WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft v. Future Media Architects, Inc.
Case No. D2006-0534
1. The Parties
The Complainant is BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft, Vienna, Austria, represented by Schönherr Rechtsanwalte GmbH, Austria.
The Respondent is Future Media Architects, Inc., Tortola, United Kingdom of Great Britain and Northern Ireland, represented by Kenyon & Kenyon LLP, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <psk.com> is registered with Moniker Online Services, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2006 by email and on May 1, 2006, by hardcopy. On April 28, 2006, the Center transmitted by email to Moniker Online Services, Inc. a request for a registrar verification in connection with the domain name at issue. On May 3, 2006, Moniker Online Services, 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”).
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 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2006. The Response was filed with the Center on May 24, 2006.
On May 30, 2006, the Center received a Supplemental Filing from the Complainant responding to arguments that the Respondent submitted in its Response.
On June 2, 2006, the Respondent filed with the Center a Reply to the Complainant’s Supplemental Filing.
The Center appointed Thomas Webster, Christian Gassauer-Fleissner and David W. Quinto as panelists in this matter on June 27, 2006. The Panel finds that it was properly constituted. Each member of 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. Ruling on the unsolicited Replies
Paragraph 12 of the Rules provides that the Panel may, in its sole discretion, request further statement from either of the parties. Thus, no party has the right to insist upon the admissibility of additional evidence. Moreover, there is no right to file a Response to an unsolicited Reply admitted by the Panel. It is a matter for the Panel to decide in its discretion in each case whether fairness requires a Respondent to be afforded such an opportunity pursuant to paragraph 10(b) of the Rules.
The Administrative Panel has considered the Supplemental Filings and, by majority decision, has decided to consider the Supplemental Filings in rendering the Panel’s decision. This appears particularly appropriate where both Complainant and Respondent have made supplementary filings.
5. Factual Background
The Complainant in these administrative proceedings is BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft. The Complainant was founded in October 2005 through a merger of the banks BAWAG and Österreichische Postsparkasse Aktiengesellschaft. This merger created the biggest Austrian retail bank.
The firm name of Österreichische Postsparkasse Aktiengesellschaft, one of the banks that merged in October 2005, is commonly abbreviated as P.S.K. Founded in 1882, P.S.K. became one of the largest Austrian banks. It was and still is very well known all over the country as every post office also is a provider of banking services for P.S.K. Today approximately 1,300 post offices exist in Austria providing banking services under the sign “P.S.K”.
Österreichische Postsparkasse Aktiengesellschaft is registered as the owner of the Austrian trademark AT 098654 “P.S.K.” and the identical international trademark IR 816366 with protection in the Czech Republic, Hungary, Slovenia and Slovakia. The priority date of these trademarks is December 7, 1981. As a result of the merger of Österreichische Postsparkasse Aktiengesellschaft with BAWAG forming the new company BAWAK P.S.K. Bank für Arbeit und Wirtschaft und Österreichische, Postsparkasse Aktiengesellschaft, the Complainant became the legal successor of Österreichische Postsparkasse Aktiengesellschaft and thereby the owner of the mentioned registered marks.
The Respondent is a company organized and existing under the laws of the British Virgin Islands but based in the State of Virginia in the United States. The Respondent’s business is as an Internet development company specializing in the development of its own Internet properties, Internet portals and technology. The Respondent has a business of acquiring potentially attractive internet names, including names comprised only of several letters. The Respondent has used the domain name <psk.com> since July 17, 2003, when it purchased the disputed domain name from Pool.com.
6. Parties’ Contentions
The Complainant argues that the disputed domain name, <psk.com>, is confusingly similar to the Complainant’s trademark “P.S.K.” registered under the number AT 098654 in Austria and as international trademark IR 816366 with protection in the Czech Republic, Hungary, Slovenia and Slovakia. According to the Complainant, the domain name in dispute consists of the three letters “PSK”, the only difference between the domain name and Complainant’s trademark is that dots between the letters are missing and that the generic top level domain name “com” was added. The Claimant argues that these additions are irrelevant and that the domain name <psk.com> is confusingly similar to the Complainant’s trademark.
Further, the Complainant maintains that the Respondent has no legitimate interest in the use of the domain name. The Complainant explains that “Complainant has not licensed and otherwise permitted Respondent to use any of his trademarks or any variations thereof, or to register or use any domain name incorporating any of those trademarks or any variation thereof”. According to the Complainant, “PSK” is an arbitrary sign without any meaning and “there is no evidence for a connection between Respondent and the domain name which could indicate a legitimate interest.”
