WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Habib Bank AG Zurich v. Jay Smith
Case No. D2003-0216
1. The Parties
The Complainant is Habib Bank AG Zurich, Habib House, London, United Kingdom of Great Britain and Northern Ireland, represented by CMS Cameron McKenna of London, United Kingdom Great Britain and Northern Ireland.
The Respondent is Jay Smith of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <habib-bankonline.com> ("the Disputed Domain Name") is registered with Abacus America Inc. dba Names4Ever.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on March 19, 2003. On March 20, 2003, the Center transmitted by email to Abacus America Inc. dba Names4Ever a request for registrar verification in connection with the Disputed Domain Name. On March 27, 2003, Abacus America Inc. dba Names4Ever 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. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
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 March 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on April 25, 2003.
The Center appointed Michael D. Cover as the sole panelist in this matter on May 9, 2003. The Panel finds that it was properly constituted. 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.
On April 22, 2003, the representative of the Complainant, CMS Cameron McKenna, informed the Center that the information sent by them by recorded post to the Respondent was not delivered and was returned.
4. Factual Background
Since the Respondent failed to submit a response, the Panel finds the following facts based upon the Complaint and its supporting exhibits:
- The Complainant is a leading and well-known international bank, incorporated in Switzerland and, since 1967, has engaged in the business of providing trade finance, corporate, consumer, private, retail and correspondent banking products. The Complainant is owned and managed by the Habib family and provides its services through a network of over 35 branches around the world.
- The Complainant is the owner of registered trade marks throughout the world containing the words " Habib Bank " covering goods and services, including financial and banking services, as well as various domain names, such as <habibbank.com>.
- The Complainant is also the owner of substantial common law rights built up as a result of the Complainantís use and promotion of the Habib Bank AG Zurich name.
- The Disputed Domain Name was registered on November 1, 2002. It appears that the Disputed Domain Name has been used by the Respondent to acquire the Complainantís customers, including by hosting a duplicate of the Complainantís website.
5. Partiesí Contentions
The Complainant contends that the Disputed Domain Name is confusingly similar to the Complainantís trade mark, not least as the addition of the common and generic word and character "online" and the hyphen are of no significance.
The Complainant also contends that the Respondent has not and cannot demonstrate or establish any rights or legitimate interests in the Disputed Domain Name. The Complainant adduces evidence of the involvement of the law enforcement agencies in this regard. The Complainant contends that the Respondent has not been commonly known by the Disputed Domain Name and that the use of the Disputed Domain Name is not legitimate non-commercial or fair use and that the Disputed Domain Name has been registered and has been used in bad faith.
The Complainant requests that the Panel issue a decision that the Disputed Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
6.1 Paragraph 4a of the Uniform Domain Name Dispute Resolution Policy requires that the Respondent, as registrant of the Disputed Domain Name, submits to a mandatory administrative proceedings in the event that the Complainant establishes:
(i) that the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
6.2 Identical or confusingly similar
The Disputed Domain Name incorporates substantially the Complainantís famous registered trade mark HABIB BANK AG ZURICH, in which substantial common law rights have been built up, including in Habib Bank. The only deviation is that the word "online" has been added as a suffix and the character of a hyphen has been added between the words "habib" and "bank". It is well established that the addition of such generic word and character (the addition of the hyphen being of no significance) does not distinguish the Disputed Domain Name from the Complainantís famous registered trade mark (see, for example, Viacom International, Inc. v. Erwin Tan, WIPO Case No. D2001-1440). Accordingly, the Disputed Domain Name is confusingly similar to the Complainant's famous registered trade mark HABIB BANK AG ZURICH and the name Habib Bank, in connection with which substantial common law rights have been built up.
6.3 Rights or Legitimate Interests
The Respondent has not responded to the Complainantís contentions and has, accordingly, not demonstrated any rights or legitimate interests in respect of the Disputed Domain Name. Whilst the Disputed Domain Name has been used by the Respondent before notice of the dispute, such use has not been demonstrated to be a bona fide offering of goods or services, the Respondent has not demonstrated that it has been commonly known by the Disputed Domain Name and nor has it demonstrated that use of the Disputed Domain Name is fair without intent to tarnish the Complainantís famous registered trade mark HABIB BANK. To the contrary, it appears that the Disputed Domain Name has been used for fraudulent activities, requiring the Complainant to involve the law enforcement authorities.
6.4 Registered and Used in Bad Faith
The relevant head for this case is that the following circumstances shall be evidence of the registration and use of the Disputed Domain Name in bad faith:
- By using the domain name, the Respondent has intentionally attempted to attract, for a commercial gain internet users to its website by creating a likelihood of confusion with the Complainantís famous trade mark HABIB BANK as to the source, sponsorship, affiliation or endorsement of its website or product or service on its website.
It is also to be noted that the circumstances of bad faith are not limited to those set out in paragraph 4(b)(i)(iv). This can also occur when a domain name is "obviously connected with such a well-known product that it is used by someone with no connection with the product which suggests opportunistic bad faith" (see Ė Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group, WIPO Case No. D2000 Ė 0163).
The Panel finds that the Respondentís bad faith is evidenced by the overwhelming fame and reputation of the Complainantís famous trade mark HABIB BANK, by the apparent intended commercial nature of the Respondentís website and by the obvious connection between the Respondentís unauthorised Disputed Domain Name and the Complainantís famous registered trade mark HABIB BANK AG ZURICH and its name Habib Bank.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <habib-bankonline.com> be transferred to the Complainant.
Michael D. Cover
Dated: May 23, 2003