WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bank for International Settlements v. BFIS
Case No. D2003-0984
1. The Parties
The Complainant is Bank for International Settlements, Basel, Switzerland, represented by Lenz Caemmerer Bender, Switzerland.
The Respondent is BFIS, c/o Martins Brown, Basel, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <bfis.net> is registered with DomainPeople, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 11, 2003. On December 12, 2003, the Center transmitted by email to DomainPeople, Inc., a request for registrar verification in connection with the domain name at issue. On December 19, 2003, DomainPeople, 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. 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").
On January 8, 2004, pursuant to the Rules, paragraphs 2(a) and 4(a), the Center employed reasonably available means calculated to achieve actual notice to Respondent of the Complaint. Accordingly, the proceedings commenced on January 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2004. The Respondent did not submit any Response. Accordingly, on February 3, 2004, the Center employed reasonably available means calculated to notify Respondent of its default.
The Center appointed Alan L. Limbury as the sole panelist in this matter on February 24, 2004. 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
On September 12, 1995, Complainant became the registered proprietor for a 20 year term of the international service mark BIS, registration No. 644772, in relation to services including financial and monetary affairs and telecommunications.
Under Article 6ter of the Paris Convention for the Protection of Industrial Property of 1883, the initials BIS and name Bank for International Settlements have been protected since 1965, as the English initials and name of an international intergovernmental organization. They have also been protected under Swiss law since 1965.
BIS is the designation or mark by which Complainant is known globally in the context of international financial and monetary co-operation among central banks and other agencies, and which Complainant uses in its trading activities in financial markets.
The disputed domain name <bfis.net> was registered on February 18, 2003, for one year. The name of the registrant was stated as ‘BFIS’, the registrant’s address was stated as ‘Centralbahnplatz 2, Basel, Switzerland’ and the Administrative, Technical and Billing contacts were all stated to be ‘BFIS martins brown’, in each case with the same telephone, fax number and email address.
All of this information was false. The address is that of Complainant, the sole occupant at that address. Complainant has no employee called Martins Brown. There are no such telephone or fax numbers in Switzerland and there is no such email account with yahoo.com.
The disputed domain name has been used to send an email and as a contact address in a fax, both purporting to be from a former member of the management of Complainant and in each case seeking to induce the recipient to send money to the Swiss embassy in Nigeria in order to obtain the release of a very much larger sum said to be held on the recipient’s behalf. The fax header copied the name and logo of Complainant.
Internauts entering "www.bfis.net" are led to a website whose home page copies Complainant’s logo and uses the name ‘Bank For International Settlement’ [sic].
5. Parties’ Contentions
The disputed domain name <bfis.net> is confusingly similar to Complainant’s mark BIS. The letter ‘f’ is merely an abbreviation of ‘for’ and is unlikely to influence the overall impression left by the domain name.
Respondent has no rights or legitimate interest in the disputed domain name, which was registered and is being used in bad faith. Respondent appears to be a front for fraudulent activities.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a Complainant bears the burden of showing:
- that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
- that Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used by Respondent in bad faith.
None of the Center’s communications to Respondent were successful and there is no evidence that Respondent received actual notice of the Complaint. Nevertheless, the Panel is satisfied that the Center discharged its responsibility under the Rules, paragraphs 2(a) and 4(a) to employ reasonably available means calculated to achieve actual notice to Respondent of the Complaint.
Paragraph 15(a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.
If a Respondent fails to participate in a proceeding under the Policy, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848. This course may be followed even where, as here, there are grounds for the conclusion that a Respondent did not receive actual notice of the Complaint.
A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480.
The Panel finds the disputed domain name <bfis.net> to be confusingly similar to Complainant’s trademark BIS.
B. Rights or Legitimate Interests
Complainant has shown that the name of the Respondent is fictitious and that all its contact details are either fictitious or false. Further Complainant has shown that the disputed domain name is being used by the Respondent in an attempt to perpetrate a scam on Internauts by masquerading as Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The circumstances set out in paragraph 4(b) of the Policy are not exhaustive. The Panel finds that the conduct of Respondent in supplying false registration information demonstrates that Respondent’s registration of the disputed domain was in bad faith and that Respondent’s use of the disputed domain name to mislead Internauts into believing that Respondent is Complainant, for the purpose of attempting to perpetrate a scam is use in bad faith.
Respondent’s use of the disputed domain name also fulfills the requirements of paragraph 4(b)(iv) of the Policy, thereby constituting evidence of both bad faith registration and bad faith use.
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 <bfis.net> be transferred to Complainant.
Alan L. Limbury
Dated: March 1, 2004