According to the Complainant, the Respondent “has not used the domain name in connection with a bona fide offering of goods and services and he has not been commonly known by this domain name but rather intends to have a free ride on the fame and good will of Complainant’s trademarks and profit from consumer confusion as to an electronic relationship of Respondent to Complainant”.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that “Respondent is known from previous p[a]n[e]l decisions” and that “most websites to which the links provided on Respondent’s website “www. psk.com” refer contain pornographic content” and that “according to the WIPO panels’ case law this clearly proves that the domain name was registered and is being used in bad faith”. The Complainant argues that “it is obvious that Respondent has Complainant’s trademark in mind when he registered the domain name <psk.com>”.
The Complainant argues that “the use of the disputed domain name misleadingly diverts customers to Respondent’s website, causing confusion among consumers by creating the impression of an economic relationship with sponsorship or endorsement of Respondent by Complainant for a commercial gain”. Moreover, “the Respondent seeks to create the impression to be affiliated with Complainant, when this in fact is not the case”.
Finally, in its Supplemental Filing, the Complainant argues “that Respondent is not only the registrant of the domain name <psk.com> but he also uses the third level domain name <bawag.psk.com> thus proving that “the Respondent uses the domain name <psk.com> in bad faith”.
The Respondent admits that the disputed domain name <psk.com> is visually identical to the Complainant’s trademark.
However, the Respondent argues that “the PSK mark Complainant is asserting is exceedingly weak and not deserving of the broad enforcement it seeks through the Complaint”.
The Respondent further contends that it has a legitimate interest in the disputed domain name. According to the Respondent, “long before Respondent received notice of the dispute, it purchased the domain name from the previous owner and began using the domain name to provide consumers with links to websites arranged by subject headings corresponding to the goods and services provided by those websites”.
The Respondent also contends that “a simple reading of the Policy at Paragraph 4 (b) (i-iv) indicates that intent is a critical element necessary to support a claim of bad faith registration and use of a domain name”. The Respondent alleges that “up until the moment it received Complainant’s March 13, 2006 letter, Respondent had never heard of Complainant”. The Respondent puts forward that it purchased the domain name on July 17, 2003, but “in fact, at that time, <psk.com> had already been in continuous use since 1997 by a Boston based advertising company called Pagano Schenck and Kay”.
The Respondent adds that it “has no intention of selling its <psk.com> domain name to any competitor of Complainant”.
Finally, the Respondent argues that it could not have registered the disputed domain name to intentionally create a likelihood of confusion as, “Respondent was not aware of Complainant’s existence at the time it purchased” and, in addition, “the goods and services offered by Complainant and Respondent are not even remotely similar (…) to Complainant’s banking services”.
In his Supplemental Filing, the Respondent submits that the domain name <bawag.psk.com> is not at issue and requests the Panel to refuse admission of the Complainant’s Supplemental Filing.
7. Discussion and Findings
Under the Policy, paragraph 4(a) the Complainant must prove that each of the following three elements are present:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no right or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that <psk.com> is identical or confusingly similar to the Complainant’s trademarks. The fact that other parties may have similar trademarks is not relevant in this respect.
B. Rights or Legitimate Interests
Whether the Respondent has rights or legitimate interests in respect of the domain name is often intertwined with the bad-faith registration and use analysis. UDRP decisions are generally in agreement that a registrant has rights or legitimate interests in a domain name if the registrant uses the domain name to conduct bona fide business. However, panelists have held that a domain name ransfer from a registrant having rights or legitimate interests to a registrant previously lacking such rights or legitimate interests does not automatically confer legitimacy on the transferee and that the use of a domain name in a manner that infringes a trademark will prevent the acquisition of legitimacy. See, generally, Consorzio per la tutela del formaggio Grana Padano v. Colombi Cristiano, No. AF-0252 (August 14, 2000); and NFL Properties, Inc. v. One Sex Entertainment Co., WIPO Case No. D2000-0118 (April 17, 2000).
The foregoing analyses are directed to the registration of a single domain name. Here, by contrast, the Respondent has made a business practice of registering as many three-letter domain names as it can acquire. It is evidently true that as to any one of them, it uses the name to conduct business and may have acquired it from a transferor that had rights or legitimate interests in the name. However, to say that is to lose sight of the fact that Respondent’s business model involves the indiscriminate acquisition and use of as many such domain names as possible. The traditional analyses of the rights or legitimate interests element should not apply in gross when a registrant is not seeking to use any particular domain name to conduct business, is not otherwise known by that name, and has no interest in the nature of the transferor’s rights. Thus, the Panel finds that Complainant has sufficiently demonstrated that Respondent lacks rights or legitimate interests in the challenged domain name.
