e.g., Sydney Opera House Trust v Trilynx Pty. Ltd., WIPO Case No. D2000-1224 (October 31, 2000).
Further, when determining whether the Complainant brought the Complaint in bad faith, the Panel should consider both "malicious intent and recklessness or knowing disregard of the likelihood that the respondent possessed legitimate interests." Goldline International, Inc. v Gold Line, WIPO Case No. D2000-1151 (January 4, 2000) citing Loblaws, Inc. v Presidentchoice.inc / Presidentchoice.com, eResolution Case Nos. Af-0170a to Ė 0170c ( June 7, 2000).
The Panel considers that the Complainant instituted the proceeding without having any real prospect of success. The Respondent registered the disputed domain name six years ago. The Complainant first engaged in correspondence with the Respondent in relation to the disputed domain name in August 2000 when the Respondent confirmed that the disputed domain name was being used and the web site was being developed. The Respondentís explanation for registration of the domain name was manifestly reasonable. The Complainant is now attempting to revisit the issue by issuing this Administrative Proceeding. The Complaint is based almost solely on a claim that the Respondent had no intention to use the disputed domain name, despite repeated assurances from the Respondent that it had every intention to do so. In these circumstances, the Panel finds the Complainant guilty of attempted Reverse Domain Name Hijacking.
The Panel therefore decides that:
(a) the disputed domain name is confusingly similar to a trademark in which the Complainant has rights;
(b) the Respondent has a legitimate right or interest in respect of the disputed domain name; and
(c) the Complainant has not established that the disputed domain name was registered and used in bad faith.
Accordingly, the Panel denies the relief sought by the Complainant.
Andrew Brown QC
Dr. Torsten Bettinger
Mr. Gervaise Davis III
Dated: July 23, 2002