WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bank for International Settlements v. iSMER
Case No. DBIZ2002-00040
1. The Parties
The Complainant is the Bank for International Settlements, an international organization with its principal place of business in Basel, Switzerland. The Complainant is represented by Mr. Rory Macfie, its corporate counsel.
The Respondent is iSMER of London, United Kingdom. The Respondent is represented by Mr. Peter Norton of Bazley, White & Co, Solicitors of London, United Kingdom. The Complainant alleged that the Whois information showed that the Respondent was based in the Cook Islands. The Response stated that the Respondent was in London, but it did not give the legal status of the Respondent (i.e. a corporation, a partnership or an individual).
2. The Domain Name and Registrar
The domain name at issue is <interbank.biz>. The domain name is registered with Registrars Asia Pty. Ltd of Melbourne, Australia ("the Registrar").
3. Procedural History
The Complaint was received on April 25, 2002 (email), and April 26, 2002 (hard copy), by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center"). The Complaint was made pursuant to the Start-up Trademark Opposition Policy for <.biz> adopted by NeuLevel Inc. and approved by ICANN on May 11, 2001 ("the STOP"), and the Rules under that Policy ("the STOP Rules").
The STOP is incorporated into the Respondentís registration agreement with the Registrar. Respondent is obliged to submit to and participate in a mandatory administrative proceeding in the event of a Complaint concerning the domain name registered.
Having verified that the Complaint satisfied the formal requirements of the STOP and the STOP Rules, the Center, on April 30, 2002, transmitted by post-courier and by email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on May 17, 2002 (email), and May 27, 2002 (hard copy).
The 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 STOP requires that the Complaint be determined by a sole Panelist.
The Honorable Sir Ian Barker QC advised his acceptance and forwarded to the Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the STOP Rules and the WIPO Supplemental STOP Rules.
On May 28, 2002, the Center forwarded to the Panel by courier the relevant submissions and the record.
The Panel has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
The language of the administrative proceeding is English. The Complainant has paid the necessary fees to the Center. The Ticket Number assigned by the Registry operator under the STOP Rules has been confirmed.
4. Factual Background
- On March 13, 1995, the Complainant filed an application for the international protection of "INTERBANK" as a service mark with the Federal Office for Intellectual Property in Bern, Switzerland. The application sought protection for the mark in financial and monetary affairs and telecommunications amongst other areas, and in a number of jurisdictions, including Switzerland, Germany, France and Spain. On September 12, 1995, the Complainant obtained a certificate of registration in relation to "INTERBANK" from WIPO.
- The name "INTERBANK", as well as the names and initials of the Complainant are protected under Article 6ter of the Paris Convention for the Protection of Industrial Property of 1883 (the "Paris Convention"), as revised at Lisbon on October 31, 1958. This protection was extended to service marks by Article 16 of the Trademark Law Treaty of October 27, 1994, signed in Geneva (the "Trademark Law Treaty").
- The name "INTERBANK" is protected in Switzerland and in several other countries by specific laws. In Switzerland, Article 3 of the Federal Act of December 15, 1961, concerning the protection of the names and emblems of the United Nations Organization and other intergovernmental organizations (the "Swiss Federal Act") prohibits the use of the names, initials, logo and emblems of these organizations.
5. Partiesí Contentions
"The domain name "interbank" is identical to Complainantís registered service mark "INTERBANK".
There is no evidence that the Respondent has any rights or legitimate interests in respect of the domain name "interbank". The Respondent does not appear to be doing any business under the domain name "interbank". Nor does it appear to be a bank or other authorized financial institution, or in the business of facilitating the settlement of payment obligations between banks or other financial institutions. The Respondent has not registered "interbank" as a service mark.
As well as the domain name "interbank", the Respondent has registered over 100 other domain names on the .BIZ top level domain, including common words such as "drink", "drug", "economy", "currency", "carbon", "land" and "legal". The Respondent has registered 123 domain names with one registrar alone, as is evidenced by a page from <theinternetchallenge.com> website attached to the Complaint. The names, which the Respondent has registered, have little in common with one another, except that they are used frequently in trade, commerce and in political and economic debate. They do not suggest any particular trade or industry in which the Respondent is engaged.
The Respondent has registered "interbank" as a domain name primarily for the purpose of selling or renting the domain name registration, either to the Complainant (as the holder of the "INTERBANK" service mark), or to another person who would find the name commercially valuable, in either case, for valuable consideration in excess out-of-pocket costs. It follows that the Respondent has registered the domain name in bad faith."