C. Registered and Used in Bad Faith
The key issue in this case is whether the Respondent has registered and used the domain name in bad faith.
The Complainant’s basic argument in that respect is that it is well known particularly in Austria; that the letters PSK are distinct and that the Respondent has gone so far as to register the name <bawag.psk.com> thus demonstrating its bad faith.
The Respondent’s basic argument is that the domain name was registered in 1997, some nine years ago, and was acquired by the Respondent in 2003; that the Respondent is in the business of acquiring domain names with short, easy-to-remember letters and that it had never heard of the Complainant until it was contacted by the Complainant with regard to this dispute.
The Panel finds, by a majority decision, that the Complainant has failed to prove that the domain name was registered and is being used in bad faith. The reasoning for this majority decision is set out below for the Presiding Panelist and in the concurring opinion from Panelist Mr. Quinto.
For the Presiding Panelist, it appears that Respondent registered as many three-letter-domains as possible in order to provide each of them to businesses as information.com, revenue.net or domainsponsor.com, which pay a certain amount of money for each impression of the website that is promoted through the links to owners of domain names who provide their domain names to said services. The earnings of the domain holder directly depend on the quantity of the domain names owned and the traffic that they generate.
For the Presiding Panelist and the dissenting Panelist, it is well known that trademarks or firm names often consist of three-letters (eg IBM, BMW, etc). It is therefore quite possible that three-letter domains belong to well known companies all over the world. Moreover, it is also very possible that three letter domain names will incorporate or be similar to well-known trademarks.
The Respondent explicitly confirmed that it intended to register as many three-letter domains as possible to provide them to commercial businesses as information.com. For the Presiding Panelist, once the Respondent developed that strategy, the Presiding Panelist finds that it had implicitly a duty to ensure that the three-letter domains would not, to the best of its knowledge, result in cybersquatting.
However, for the Presiding Panelist, the Respondent’s affidavit evidence that it had never heard of the Complainant until the dispute is plausible and understandable in the circumstances where the Complainant's activity is focused on one particular geographical area (Austria) and where the Respondent has its registered office on the British Virgin Islands and is conducting its business from Virginia/USA. There does not seem to be any obvious intent to create confusion with, or trade on the goodwill of, the Austrian bank. The challenged domain name resolves to a site that appears to have exclusively English language content whereas persons familiar with the Austrian bank are presumably German speakers. Thus the panel finds by majority decision, that Complainant has failed to demonstrate that Respondent registered and is using the disputed domain name in bad faith.
I concur that Complainant has not established that Respondent has registered and used the domain name in bad faith. However, in finding that the bad-faith registration and use element has not been satisfied, the majority opinion gives too much credence to the case for finding bad faith.
Paragraph 4(a)(iii) of the Policy sets forth a non-exclusive four-factor test of bad faith. Here there is no evidence that Respondent acquired the domain name to (i) sell or rent it to the mark owner; (ii) prevent the mark owner from reflecting its mark in the corresponding domain name; (iii) disrupt a competitor’s business; or (iv) intentionally attempt to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the complainant’s mark.
Although Complainant argues that the fourth factor is satisfied, its argument, when analyzed, is really that bad faith should be found outside the four enumerated circumstances. The lynch pin of its argument is that Respondent purportedly registered <bawag.psk.com>. That contention is not worthy of mention for two reasons. First, it was not made in the Complaint but, rather, in an unauthorized further statement not submitted pursuant to Rule 12. A panel may refuse to accept further statements. See Easyjet Airline Co. v. Steggles, WIPO Case No. D2000-0024 (March 7, 2000). The panel should have done so here because if the contention were accurate, it could have been made in the Complaint. Panel should not accept evidence that a party could have found earlier, had it bothered to look. The second reason the contention is not worthy of mention is, of course, is that it is simply not true. Respondent has configured its site so that all subdomains of <psk.com> resolve to it. There is no separate registration. Indeed, <wipo.psk.com> resolves to Respondent’s site. Given that any term at all could be used in place of “bawag,” there is no basis to infer that Respondent had any knowledge of Complainant’s mark or any intention to cause confusion with it.
