WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sainsbury’s Bank Plc Company v. Owen Webster

Case No. D2007-1246

1. The Parties

The Complainant is Sainsbury’s Bank Plc Company, London, United Kingdom of Great Britain and Northern Ireland, represented by HBOS Plc, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Owen Webster, Beirut, Lebanon.

2. The Domain Name and Registrar

The disputed domain name<sainsburysfinance.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2007. On August 27, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On August 28, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 September 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2007.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on October 9, 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

Sainsbury’s was the first major British supermarket to open a bank, commencing trading on February 19, 1997. Sainsbury’s customers can manage their accounts online and can make savings deposits in-store benefiting from the extended opening hours and parking available at the supermarket.

The current product range includes savings and loan products, credit cards, travel services and a number of insurance products. Sainsbury’s Bank primary objective is to be the first choice for financial products and services for Sainsbury’s customers. Sainsbury’s Bank has over 1.5 million customers and receives over 400,000 visitors a month to its website.

In 2006 12 million was spent on advertising. Sainsbury’s Bank have a planned marketing spend of 9 million for April to December 2007 and have a spend of 14 million for the year 2008. This spend covers above and below the line advertising including a number of television advert campaigns and Sainsbury’s store campaigns.

Sainsbury’s Bank was named Best Online Provider 2007 by The Finance magazine. Sainsbury’s Bank recently re-launched their Internet Saver product at a market leading rate this was heavily supported by a television campaign and online promotions, this campaign itself has generated over 1 billion in deposits adding as many balances as what had been achieved in the two and a half years since the product was originally launched.

The Complainant has registered UK and European Community trademarks and service marks which include the Sainsbury’s name on which the Complaint is based. These marks are used across the full range of goods and services for which they are registered.

TRADEMARK REG. No DATE OF REG. CLASSESS

UK

Sainsbury’s Bank (word) 2115610 November 21, 1997 9, 16, 35, 36

38 and 41

Sainsbury’s Bank

Drive (word) 2220033 July 28, 2000 16 and 36

Sainsbury’s Bank (Stylised) 2221913 November 24, 2000 9, 16, 35,

36, 38 and 41

Sainsbury’s Bank

Merit Card (word) 2167263 March 26, 1999 9, 16 and 36

COMMUNITY

Sainbury’s Bank 000534925 October 13, 1999 9, 16, 35,

36, 38 and 41

The disputed domain name was registered on September 22, 2006.

5. Parties’ Contentions

A. Complainant

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

“Sainsbury’s” is the common element of the Complainant’s registered trademark rights and is present throughout its business, and is the dominant and distinctive element in this domain name issue. The generic term “finance” is indicative of the Complainants business and use of a domain name combining the word “Sainsbury’s” with the word “finance”, as does the Respondent’s domain name, creates a likelihood of confusion on the part of potential customers and gives the impression that there is a connection between the Respondent’s website and the Complainant.

The Complainant has invested in registering domain names for brand protection purposes and for use as part of their respective businesses.

The Respondent has no rights or legitimate interests in respect of the domain name

The Respondent has registered the domain name which incorporates distinctive elements of the Complainant’s registered trademarks. The Respondent registered the domain name on September 22, 2006 according to the Whois. Accordingly the Complainant’s trademark rights predate any rights the Respondent may claim from the domain name registration.

The Respondent does not have any rights at common law or through registered trademarks in the name “Sainsbury’s” nor does the Respondent have a reputation or any goodwill associated with the names, nor has the Respondent been given permission by the Complainant to use this mark.

The domain name was registered and is being used in bad faith

The Complainant maintains websites at “www.sainsburysbank.co.uk” and “https://online.sainsburysbank.co.uk”.

The disputed domain name is being directed to a site owned by Streamic. Streamic offers domain name parking where domain names are pointed to sites displaying advertisements and the owner of the domain name earns money depending how many “clickthroughs” the site gets. The site displays links that offer financial products for sale and also uses other financial companies names and supermarkets offering finance e.g. Citibank, Asda.

