WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banque Fédérale des Banques Populaires S.A. v. N-Holdings
Case No. D2002-1049
1. The Parties
The Complainant is Banque Fédérale des Banques Populaires S.A. ("Complainant"), a corporation organized and existing under the laws of France, with its principal place of business at 5, rue Leblanc, 75511 Paris Cedex 15, France, represented by Cabinet Salans, 9 rue Boissy díAnglas, 75008 Paris, France.
According to the Registrarís WHOIS database, the Respondent is N-Holdings of Daegu, South Korea.
2. The Domain Name and Registrar
The disputed domain name is <banquepopulaire.com> ("Domain Name"), registered with OnlineNic, Inc., dba china-channel.com, 2315 26th Ave., San Francisco, CA 94116, United States of America. The registration agreement, pursuant to which the domain name is registered, incorporates the Uniform Domain Name Dispute Resolution Policy (the "Policy").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 13, 2002. On November 14, 2002, the Center transmitted by email to OnlineNic, Inc. a request for registrar verification in connection with the Domain Name at issue. On November 18, 2002, OnlineNic, Inc. dba China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In its response, Online Nic, Inc. indicated that the Respondent had not submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the Domain Name. Accordingly, on November 26, 2002, the Center advised the Complainant that it must expressly consent to jurisdiction in the location of the domain-holderís address in order to commence the proceeding. On December 11, 2002, the Complainant filed an amendment to the Complaint in accordance with Paragraph 3(b)(xiii) of the Rules indicating Complainantís agreement to submit to the jurisdiction of the Courts at the location of the domain name holderís address with respect to any challenges that may be made by the Respondent to the decision by the Administrative Panel to transfer or cancel the Domain Name.
On December 12, 2002, Complainant notified the Center that it had sent the Complaint to the Respondent at the address given in the Registrarís WHOIS database, but that the Complaint was returned to Complainantís attorney by the postal service.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on January 10, 2003.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on January 21, 2003. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
The following facts and statements are derived from the Complaint and its annexed documents. The Respondent has not contested any of these facts and statements.
Complainant is the bank network of the "Banques Populaires," united under a federal bank called the "Banque Fédérale des Banques Populaires," a French "société anonyme" (limited company) registered with the Paris registry of commerce, having its registered office in France and regulated by the French monetary and financial Code. Complainant represents a network of more than 2000 agencies located in France, and many other countries of the world, notably South Korea.
The use of the trademark "Banque Populaire" is strictly regulated by a French law dated August 7, 1920, "completing and modifying the law of March 13, 1917" and now by the French monetary and financial Code (articles L.512-13 and L 571-10), which provides that the trademark "Banque Populaire" may only be used to designate French banking organizations authorized to exercise their activity in the context of the law of March 13, 1917, and the French monetary and financial Code, i.e. the Banques Populaires. Article L.571-10 of the French monetary and financial Code further provides that, whoever, apart from the entities mentioned in Article L. 512-2, uses in any way the title or qualification "banque populaire," will be punished with the penalties of article 313-1 of the Penal Code.
Complainant owns numerous registrations (French Trademark and Community Trademark) for BANQUE POPULAIRE or for BANQUE POPULAIRE combined with other words related to its services; In France, Reg. No. 3113485 and 3113488 in classes 36 and 38 since July 25, 2001; Community Trademark No. 000863886 in Class 16 since September 14, 1999.
Complainant is the owner, inter alia, of the Domain Names <banquepopulaire.biz>, <banquepopulaire.fr> and <banquepopulaire.net>.
The disputed Domain Name <banquepopulaire.com> was registered by Respondent on August 30, 2001. The Domain Name points to a web page in Korean language that merely lists numerous links to various well-known Korean banks and financial institutions. The Domain Name does not point to any website discussing goods or services offered by Respondent.
5. Partiesí Contentions
Complainant contends that:
- the Domain Name is identical to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name was registered and is being used in bad faith; and
- the Domain Name should be transferred to the Complainant.
