WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutshe Postbank AG and Postbank Systems AG v. Jessy Lago
Case No. DBIZ2002-00234
1. The Parties
The Complainants are Deutsche Postbank AG, a company incorporated under the laws of Germany, having its principal place of business in Bonn, Germany, and Postbank Systems AG, a company incorporated under the laws of Germany, having its principal place of business in Bonn, Germany.
The Respondent is Jessy Lago, of Geneva, Switzerland.
2. The Domain Name and Registrar
The domain name at issue is <postbank.biz>.
The domain name at issue is registered with Network Solutions, Inc. ("NSI"), Herndon, Virginia, United States of America.
3. Procedural History
The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy for .BIZ ("STOP") adopted by NeuLevel Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, the Rules for Start-up Trademark Opposition Policy (the "STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the "Supplemental STOP Rules").
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail on May 17, 2002, and in hardcopy on May 22, 2002. An amended version of the Complaint was received by e-mail on June 12, 2002, and in hardcopy on June 17, 2002. On May 22, 2002, the Center sent an Acknowledgement of Receipt of Complaint to Complainant.
On June 19, 2002, the Center sent a Notification of the STOP Complaint and Commencement of Administrative Proceedings to the Respondent, setting a deadline of July 9, 2002, by which Respondent could make a Response to the Complaint.
On July 18, 2002, the Center sent a Notice of Default to Respondent.
On July 18, 2002, the Center received a late response from the Respondent by e-mail.
The Center has also received further e-mail correspondence from both parties.
On August 6, 2002, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of Mr. Jonas Gulliksson.
The Panel finds that the Administrative Panel was properly constituted and appointed.
The Administrative Panel shall issue its decision based on the Complaint, the Response, the STOP, the STOP Rules and the Supplemental STOP Rules.
4. Factual Background
Deutsche Postbank AG has registered the trademark "Postbank" at the German Patent and Trade Mark Office in 1997 (Date of publication of the registration: 20.03.1997) (see annex 2 to the Complaint). The registration includes the following goods and services:
class 31: advertising; business management; business administration
class 36: all kinds of financial affairs especially giro operations, deposit banking and investment fund business as well as the issue of credit cards and customer cards, insurance brokerage
class 38: telephone banking; financial affairs through viewdata.
Furthermore the Complainants use the domains <postbank.at>, <postbank.de>, <postbank.info>, <postbank.lu> for commercial activities in Europe.
5. Parties’ Contentions
The domain name <postbank.biz> is identical to our registered trademark "Postbank". The Respondent has no rights or legitimate interests in respect of the domain name. He tries to obtain the domain "postbank" although he acts as a private person who cannot have the authorization of a credit institution. Therefore, the respondent is not entitled to use the notion "bank" to describe his business. Moreover the general public will be deceived as people expect a bank to be the proprietor of the domain "postbank". The domain has to be considered as having been registered in bad faith because it was obvious for the respondent that only banks are allowed to use the term "bank" without deceiving the public. In addition the complainant has most customers of all German banks in the area of online-banking in Germany.
Further, on May 31, 2002, the Respondent offered the Complainants to buy the domain name at issue.
The Respondent has not contested the allegations of the Complainant in time.
With respect to the fact that the Complainants amended its Complaint by adding that the Respondent had offered to sell the domain at issue to the Complainants the Panel will consider the late response from the Respondent.
The Respondent contends the following.
After having received the Complaint from the Complainants on May 28, 2002, then he contacted the Complainants by phone and spoke to Mr. Ebert. He told Mr. Ebert that he would use the domain name at issue for world-wide fundraising for ecology and non-profit organizations. Mr. Ebert said that the Complainant needed the domain name for a new division in the Complainants´ business. Mr. Ebert then asked him if he was prepared to sell the domain name to the Complainants. He answered that he did not know the value of the domain name. Mr. Ebert then asked him to send an e-mail to the Complainant in which he could declare that he was prepared to sell the domain name.
On May 31, 2002, he sent an e-mail to the Complainants in which he offers the Complainants to buy the domain name.
6. Discussion and Findings
Under the STOP, a Complaint can only be filed by an "IP claimant" who had filed an IP claim for a particular alpha-numeric string. If that string becomes registered as a ".biz" domain name, NeuLevel notifies the IP claimant and invites it to initiate a STOP proceeding within 20 days. The Panel has been informed by the Center that this period has been extended to 25 days. NeuLevel determines priority if there are multiple claimants on a random basis (STOP Paragraph 4(2)(ii)). Only the priority claimant will be invited to initiate a STOP Complaint, it is allocated a ticket number, which allows dispute resolution providers to verify whether a STOP Complaint is filed by the priority Claimant. The service provider (in this case the Center) is required to advise the Panelist if a disputed domain name is subject to more than one claim. The Center informed the Panelist that there are no other IP Claimants in queue.
Under STOP, the Complainant must show:
(a) that the domain name is identical to the Complainant’s trademark or service mark (Paragraph 4a(i));
(b) that the Respondent has no rights or legitimate interests in the domain name (Paragraph 4a(ii));
(c) that the domain name was either registered or used in bad faith (Paragraph 4a(iii)).
The 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 to demonstrate rights or legitimate interests. Similarly, the instances of bad faith exemplified in the UDRP can be invoked by a Complainant. However, because 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.
(a) Trademark rights
Complainants have registered the trademark POSTBANK in Germany. The domain name at issue is identical to the trademark POSTBANK.
(b) Legitimate interests
The Respondent has not alleged that he owns any trademark or service mark rights for POSTBANK.
The Response that was filed by the Respondent includes statements that he will use the domain name at issue for world-wide fundraising for ecology and non-profit organizations. The Response that was filed does, however, not include any evidence of use, or demonstrable preparations to use, the disputed domain name.
Accordingly, the Panel finds that the Respondent does not satisfy any element of Paragraph 4(c) of the STOP.
(c) Bad faith
The Respondent has after receiving the Complaint in this proceeding contacted the Complainants by phone and e-mail.
The Respondent has stated that he in his telephone conversation with Mr. Ebert on May 28, 2002, said "When he told me that this name was important for them, I begin to think what I can do for them, as they have also an interest on that? I questioned Mr. Jurgen Ebert, that as domain names are on sale on the web, we can discuss about it. Then he told me that they were interested to buy it, but I must first send an e-mail explaining the principle for offering this name.".
On May 31, 2002, the Respondent sent an e-mail to the Complainants in which he offered the domain name at issue for sale.
The Panelist is of the opinion that since the Respondent after the Administrative Proceedings had commenced contacted the Complainant and offered the domain name at issue for sale the Respondent has acted in bad faith.
The Panelist therefore concludes that the domain name at issue was registered or used in bad faith in accordance with the STOP Paragraphs 4 (a) (iii) and 4 (b) (i).
For the above reasons, the Panel decides that:
(a) The Complainants have 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 <postbank.biz> be transferred to the Complainants.
Dated: August 20, 2002