The Respondent acknowledges that the Complainant may have used and registered INTERBANK as a mark. The Complainant cannot claim it as an exclusive mark: the word is widely used in banking and finance. The Complainantís use of INTERBANK as a mark does not prove that the domain name was registered or is being used in bad faith or that the Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant states, "There is no evidence that the Respondent has any rights OR legitimate interests in respect of the domain name "interbank". The lack of any such evidence does not prove that the Respondent has no rights OR legitimate interests in respect of the domain name."
The Complainant states, "The Respondent does not appear to be doing any business under the domain name "interbank" nor does it appear to be a bank or other authorized financial institution or in the business of facilitating the settlement of payment obligations between banks or other financial institutions." The domain name was only registered in late March 2002 and has been locked until all IP claims are resolved. The Respondent could not have had use of the domain name even if it had wished to do so. No development could have been completed in such a short time. A party does not have to be a bank or other authorized financial institution or in the business of facilitating the settlement of payment obligations between banks or other financial institutions to have an interest in the interbank mark. The Complainant also seems to be implying that it is aware of the Respondentís plans in the fields of banking and finance, which is not logical. The Respondent confirms that it has not registered interbank as a mark.
The majority of the domain names referred to by the Complainant were registered for use by Respondent and its partners. A small number of these domain names were registered for third parties with whom Respondent or its partners are expected to be interested in and participate in development. At the time of application, the administrative contact for <interbank.biz> was advised to submit one convenient application in the knowledge that, once registered, the details could be changed to reflect the desired information of the rightful owners.
There is no rule prohibiting the registration of hundreds of domain names. The Respondent has purchased ALL its domain names with the intention of making bona fide use of them. The Respondent does not intend to resell its domain names which are not those of famous companies but are mainly generic and common words.
The Complainant has decided to list a few of Respondentís registered names concerning economy, currency and carbon. The first two are related to the interbank market, <carbon.biz> is intended to be used in the field of finance for the trading of emissions or pollution rights. The Complainant is making a Complaint against the Respondentís chosen strategy of creating a network of e-commerce sites using a network of developers to achieve this goal.
The Complainant argues bad faith registration based on the content of an unofficial website www.theinternetchallenge.com run by a member of the public. The webmaster, a Mr. Richard Henderson, has now been privy to information not available at the time of first publishing the comments upon which the Complainant is relying for its bad faith argument. The web site has been updated. Mr. Henderson has withdrawn the Respondent and its registrar from his Complaint and informed NeuLevel of the same. Mr. Henderson has provided a further statement which nullifies much of this Complaint and leaves the Complainant without a bad faith argument.
In late April 2002, Mr. Henderson was elected to the executive of ICANN at Large. His latest statement removing the Respondent from the earlier Complaint relied upon by the Complainant, was only made after careful analysis of the situation. It is no longer from a member of the public but an executive of ICANN at Large. Mr. Henderson has also notified NeuLevel of the modifications to his Complaint.
In including the withdrawn article by Mr. Henderson and filing the STOP after the <internetchallenge.com> website was modified, the Complainant may have misled the Panel. The Complainant has raised the withdrawn content posted at the <internetchallenge.com> which incorrectly suggested that the Respondent (along with other named registrants of the g2b process) were not entitled to the names. Had the registration not been valid, then this STOP process would not be taking place and the name would have been returned to NeuLevel. In such a case, the Complainant would not have had a STOP case to challenge. Annex (4) is the current Complaint posted at the <internetchallenge.com> showing that the Respondent is no longer part of this Complaint.
The names, which the Respondent has registered are used frequently in trade, commerce and political and economic debate. The Respondent asserts that if the Complainant is correct in its assessment of the domain names registered by the Respondent then the only common link between the registered domains in the Claimantís view is more or less the NeuLevel definition of bona fide use.
The domain names registered by the Respondent can be grouped into the following categories:
1. Countries, States and Cities.
2. Science and Medicine.
3. Sport and Media.
4. Banking and Finance
5. Other names of personal interest to partners and registrations for third parties with which Respondent intends to do business.
The fact that the domains do not suggest one particular trade or industry neither proves bad faith registration nor use nor a lack of rights or legitimate interests in the domain name. It reflects the areas of interest or expertise which partners or associates are engaged in. It is for this reason that the intention is for a network of sites using a network of developers. The IT skills required to develop an internet site aimed at the sports or B2B markets do not differ much from the IT skills required for a banking or medical site.