Additional contentions of the Complainant are discussed below:
On January 4, 2002, Complainantís attorney sent a letter by courier with return receipt requested to Respondent, informing Respondent that "Banque Populaire" was a registered trademark in which Complainant had rights and demanding that the domain name be transferred to Complainant immediately. Exhibit 6 to the Complaint indicates that Respondent received this letter on January 25, 2002.
Respondent did not answer Complainantís letter and Complainant therefore filed its Complaint in this UDRP proceeding.
As mentioned above, Respondent failed to submit a response in accordance with the requirements under the Policy. Thus, Complainantís allegations are deemed to be uncontested.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
"(i) 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; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith."
A. Identical or Confusingly Similar Domain Name: Policy 4(a)(i)
The domain name <banquepopulaire.com> is identical to the trademark "Banque Populaire" in which the Complainant has rights.
Accordingly, Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.
B. Respondentís Rights or Legitimate Interests In The Domain Name: Policy 4(a)(ii)
A Respondent may establish its rights or legitimate interests in the Domain Name, by showing any of the following elements:
(i) before receiving notice of the dispute, the Respondent used or demonstrably prepared to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent, as an individual, business or other organization, has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain
Respondent has submitted no evidence to support any claim that it has a legitimate right or interest in the domain name.
Respondent has failed to submit any evidence that it has been commonly known by the Domain Name, and there is no evidence that Respondent is presently conducting any bona fide activities under the Domain Name, other than to provide a "frame" web page listing a list of links to various Korean financial institutions.
Complainant has not authorized Respondent to use its trademark, either as part of the domain name or otherwise. Respondent has no business or any other connection or affiliation with Complainant that would indicate that Respondent has any right, title or interest in the mark BANQUE POPULAIRE as provided by the French monetary and financial Code discussed above.
There is no evidence that Respondent is making a legitimate use of the domain name without intent for commercial gain, nor is Respondent making a fair use of the domain name.
Accordingly, in the absence of any evidence of a legitimate interest of Respondent to register and use the Domain Name, the Panel finds that Complainant has satisfied its burden of proof under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith: Policy 4(a)(iii)
Complainant must establish that the Domain Name has been registered and used in bad faith by Respondent.
Paragraph 4(b) of the Policy states that the following four (non-exclusive) circumstances, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:
(i) circumstances indicating that Respondent has registered or 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 Respondentís out-of-pocket costs directly related to the Domain Name; or
(ii) Respondent has registered the Domain Name in order to prevent the owner of the trademark of service mark from reflecting the mark in a corresponding Domain Name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís website or location or of a product or service on Respondentís website or location.
In Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (<telstra.org>), as well as in other WIPO decisions, it was held that a passive holding of a domain name may, on its own, be sufficient to constitute bad faith, taking into consideration the overall context of Respondentís behavior. In the present case, the following facts support a finding that Respondentís registration and use of the Domain Name is in bad faith:
(a) The combination of the French words "banque" and "populaire" has no meaning in the Korean language; (b) Complainantís reputation is well-established and the name "Banque Populaire" is extremely well-known; (c) as Complainant has a presence in Seoul, Republic of Korea, it is highly likely that the Respondent was aware of Complainant at the time of registering the domain name; (d) the use of the domain name as a link to various Korean bank websites shows that Respondent clearly knew the nature of Complainantís business, and intentionally attempted to attract Internet users by creating a likelihood of confusion with the Complainantís mark, thereby disrupting Complainantís business.
Accordingly, the Panel concludes that Complainant has met its burden under paragraph 4(a)(iii) of the Policy of establishing Respondentís bad faith registration and use of the Domain Name.
The Panel decides that the disputed Domain Name is identical to the registered trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent has registered and used the Domain Name in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <banquepopulaire.com> be transferred to the Complainant.
Lynda J. Zadra-Symes
Date: February 4, 2003