WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stadshypotek Bank AB v. Customer Service
Case No. D2003-0342
1. The Parties
The Complainant is Stadshypotek Bank AB, Stockholm Globen, of Sweden, represented by Rickard Falkhorn of Sweden.
The Respondent is Customer Service, Customer Telecom, Los Gatos, CA of United States of America.
2. The Domain Name and Registrar
The disputed domain name <stadshypotekbank.com> is registered with OnlineNic, Inc., San Francisco, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 6, 2003. On May 7, 2003, the Center transmitted by email to OnlineNic, Inc. a request for registrar verification in connection with the domain name at issue. On May 7, 2003, OnlineNic, Inc. 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 response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 8, 2003. 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 May 13, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2003.
On May 13, 2003, the Center received the following e-mail:
Iím the respondent of this case.
As you know that, Iíve NOT received full complaint document including annex from wipo or complainant.
Because Iíve located in korea as shown below now.
Therefore, this case has NOT commenced any more till modification address of registrant of domain, stadshypotekbank.com, completely.
Therefore, I asked onlinenic to modify registrant address correctly as shown below.
Full name: taeho kim
Organization name: hanmire.com
Country/Region: Korea (South)
Address: 303-1304 gumhobestvill, 808gumhodong, seoku
Postal code: 502-154
Fax : 82-62-529-0625
Please wait for update my address correctly for me to receive the complaint.
On May 13, 2003, the Center replied that the domain was on lock and that no change would be possible during the proceedings, so that the Complaint would be against the domain name holder as mentioned in the WHOIS database, i.e. Customer Service. All the documents have however been transmitted to the Respondent to this new address in Korea, so as to comply with the due process requirements.
The Response was filed with the Center on June 2, 2003.
The Center appointed Kamen Troller as the sole panelist in this matter onJune 12, 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.
4. Factual Background
The complainant is an active Swedish bank which provides bank and financial services under the trade name Stadshypotek Bank. It uses the Internet to provide its services under the domain name <stadshypotekbank.se>. Based upon the website associated to this domain name, one can deduct that the Complainant has developed a bona fide business in the bank and financial services under this name.
The complainant asserts that, since 1997, it has been a wholly own subsidiary to Svenska Handelsbanken AB (publ), a Swedish bank under supervision of the Swedish Financial Supervisory Authority. Before 1997, the Complainant was a wholly owned subsidiary to Stadshypotek AB (publ), which was purchased in 1997 by Svenska Handelsbanken AB (publ). Stadshypotek AB has been a financial institution since early 1900.
According to the Complainant, the institution of Stadshypotek has its origin from the needs of financing in the early process of urbanization in Sweden. The role for Stadshypotek in this process was to supply the market with home mortgage loans and it was financing such loans by issuing bond loans. Stadshypotek and its operations was regulated by Swedish law. Stadshypotekīs operations was expanded since the early 1900, and the bank was founded as an entity for the household market in 1995. Stadshypotek has conducted financial and banking operations since early 1900, and is well known by the Swedish public. The Complainant states that it received permission to conduct business as a bank from the Swedish Financial Supervisory Authority in 1995. Apart from the fact that Stadshypotek Bank is a registered trade name, the word bank may only be used by corporations in banking activities according to Swedish law. Even the name Stadshypotek is by Swedish laws only permitted to be used by specific companies which are specified in the current law. No other person or company is allowed according to Swedish law to to use the word Stadshypotek or bank in its business operations.
None of these allegations have been contested by the Respondent, so that they will be considered as admitted.
On December 18, 2000, the Respondent registered the domain name <stadshypotekbank.com>. Apparently (Annex C), the initial website associated to the domain name stated that the domain name was temporarily parked until the owner established a permanent site; the website contained numerous links to pornographic and gambling websites. After the notification of the Complaint, the Respondent however changed the website associated to its domain name. The website, now called "www.firehunt.com" is held by a third party, i.e. Firehunt, a firm located in the United States, and consists of a gateway page offering several services through search engines. A significant number of these services are related to banking or financial services.
