WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Finter Bank Zurich v. Next Era
Case No. D2005-1331
1. The Parties
The Complainant is Finter Bank Zurich, Zürich, Switzerland, represented by CMS von Erlach Henrici, Switzerland.
The Respondent is Next Era, Ozoamaka, Ugochukwu, Owerri, Nigeria.
2. The Domain Name and Registrar
The disputed domain name is <finterserve.com>.
The registrar for the disputed domain name is Netfirms, Inc., Toronto, Canada.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2005. On December 23, 2005, the Center transmitted by email to Netfirms, Inc. a request for registrar verification in connection with the domain name at issue. On January 18, 2006, Netfirms, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and confirming the details at: http://whois .sc/finterserve.com to be 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 January 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2005.
The Center appointed Pavan Duggal as the sole panelist in this matter on February 15, 2006. 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 Finter Bank Zurich is a well-known private banking institution in Switzerland which owns the following trademarks: Swiss trademark no. P-418617 FINTER BANK ZURICH, registered on September 12, 1995; Swiss picture-combination trademark no. P-418634 registered on September 12, 1995; Swiss picture-combination trademark no. P-427141 registered on June 21, 1996; International trademark no. 645522 FINTER BANK ZURICH and International picture-combination trademark no. 645521 both registered on September 12, 1995, for Austria, Benelux-States, Germany, Spain, France, Liechtenstein and Portugal.
All five trademarks are registered for class 35 (Advertising; business management; business administration; office functions) and class 36 (Insurance; financial affairs; monetary affairs; real estate affairs).
On the Internet, Complainant can be reached under the domain names <finter.ch> and <finter.bs>.
The above-mentioned registrations precede the Respondent’s registration of the disputed domain name.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular, the Complainant claims that:
The domain name in dispute is confusingly similar to the trademarks in which the Complainant has rights
The Complainant asserts that Respondent’s domain name <finterserve.com> is identical and confusingly similar to its registered trademarks FINTER BANK ZURICH. The Complainant claims that the confusing similarity of the domain name used by the Respondent to the Complainant’s trademarks results from the use of the wordFinter.
The Complainant contends that the word Finter is the main part of the Complainant’s trademarks FINTER BANK ZURICH. The Respondent by using a mere suffix “serve” in their domain name <finterserve.com> does not provide sufficient distinctiveness from the trademark of the Complainant. Therefore, according to the Complainant, there is a high likelihood of customers erroneously assuming a connection of Respondent’s website to Complainant.
The Complainant also states that the domain name <finterserve.com> could not be reached, however the status of the domain is still “active”.
The Respondent has no rights or legitimate interests in respect of the domain name in dispute
The Complainant states that the Respondent is neither a licensee of the Complainant nor otherwise allowed to use the trademark FINTER BANK ZURICH or parts of it.
The Complainant claims that the Respondent is neither commonly known by the domain name nor is it using domain name in connection with a bona fide offering of goods or services. According to Complainant, Respondent appears to be seeking to misleadingly confuse and divert consumers.
Moreover, the Complainant also refers to a website “www.aa419.org” dedicated to fighting fraudulent sites which lists the domain name <finterserve.com> as a fake bank.
The domain name in dispute was registered and used in bad faith
Finally, Complainant asserts that Respondent has registered and is using the domain name <finterserve.com> in bad faith.
In support of this position, the Complainant provides that the Respondent’s alleged bank does not exist in Owerri, Nigeria nor anywhere else in the world, neither under the name Finter nor Finterserve nor Finter Serve.
The Complainant further states that the Yahoo e-mail address indicated by the Respondent when registering its domain name is unusual as contact address for a true bank. According to the Complainant a real bank, which is under careful regulation by state authority, would indicate its real business e-mail address.
According to the Complainant the Respondent appears to be seeking to confuse, divert and defraud (potential) customers of the Complainant. The Complainant also expresses concern as to the potential of domain name being used for further Internet fraud scheme like “phising”.
