WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BPU BANCA - Banche Popolari Unite S.C.P.A. and Banca Lombarda e Piemontese S.p.A. v. webmaster
Case No. D2007-0486
1. The Parties
The Complainants are BPU BANCA - Banche Popolari Unite S.C.P.A, and Banca Lombarda e Piemontese S.p.A. of Brescia, Italy, represented by Patrizio Menchetti, Belgium.
The Respondent is webmaster, of Daegu, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <bpubancalombarda.com> is registered with Cydentity, Inc. dba Cypack.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2007. On March 30, 2007, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the domain name at issue. On April 2, 2007, Cydentity, Inc. dba Cypack.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, 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 April 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2007.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on May 11, 2007. 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 BPU BANCA group is the first co-operative credit group in Italy, listed in the Milan Stock Exchange in the S&P/MIB index with a capitalization of approximately Euro 7.5 billion. It is the seventh ranking Italian group in terms of total assets and the sixth in terms of number of branches.
BANCA LOMBARDA E PIEMONTESE S.P.A has a leading position in Lombardy, where it is one of the largest by number of branches, as well as in Piedmont. It has a leadership position in the Italian provinces of Brescia and Cuneo.
The Complainants are in the process of merging. The first joint press release, in English, on a merger plan between BPU BANCA and BANCA LOMBARDA was published on November 13, 2006, on the BPU BANCA website.
BPU BANCA, the first Complainant, owns various BPU and BPU BANCA trademarks including without limitation, BPU BANCA, community trademark No.: 003038461, with a filing date of June 2, 2003, and a date of registration of June 4, 2004.
BANCA LOMBARDA, the second Complainant, owns the trademark, BANCA LOMBARDA community trademark No.: 003093283, with a filing date of December 3, 2003, and a date of registration of September 7, 2004.
5. Parties’ Contentions
The Complainant contends that:
Given the dimension and the range of activities of the Complainants, their trademarks are known worldwide, including in Asia.
BANCA LOMBARDA also owns the domain names <bancalombarda.it> and <bacalombarda.com> and has actively promoted its trademarks.
The Complainants have never given, jointly or severally, any right or license to the Respondent to their trademarks.
The domain name is composed by a combination of the marks BPU and BANCA LOMBARDA, which constitute the dominant and memorable portion of the Complainant’s marks and the domain name.
The Respondent has no rights or legitimate interests in respect of the domain name, as the ex ante legal requirement for the Respondent to legitimately use the word “banca”, contained in the domain name, is to be a licensed banking establishment.
The Respondent is not commonly known under the domain name.
The domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants or to a competitor of the Complainants, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.
The Respondent registered the domain name on November 14, 2006, precisely one day after the publication of a joint press release, in English, on an aggregation project between BPU BANCA and BANCA LOMBARDA.
The registration of a domain name immediately after a merger plan is announced is per se an indication of bad faith.
The Respondent has registered a large number of domain names, mostly including the names and trademarks of well-known companies, products and services all over the world, and having no connection with the Respondent.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Language of Proceeding
The Complaint was filed in the English language. It is noted that the language of the registration agreement for the domain name in dispute is Korean, however, the Complainants assert that English should be the language of the proceeding.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, although the registration agreement for the domain name in dispute is in the Korean language, it is apparent from the written communications exchanged between the Parties and the language posted on the website that the Respondent has sufficient ability communicating in the English language. On the other hand, the Complainants are not able to communicate in Korean. Therefore, in consideration of the above circumstances and in the interest of fairness to both Parties, the Panel hereby decides, under paragraph 11 of the Rules, that (i) English shall be the language of administrative proceeding in this case, but on the condition that (ii) the Respondent shall be permitted to submit any documents or assertions in Korean. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as he considers appropriate (see paragraph 14(b) of the Rules; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under paragraph 4(a) of the Policy, the Complainants must prove each of the following:
(i) the domain name is identical or confusingly similar to the Complainants’ trademark or service mark;
(ii) the 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.
C. Identical or Confusingly Similar
The Complainants’ marks are properly registered. The Complainants own the marks BPU BANCA and BANCA LOMBARDA. The domain name incorporates the Complainants’ distinctive marks and as such creates sufficient similarity to be confusingly similar (see paragraph 4(a) of the Policy).
Therefore, the Panel finds that the domain name is confusingly similar to the Complainants’ marks pursuant to the Policy, paragraph 4(a)(i).
D. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainants must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several past WIPO UDRP decisions have held that “once a complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainants have asserted that the Respondent has no relationship with or authorization from the Complainants to use their marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that the Respondent has not, and has never been, commonly known by the domain name in dispute. The Panel’s view is that these facts must be taken as proven provided that they have not been denied by the Respondent.
The Respondent has not submitted a response. Therefore, it has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under paragraph 4(c) of the Policy. Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
Both under past WIPO UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2 of the Policy), a well-established principle is that when someone registers a domain name, he/she represents and warrants to the registrar that, to his/her knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainants’ trademarks are well-known, it is unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware that it was infringing the Complainants’ trademarks. Bad faith can be presumed based on the fame of the Complainants’ marks, such that the Respondent was aware or should have been aware of the Complainants’ widely known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of the European Union would have made the Complainants’ registrations known to the Respondent.
The Panel also notes that the Respondent registered the domain name one day after the publication of a joint press release regarding the merger of the Complainants. The Panel finds that the registration of the domain name immediately after the announcement of the merger plan indicates bad faith. (See Danisco A/S AND Genencor International, Inc. v. Bong-Gyu Jeong, WIPO Case No. D2005-0973; Konica Corporation, Minilta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112; and Polaroid Corporation and Petters Group Worldwide, LLC v. BK Jeong, WIPO Case No. D2006-0486.)
In addition, it is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith. Adidas-Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372. The Panel finds, in the absence of rebuttal by the Respondent, that the Complainants have adequately supported the inference that the Respondent’s actions and correspondence satisfy the “intent to sell” requirement of paragraph 4(b)(i).
The conduct described above also falls squarely within paragraph 4(b)(iv) of the Policy and accordingly the Panel concludes that the Respondent registered and used the domain name in bad faith.
In light of the above, the Panel concludes that the Complainants have proven bad faith in registration and use on the part of the Respondent.
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 <bpubancalombarda.com> be transferred to the first Complainant, BPU BANCA.
Thomas P. Pinansky
Dated: May 25, 2007