The Respondent has held domains since 1998 and has never sold or transferred or leased (to a third party) a single domain. As of the date of this Complaint <interbank.net> was still available for sale possibly for $688 by a third party. The Complainant has not deemed it necessary to protect its mark by buying this domain or challenging under the relevant domain name dispute resolution policy.
The interbank market determines the rates at which banks are willing to lend and borrow amongst themselves and is therefore a benchmark for interest rates used, as many other interest rates are set with reference to these rates. London is the most important market for interbank rates and the rates in the London interbank market rates are known as LIBID and LIBOR.
As part of the research for some of the proposed financial projects, partners of Respondent (including the administrative contact listed in the WhoIs record for the domain) have been undertaking research into finance related fields including the interbank market. Tarek Soliman, such administrative contact, has attended lectures in financial economics given by Professor David Blake of the University of London and head of the Pensions Institute. (The listing of the country of Registration such as the Cook Islands may be an error relating to the incorrect use of a country code during the application process. This cannot yet be changed as the domain record is locked until the IP claim is resolved. NeuLevel and the Registrars have been informed of this matter).
Before the Respondent received any notice of the dispute, there is evidence of the Respondentís use of, or demonstrable preparations to use, the domain name(s) or a name corresponding to the domain name(s) in connection with a bona fide offering of goods or services. This should be evident from Professor David Blakeís email included in the response. The administrative contact for the domain name has previously been employed as a foreign exchange trader domain name. The Respondent intends to use the domain name as a subscription service aimed at companies and organizations with an interest in the Interbank Market.
The Complainant and the Respondent are not competitors and/or the domain name(s) was/were not registered by the Respondent primarily to disrupt the Complainantís business. A search in Google for "interbank" returns over 200,000 results. The Complainant has agreed to submit to the jurisdiction of the UK Courts. It has no registered mark for interbank in the UK.
The Complainant has proceeded with the STOP Complaint despite the lack of any real evidence proving bad faith registration or use and evidence proving that the Respondent does not have rights or legitimate interests in the domain name. The Respondent acknowledges the brief window from the time of registration in which the Complainant must proceed with the STOP process. This brief period is not sufficient for the Complainant to prove any of the above. The Complainant has resorted to speculation rather than presenting proof.
The Respondent intends to distinguish its use of <interbank.biz> from that of the Complainantís mark. There is no confusion with the Complainantís mark. The mark is widely used in the fields of banking and finance; the Complainant cannot claim exclusive rights to the mark.
The Respondent submits that the Complainant has failed to prove the second and third burdens of proof. The Respondent requests the Complaint be dismissed and requests that the panel consider a decision of reverse domain name hijacking.
6. Discussion and Findings
Under STOP, a Complaint can only be filed by an "IP Claimant" who had filed an IP Claim for a particular alphanumeric string. If that string has been registered as a <.biz> domain name, NeuLevel, the Registry Operator of the <.biz> gTLD notifies the IP Claimant and invites it to initiate a STOP proceeding within 20 days. NeuLevel determines priority orders if there are multiple claimants on a randomized basis (STOP Paragraph 4(2)(i)). Only the priority claimant will be invited to initiate a STOP Complaint, which is allocated a "ticket number" which allows dispute resolution providers to verify whether a STOP Complaint is pled by the priority claimant. The service provider (in this case, the Center) is required to advise the Panelist if a given domain name in dispute is subject to more than one claim. In the present case, there is another IP claim.
Under STOP, the Complainant must show:
(a) That the domain name is identical to the Complainantís trademark or service mark (Paragraph 4(a)(i)).
(b) That the Respondent has no rights or legitimate interests in the domain name.
(c) That the domain name was either registered or used in bad faith (Paragraph 4(a)(iii)).
A Respondent may demonstrate a right or legitimate interest in a domain name. Circumstances similar to those under the Uniform Domain Name Dispute Resolution Policy of ICANN (the UDRP) can be invoked by a Respondent.
Likewise, the instances of bad faith exemplified in UDRP can be invoked by a Complainant. However, because the STOP and STOP Rules come into play shortly after registration of a domain name, the focus of attention will be on bad faith at the time of registration.
The Panel is unclear as to the exact legal status of the Respondent. The Response does not state whether iSMER is a corporation, a partnership or an individualís trading name. The inference from reading the Response as a whole is that iSMER is Mr. Talek Soliman trading under that name.