According to the Complainant, the intention of the Respondent was to attract for commercial gain and fraud (potential) Internet users of Complainant to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation and endorsement of the Respondent’s web site and the banking service offered on such web site.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, Complainant must prove that each of the three following elements is satisfied:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 15(a) of the Rules addresses the principles to be used in rendering a decision: A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
The Panel is satisfied that the Center has done the needful to notify the Respondent of the present Complaint and initiation of these proceedings and that despite the same, the Respondent has chosen not to file any response to the Complaint.
The Panel, under Paragraph 14(b) of the Rules, is entitled to draw from such default such inferences as it considers appropriate. Therefore in view of the failure on the part of the Respondent to file a reply in the absence of exceptional circumstances, under paragraph 5(e) of the Rules, the Panel shall decide the dispute based on the Complaint (See Telstra Corporation Ltd v. David Whittle, WIPO Case No. D2001-0434).
A. Identical or Confusingly Similar
As far as the trademark rights are concerned, the Panel is of the opinion that Complainant has provided evidence of its legal rights to the registered mark FINTER BANK ZURICH which is sufficient for the first element of Paragraph 4(a) of the Policy.
The relevant part of the domain name in dispute is “finter”. For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix “serve” being a generic term must be disregarded. Therefore, the Panel accepts the Complainant’s allegations that the word “finter” is the main part of the Complainant’s marks and that the suffix “serve” is irrelevant and does not provide any distinctiveness to the domain name of the Respondent. (See The Coryn Group, Inc., Apple Vacations West, Inc. v. John A. Meara, WIPO Case No. D2003-0690; Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037;Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462 ;Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870 ; Aventis, Aventis Pharma SA. v. John Smith, WIPO Cases No. D2004-0565 and D2004-0624; PepsiCo, Inc., v. Forum LLC, WIPO Case No. D2005-0737).
It is also well established now that the addition of the generic top level domain “.com”, is of no significance when determining whether or not a domain name is identical or confusingly similar to a trademark or service mark. Such additions are essential to the characteristics of the Internet.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
A. Rights or Legitimate Interests
The Policy, paragraph 4(c)(i) provides:
“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4 (a) (ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Respondent did not file any reply to the Complaint; thus, the record has no evidence to support a finding that Respondent has rights or legitimate interests in the domain names.
The Panel is satisfied with the Complainant’s statement that Respondent is neither a licensee nor otherwise allowed to use the trademark FINTER BANK ZURICH or parts of it.
The Panel finds that in the facts and circumstances of this case, it is more likely that the Respondent registered the disputed domain name having the Complainant and its trademark in mind, with the intention to profit from the Complainant’s goodwill and reputation of its trademark.
The Respondent has not provided evidence of circumstances of the type specified in Paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the domain name in dispute. The website of the Respondent is currently not active and neither has there been any demonstrable preparation to use the website. (See World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306).
Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to paragraph 4(c) of the Policy. Accordingly, based on the case file, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
In the facts and circumstances of the present case, the Panel is of the view that the Respondent has registered the domain name in order to attract, for commercial gain and fraud, potential Internet users of the Complainant to its website and also to cause confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. It is not possible that the Respondent would not have known about the registered trademark of the Complainant.
The registration of the domain name in question was done with a mischievous and mala fide intention. The Panel has noted the fact that the website “www.aa419.org”, dedicated to fighting fraudulent sites, lists the domain name <finterserve.com> as a fake bank. Further, the contention of the Complainant that the Respondent’s alleged bank does not exist in Owerri, Nigeria nor anywhere is else in the world, neither under the name Finter nor Finterserve nor Finter Serve, has gone unrebutted by the Respondent, despite being given an opportunity to do so. This suggests that the domain name in question has been registered and being used in bad faith.
The facts disclosed by the Complainant clearly point out that the Respondent appears to be seeking to confuse, divert and defraud (potential) customers of the Complainant. In doing so, the Respondent wants to use the goodwill, reputation and credibility of the Complainant. Such kind of conduct is clearly intentional and not bonafide.
In accordance with paragraph 4(b)(iii) of the Policy, this Panel comes to the conclusion that the domain name in dispute has been registered and used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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, <finterserve.com> be transferred to the Complainant.
Dated: March 1, 2006