WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BBBank eG v. Lee joohee
Case No. D2006-1236
1. The Parties
The Complainant is BBBank eG, of Karlsruhe, Germany, represented by Durm & Partner, Germany.
The Respondent is Lee joohee, of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <bbbank.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2006. On September 27, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name at issue. On September 30, 2006, eNom 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 the Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the 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 October 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 24, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on October 25, 2006.
The Center appointed Jon Lang as the sole panelist in this matter on November 2, 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 Complainant is the owner of numerous registered trademarks for ‘BBBank’ and variations thereof e.g.
German Trademark 396 18 676 ‘BBBank’ (Class 36)
European Community Trademark 001 930 130 ‘BBBank’ (Class 36)
Swiss Trademark 488076 ‘BBBank (Combined mark) (Class 36)
German Trademark 300 38 612 ‘BBBank-Select’ (Class 36)
German Trademark 300 38 613 ‘BBBank-Trust’ (Class 36)
All trademarks were registered prior to the registration of the Domain Name in issue, on April 22, 2003.
The Complainant uses “BBBank” as its company name for the purposes of Section 5(1) of the German Trademark Act.
Moreover the Complainant is the registered owner of a number of domain names incorporating its mark ‘BBBank’, such as <bbbank.de>, <bbbank.net> and <bbbank.eu>.
Not much is known about the Respondent who has not taken part in these proceedings.
5. Parties’ Contentions
The Complainant contends that the Domain Name in issue is identical with its ‘BBBank’ trademarks and with an integral part of its combined trademarks. It further contends that the Domain Name is confusingly similar to its trademarks which incorporate other words e.g. ‘BBBank-Select’.
The Complainant contends that the Respondent has no legitimate interest in the Domain Name. It states that ‘BBBank’ is not used by the Respondent as a name or to identify goods or services; that since registration there has been no evidence of use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services; and that no legitimate non-commercial or fair use is apparent. The Complainant contends that the Respondent is offering the Domain Name for sale.
The Complainant further contends that the Domain Name was registered and is being used in bad faith. It alleges that the Respondent registered the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or a competitor of the Complainant for consideration in excess of the Respondent’s out of pocket expenses.
The Complainant also contends that the Domain Name was registered so as to prevent the Complainant from reflecting its mark in a corresponding domain name.. It refers to the website “www.bbbank.com” which is linked to the website “www.this-domain-is-under-construction.com” on which the Domain Name is offered for sale. The contact e-mail address is identical to the Respondent’s contact e-mail address (email@example.com). The Complainant submits that the Respondent has engaged in a pattern of such conduct and refers to a National Arbitration Forum Decision under the Policy (Claim Number FA0606000724509), in which the domain name <greenpc.com> was transferred to the complainant, Greenpc Inc.
The Complainant contends that at the time of registering the Domain Name, the Respondent knew or should have known about the existence of the Complainant and its trademark rights. The Complainant refers to another decision, BBBank eG v. Dreamline.net, WIPO Case No. D2001-0080 submitting that there is a connection between respondent in that case (Dreamline.net) and the Respondent in this proceeding.
The Complainant further contends that there is no evidence of any good faith commercial or non-commercial use of the Domain Name on the part of the Respondent and that he is engaged in a pattern of conduct involving the speculative registration of domain names for profit.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a Complainant to prove that the Respondent has registered a domain name which is
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that he has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
This Panel finds that the Domain Name in issue is identical to some of the trademarks in which the Complainant has rights, in particular the Complainant’s ‘BBBank’ mark, and confusingly similar to others.
B. Rights or Legitimate Interests
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The mere act of offering for sale a domain name cannot confer such rights. There is no evidence before this Panel to contradict or challenge the contentions of the Complainant. This Panel finds that the Complainant has made out a prima facie case (at the least) that the Respondent has no rights or legitimate interests in the Domain Name, which has not been contradicted or challenged in anyway by the Respondent. The Panel therefore finds that the Respondent has no such rights or interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Domain Name appears to be offered for sale. There is no evidence that it is for sale in excess of out of pocket costs incurred directly in relation to the Domain Name but, in the absence of any evidence from the Respondent to the contrary (or at all), this Panel infers that the Respondent does indeed hope to make some profit (over and above out of pocket costs) from a sale. In the absence of any evidence from the Respondent this Panel is also prepared to accept the submissions of the Complainant that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its mark in a corresponding domain name. The Panel notes there does appear to be some evidence that the Respondent and/or person or persons associated with Respondent have engaged in similar conduct in the past.
The Respondent registered the Domain Name with at least constructive knowledge of the Complainant’s rights. Moreover the Domain Name encapsulates a widely known mark and, given the finding that the Respondent has no rights or legitimate interests in the Domain Name, the difficulty of conceiving a good faith use on the Respondent’s part, the holding out of the Domain Name for sale and the Respondent’s failure to respond and participate in this proceeding, this Panel finds, for the purposes of the Policy, that there is evidence of both registration and use of the Domain Name 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 <bbbank.com> be transferred to the Complainant.
Dated: November 17, 2006