5. Partiesí Contentions
Identical or Confusingly Similar
Complainant asserts that the domain name is identical to its trademark and trade name.
Rights or Legitimate Interests
The Respondent did not demonstrate that it was entitled to use the words "stadshypotek" or "bank" in compliance with Swedish laws. It even did not prove that it was a bank or that its business operations were in the financial sector. The Complainant considers that the Respondent does not have any right or legal interest with respect to the domain name.
Registered and Used in Bad Faith
The Complainant is of the opinion that the Respondentís intention to sell the domain name is evidenced by the information on the web page that the domain name is temporarily parked (Annex C), and that the Respondent did not demonstrate any preparations to use this name. The domain name was registered to prevent the Complainant from using its trade name and disrupt its business. The linking to pornographic and gambling websites is another indication of the Respondentís bad faith.
Identical or Confusingly Similar
The Respondent states that the Complainant did not demonstrate that it was the owner of a trademark identical to the litigious domain name.
Rights or Legitimate Interests
The domain name is merely generic and the Respondent has never heard about the existence of the Complainant.
Registered and Used in Bad Faith
The Respondent registered the domain name for purpose of e-commerce business in Scandinavia, where the Respondent asserts to have many friends. Due to the failure of information technology markets and its own lack of time, the Respondent did not develop its website. The Respondent never tried to sell the domain name to the Complainant.
Considering the fact that the domain name is generic and that the Complainant did not demonstrate that it had acquired secondary meaning, the Respondent is of the opinion that the principle of the "first come first served" has to apply, and that the Complaint should therefore be dismissed.
6. Discussion and Findings
A. Identical or Confusingly Similar
a) According to Policy, paragraph 4 (a) (i), the Complainant has to establish that the domain name held by the Respondent is identical or confusingly similar to a trademark or service mark in which it has rights.
As pointed out by the Respondent, the Complainant does not produce any evidence that it is the holder of a registered trademark.
However, the requirement of "a trademark or service mark in which the Complainant has rights"[Policy, paragraph 4(a) (i)] does not mean that the Complainant has to be the holder of a registered trademark. The real issue is to know whether the Complainant can assert trademark rights in the designation STADSHYPOTEK BANK or a confusingly similar word. As an example, one can refer to WIPO Case No D2000-0867, related to the domain name <Isabelle-Adjani.net>, where the Panel considered that the Complainant, located in Switzerland, could claim a right to her name based upon Art. 29.2 of the Swiss Civil Code, which was held sufficient according to Policy, paragraph 4 (a) (i).
In the Panelís opinion, the Complainant can assert trademark rights when the Panel can conclude from the circumstances of the case and the evidence brought to its knowledge that the Complainant is the holder of a distinctive designation for a certain category of products or services.
This obviously is the case here. Notwithstanding the fact that Complainant had not referred to its website, based upon its power conferred by the Rules, paragraph 10 (a), the Panel checked it ("www.stadshypotekbank.se") (this ex officio Power is considered as being in compliance with the Rules: WIPO Case No D2002-0070; Gilliéron, Philippe, La procédure de résolution en ligne des conflits relatifs aux noms de domaine, publ. CEDIDAC nį 48, Lausanne 2002, nį 73 et seq., pp. 40 et seq.). It clearly appears that the Complainant has developed an important bona fide business in the banking and financial services under the stadshypotek bank designation. The Respondent did not contest Complainantís allegation that the designation STADSHYPOTEK has been extensively used since 1900, by Complainant to provide services, i.e. as a trademark. The use of the STADSHYPOTEK BANK designation as a trademark clearly results from the website "stadshypotekbank.se" held by the Complainant, where the Complainant offers amongst others internet services (Stadshypotek Bank InternetService) and credit card services (Stadshypotek Bank VISA-kort) to its clients under this designation.
b) The Respondent goes on stating that the STADSHYPOTEK BANK designation is merely descriptive and that the Complainant did not prove that this sign had acquired secondary meaning.