Respondent is correct that Complainant’s mark is not famous. This seems self-evident given that Complainant makes only limited use of its “PSK” mark preferring, instead, to emphasize its “BAWAG” mark. Further, there are evidently various registrants of PSK marks used for various purposes, thus reducing the likelihood that Respondent’s use of its domain name will likely cause confusion with any one of them. In any event, there is no reason to dispute Respondent’s assertion that it was unaware of Complainant’s mark when it acquired the challenged domain name. Respondent’s argument in this regard is strengthened by its showing that the initial registrant had a good-faith reason for acquiring the domain name: it was an advertising agency whose principals’ names began with the letters “P,” “S,” and “K.” Under the circumstances, it seems far-fetched to argue that a registrant located in the United States and conducting business in English should have been aware of a registration by an Austrian bank that, presumably, conducts business in German. Further, it would be patently unfair to charge a domain name registrant in such circumstances with constructive knowledge of a mark that could be located only by searching individually the trademark registers of every nation. This is especially so given that the domain name had been used without objection by the prior registrant for six years. Although that might well have reflected only that the various owners of PSK marks recognized that Respondent’s predecessor-in-interest had an equal right to use the domain name, Respondent could equally have concluded that there were not other claimants to the domain name. That Respondent seeks to acquire three-letter domain names and various businesses use three-letter acronyms as trade names (which, in any event, are unprotectible under the Policy) cannot alter that conclusion. Many three-letter combinations are not corporate acronyms; two-letter combinations may serve that purpose (for example, GM and VW in the automotive industry); four-letter combinations may also serve that purpose (such as WIPO, LVMH, NASA, GMAC and CSFB); and short domain names are intrinsically valuable even when they are not also corporate acronyms. Therefore, this Panelist find no evidence that Respondent has acted in bad faith.
Based on the foregoing, Respondent’s conduct did not amount to a knowing assumption of the risk of infringement as the Dissenting Panelist believes. There is, therefore, no need to address whether the fourth bad-faith factor, the intentional attempt to attract Internet users for commercial gain by creating a likelihood of confusion, may in appropriate circumstances be broadened to encompass a knowing assumption of the risk of infringement. Given the complete absence of evidence of any likelihood of confusion, it would clearly be inappropriate to consider whether indifference to the possibility of infringement could substitute for an intentional attempt to cause confusion. And, were it appropriate to explore that path, it would also be appropriate to consider at the same time what effect Complainant’s nearly three-year delay in bringing its claim has on its contention that it has superior rights in the domain name.
For all the foregoing reasons and for the reasons in the concurring decision, by majority decision the Complaint is denied.
David W. Quinto
Dated: July 28, 2006
The dissenting Panelist agrees with the Panel’s conclusion that the Respondent does not have a legitimate interest in the disputed domain name (cf supra B). For a domain name – like for a trademark – its identification function is a feature by law. Respondent does not use the disputed domain name for identification of its business but for the purpose of diverting internet traffic. The dissenting Panelist does not contest that Respondent uses the disputed domain name for business purposes, albeit not for purposes inherently characteristic for a domain name. Such uncharacteristic use through the particular business purpose of Respondent, i.e. diverting internet traffic imposes a greater duty on Respondent to verify that the use of a domain name by it is legitimate. For the dissenting Panelist, the Respondent by having decided to register or acquire bulks of particularly brief and attractive domain names at least must have seriously considered it possible that another person has a right in the “psk-sign” but accepted the risk of infringement. Such possibility combined with the acceptance thereof in the view of the dissenting Panelist constitutes bad faith pursuant to the Policy. Accordingly, it does not matter whether or not Respondent actually did know about Complainant’s existence. The dissenting Panelist also finds that the affidavit of Mr. Al-Ghanim lacks a sufficient degree of credibility since for example the Respondent failed to submit documents on which the affidavit is based. The dissenting Panelist finds that the big geographic distance between the registered seats of the parties to the dispute cannot support the position of Respondent because (i) the internet by nature is not confined to particular geographic parts of the world, (ii) it is not credible that the Respondent intends to limit its business operations to the British Virgin islands, (iii) although Austria is a small country it has to be acknowledged that one of its biggest banks does business also outside the country and with customers from abroad thereby using the English language (cf attachments ./E1 and ./E2 to the complaint). The trademark PSK is known to the public in one geographical area at least to the same level as some other trademarks were in another geographical area such other trademarks (or names) being the subject matter of various decisions of WIPO Administrative Panels and the reputation of which is not worldwide but confined to certain parts of the world (Lifetime Products, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0719; Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560). Contrary to the findings of the Concurring Panelist the dissenting Panelist does not think that the Respondent would have been obliged to search individually the trademark registers of every nation. Had the Respondent only googled “PSK” he would have found immediately the Complainant.