WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bank for International Settlements v. James Elliott
Case No. D2003-0987
1. The Parties
The Complainant is Bank for International Settlements, Basel, Switzerland, represented by Lenz Caemmerer Bender, Switzerland.
The Respondent is James Elliott, Surrey, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <bisonlinedept.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
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 CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On December 15, 2003, CSL Computer Service Langenbach GmbH dba Joker.com 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 contacts. 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 employed reasonably available means calculated to achieve actual notice to Respondent of the Complaint, and the proceedings commenced on January 9, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2004.
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.
The language of the proceeding was English.
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, as amended in Lisbon in 1958, 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 as marks under Swiss law since 1965.
BIS is one of the designations and marks 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 the financial markets.
Complainant is a party to an agreement in connection with the settlement of litigation arising out of the terrorist bombing of Flight 103 over Lockerbie, Scotland on December 21, 1988.
The disputed domain name <bisonlinedept.com> was registered on October 14, 2003. It resolves to a website which displays the name ‘Bank of [sic] International Settlement [sic]’ and appears to promote online banking. The name Mr. Philip Carlton appears as a Private Banking Administrator.
Complainant’s attention has been drawn to emails emanating from the disputed domain name in which a Mr. Philip Carlton, on behalf of ‘Bank of [sic] International Settlement [sic]’ purports to represent that a large amount of money will be paid to the recipient of the email pursuant to an agreement between the Government of Libya and the families of the victims of ‘the plane crash’, under the supervision of the United Nations, upon provision by the recipient of personal information.
5. Parties’ Contentions
The disputed domain name is confusingly similar to Complainant’s mark BIS. The addition of the words ‘dept’ and ‘online’ do nothing to detract from the confusing similarity between the domain name and Complainant’s initials. The domain name suggests a website operated by Complainant.
Respondent is not and has never been associated in any way with Complainant. Respondent has no rights or legitimate interests in the disputed domain name because the domain name is being used for the carrying out of fraudulent activity. It was registered and is being used in bad faith in an attempt to trick Internauts into providing personal information on the false pretence that the sender of emails from the disputed domain name is an authorized officer of Complainant.
The Respondent did not reply to the 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.
Not all 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. It appears actual notice was given to the administrative contact.
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: see, for example, Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. This course may be followed even where, as here, there are grounds for the conclusion that a Respondent may not have received actual notice of the Complaint.
A. Identical or Confusingly Similar
Complainant has established that it has trademark rights in the initials BIS.
Many cases have established that 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, for example, BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480.
The words ‘online’ and ‘dept’ serve to strengthen the association between the disputed domain name and Complainant conveyed by the mark BIS, which is the predominant part of the disputed domain name. The gTLD <.com> is inconsequential. Accordingly, the Panel finds the disputed domain name to be confusingly similar to Complainat’s BIS mark.
B. Rights or Legitimate Interests
Complainant has shown that the name of Respondent, BIS, is Complainant’s own internationally protected initials and that the disputed domain name is being used by the person responsible for the registration of the disputed domain name to masquerade as Complainant by substantially copying Complainant’s name on that person’s website and by the content thereof. It is appropriate to draw the inference that this is an attempt to perpetrate a scam on Internauts.
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 use on Respondent’s website of the name ‘Bank of International Settlement’ and the references on the website to the Government of Libya and the families of the victims of ‘the plane crash’ indicate that Respondent was fully aware of Complainant and its mark BIS when registering the disputed domain name. Accordingly the Panel finds the disputed domain name to have been registered in bad faith. See SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport, NAF Case No. FA94956.
The Panel finds that the conduct of Respondent in using the disputed domain name to mislead Internauts into believing that Respondent is Complainant, for the likely purpose of attempting to perpetrate a scam, is use in bad faith.
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 <bisonlinedept.com> be transferred to Complainant.
Alan L. Limbury
Date: March 3, 2004