However, the Respondent did neither contest the allegation that this designation had been used by the Complainant since 1900, nor that both these names could only be very restrictively used according to Swedish Laws. Considering the facts that these assertions have to be considered as admitted by the Respondent, there is no doubt that the STADSHYPOTEK BANK designation acquired secondary meaning in Sweden throughout these years and can most probably even be considered in Sweden as a well-known trademark according to Art. 6bis of Paris Convention for financial services.
c) Considering these circumstances, the Panel is of the opinion that the Complainant has rights in a service trademark, as required by Policy, paragraph 4 (a) (i), and that the domain name is identical to this trademark.
B. Rights or Legitimate Interests
According to Policy, paragraph 4 (a) (ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interest in the domain name.
The Complainant contends that there is no evidence of any use or demonstrable preparations of use from the Respondent concerning the domain name, nor any bona fide offer of goods and services. To the Complainantís knowledge, the Respondent has not been commonly known by the domain name.
In WIPO Case No D2000-0624, the Panel stated: "Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion."
In this case, these assertions have not been rebutted by the Respondent, who limits himself to affirm that the domain name is merely generic so that the "first come first served" principle should apply. As already seen, this allegation is false as the STADSHYPOTEK BANK designation obviously acquired secondary meaning throughout the years and must therefore be considered as a distinctive sign, and that further more the terms STADSHYPOTEK and BANK may only be used by certain qualified enterprises and can therefore not be considered as generic terms of the public domain, which must remain at the disposal of the public in general.
The Respondent does not bring any evidence that would demonstrate any legitimate interest or right in the domain name. More particularly, the Respondent does not demonstrate that it would be entitled to use both these words according to Swedish Law.
For this reason, the Panel admits the Complainantís contentions and considers Policy, paragraph 4 (a) (ii) to be fulfilled.
C. Registered and Used in Bad Faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4 (a) [iii]).
This condition is fulfilled, despite the assertions of the Respondent:
- As already stated, the STADSHYPOTEK BANK is a well-known designation in Sweden for financial services. Obviously, despite his negations, the Respondent was aware of the existence of the Complainant; indeed, one cannot see why someone located in Korea Ė as is the case of Respondent - would chose a Swedish protected designation, which is the name of a well known Swedish enterprise, as domain name by sheer coincidence. The Respondent itself admits in its Response that it has many friends in Scandinavia. One can therefore deduce that the Respondent knew the Complainant or that its existence has at least been brought to its knowledge in one way or another. The fact that the Respondent has no explanation for choosing a domain name identical to the Complainantís trademark tends to demonstrate its bad faith (WIPO Case No D2002-0061).
Considering the fact that the Respondent was aware of the existence of the Complainant, the websites associated to the domain name clearly reveal the Respondentís bad faith:
- The initial website (Annex C) had numerous links to pornographic or gambling websites. Such links have been considered as an important hint of bad faith, as they tend to tarnish the Complainantís name and distinctive signs (WIPO Cases Nos. D2001-1429, D2001-1438, D2001-1439, D2002-0062; for other cases, see: Gilliéron, op.cit., nį 227, p. 146).
- Apparently, the website associated to the domain name changed after the notification of the Complaint to the Respondent. The current website itself is completely identical to the "www.firehunt.com" website, and seems to be held by a third party, though the holder of the <stadshypotekbank.com> domain name remains the Respondent. Considering the fact that the Respondent is still the holder of this domain name, the Panel is of the opinion that the Respondent accepts the content of this website as if it was its own website. As already mentioned, the current website associated to the domain name provides numerous links to financial services and other websites which are in competition with the Complainant. Thus, potential clients of Complainant, who wanted to contact it though its website, may be diverted to competitors and chose their services instead of the ones of Complainant; such a maneuver shows bad faith, all the more that the link to firehunt happened after the notification of the Complaint to the Respondent.
Once all these circumstances have been taken into account, there is no doubt that the Respondent registered and used the domain name in bad faith.
The Respondentís request for making a finding of Reverse Domain Name Hijacking according to Rules, paragraph 15 (e) shall therefore be dismissed.
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, <stadshypotekbank.com> be transferred to the Complainant.
Dated: June 19, 2003