In the present case, the disputed domain name is identical with the mark owned by the Complainant. The first criterion has been proved.
As to the second criterion, the Complainant gave no rights to the Respondent in respect of its mark. The Respondentís rather diffuse and unfocused Response appears to rely on Paragraph 4(c)(ii) of the Policy i.e. that before notice of the Complaint it had used or had made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services. The Panel is unable to find that the Respondent has established that it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services. It is said that the Respondent intends to use the domain name "as a subscription service aimed at companies and organizations with an interest in the Interbank Market." It is said that the demonstrable preparations, etc should be evident from Professor Blakeís email to Mr. Tarek Soliman, the nameís administrative contact. Yet all this email (undated) says is that "Tarek" (the addressee Ė no surname given) is a student at Berkbeck College "studying Financial Economics which covers material in financial markets and financial institutions including banking, both domestic and international." Mr. Soliman claims also to have worked as a foreign exchange trader and "therefore has a genuine reason to have a legitimate interest in the domain name."
In the Panelís view, there is just no proof of demonstrable preparations by the Respondent to use the name for the bona fide sale of goods and services. The second criterion is proved.
As to the third criterion, the Respondent (which seems to be a front for Mr. Soliman) must have known of the Complainant and its activities at the time of registration. Mr. Soliman claims to be a student of inter alia, international banking and to have had experience as a foreign exchange trader. No student of international banking could fail to have heard of the Complainant. It does not matter that Complainantís marks are not registered in the United Kingdom. For those involved in banking the marks of international banking institutions must be well-known. See International Bank for Recontruction and Development d/b/a The World Bank v. Yoo Jin Sohn ,WIPO Case No. D2002-0222.
It is not stretching the Panelís powers of inference too far to conclude that the Complainantís mark should have been known to the Respondent at the date of registration of the disputed domain name. Under the STOP, Respondent was required to represent to the Registrar that it was entitled to register the domain name. A registrant is told expressly in the relevant document: "It is your responsibility to determine whether your domain name registration infringes or violates someone elseís rights." Modest enquiries in international banking circles would easily have revealed the Respondentís mark. For a discussion on the effect of the STOP on a Respondentís obligations to ensure that rights are not being infringed and of the relevant difference between STOP and UDRP see Kuchler Electronics GmbH v. Rocco Mancini, WIPO Case No. DBIZ2002-00005 and the authorities there mentioned.
The use by the Respondent of the disputed domain name will inevitably draw internet users, familiar with the Complainantís mark, who may want some information about the Complainant. These users may well assume some endorsement by or affiliation to the Complainant. The use of the name can only cause confusion.
Moreover, the use of the word "bank" in a name (whether a domain name, trademark or trading name) often indicates to the public that the owner of the name has been the subject of some financial regulatory process. Most countries regulate banking to a greater or lesser degree and have restrictions on the use of the word "bank" in a trading name which demonstrates a banking institution. In a domain name context, see, for example, WIPO decision PBS Privat Bank Schweiz AG v Emek Tuzun, WIPO Case No. D2001-1311.
The word "interbank" has a connotation of some banking organization. It could refer to some aspect of international banking or some bank co-operative arrangement. The name is not so removed from a banking context as would make the internet user think otherwise. Obviously, words such as "databank" or "clothingbank" or "foodbank" are examples of the use of the word "bank" in a non-banking context. But "interbank" is not in that category. For all the above reasons the Panel concludes that the third criterion is proved.
In arriving at its decision, the Panel has taken into account, in the Respondentís favour, the update by Mr. Richard Henderson annexed to the Response. The Panel agrees that registration of domain names in bulk does not necessarily imply bad faith registration. Having said that, however, a person experienced in registering domain names such as the Respondent ought to be more sensitive to the possibility of a domain name infringing anotherís trademark rights Ė particularly when he was dealing with the STOP and STOP Rules.
For the above reasons, the Panel decides that:
(a) The Complainant has legitimate rights to the domain name;
(b) The Respondent has no legitimate rights to the domain name;
(c) The Respondent has registered the domain name in bad faith.
Accordingly, the Panel orders that the name <interbank.biz> be transferred to the Complainant.
In accordance with Paragraphs 14(l)(ii)(1) of STOP and 15(e)(ii) of the STOP Rules, the Panel decides that no subsequent challenges under STOP against the disputed domain name shall be permitted.
Hon. Sir Ian Barker Q.C.
Dated: June 11, 2002