The Respondent’s domain name, creates a likelihood of confusion on the part of potential customers and gives the impression that there is a connection between the Respondent’s website and the Complainant. The Complainant operates within a regulated industry and is aware that any confusion could be severely detrimental to their reputation and business.

“Sainsburys” is the common element of the Complainants registered trademark rights and is present throughout its business, and is the dominant and distinctive element in this domain name issue. The generic term “finance” is indicative of the Complainant’s business and use of a domain name combining the word “Sainsbury’s” with the word “finance”, as does the Respondent’s domain name, creates a likelihood of confusion on the part of potential customers and gives the impression that there is a connection between the Respondent’s website and the Complainant.

The Respondent has been through the Nominet UK Dispute Resolution Service before for registering domain names that contain financial institutions names, see National Counties Building Society v Owen Webster, DRS 03811.

The Complainant would like the Panel to take into consideration WIPO Panel decisions Credit Suisse Group v Kingdomdatanet Network Inc, WIPO Case No. D2004-0846 and Societe Generale v. Helen Rice, WIPO Case No. D2006-0753.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interest in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Given the Respondent’s failure to file a Response, the Panel accepts as true all credible factual allegations of the Complainant. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Respondent’s default does not, however, translate into an automatic ruling for the Complainant.

A. Identical or Confusingly Similar

The Complainant has, as the Panel understands it, claimed that the disputed domain name <sainsburysfinance.com> is confusingly similar to the Complainant’s trademark, SAINSBURY’S BANK, registered in the United Kingdom and the European Community.

The Panel agrees with the Complainant’s contention that “Sainsbury’s” is the distinctive and dominant element of the Complainant’s trademark. The disputed domain name <sainsburysfinance.com> contains this distinctive and dominant element along with the addition of a generic element “finance”. The substitution of the generic term “finance” for the conceptually related generic term “bank” is insufficient to avoid any confusion. The fact that the generic term “finance” further adds to the risk of confusion.

The “.com” suffix denoting second-level domain status in the Respondent’s domain name does not affect the fact that the disputed domain name is confusingly similar to Complainant’s marks pursuant to paragraph 4(a)(i) of the Policy.

Therefore the Panel is satisfied that the first element of the Policy has been met.

B. Rights or Legitimate Interests

Given the Respondent’s failure to submit a Response, the Respondent has not proven that it has any prior rights or legitimate interests in the domain names. The Complainant has asserted that it has not authorized the Respondent’s activities, nor does it have any control over these activities.

Based on the prima facie case established by the Complainant that the Respondent has no rights or legitimate interest in the domain names, the Panel finds that the prerequisites in the paragraph 4(a)(ii) of the Policy are fulfilled. The Panel is satisfied that the second element of the Policy has been met.

C. Registered and Used in Bad Faith

The fact that the domain name, in addition to the distinctive and non descriptive word “sainsburys”, also contains a generic word, “finance”, describing the services provided by the Complainant under the trademarks SAINSBURY’S BANK, makes it highly unlikely that the Respondent was unaware of the Complainant’s trademarks at the time of registration of the domain name.

In the absence of any other explanation to why the Respondent chose a domain name containing “sainsburysfinance”, the Panel, in view of the above facts, finds that the disputed domain name has been registered in bad faith.

The disputed domain name is being directed to a site owned by Streamic. Streamic offers domain name parking where domain names are pointed to sites displaying advertisements and the owner of the domain name earns money depending how many “clickthroughs” the site gets. The site displays links that offer financial products for sale and also uses other financial companies’ names and supermarkets offering finance e.g. Citibank, Asda.

The Panel finds that this acts as evidence that the Respondent is trading on the Complainant’s trademarks to intentionally attract Internet users to the Respondent’s website for purposes of commercial gain.

Consequently, the Panel concludes that the contested domain name has been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

Therefore, all the prerequisites for cancellation or transfer of the domain name in paragraph 4(i) of the Policy are fulfilled.

7. Decision

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, <sainsburysfinance.com> be transferred to the Complainant.


Jonas Gulliksson
Sole Panelist

Dated: October 23, 2007