WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Northwest Financial Corp. v. Caribbean Online International Ltd.
Case No. D2008-0086
1. The Parties
Complainant is Northwest Financial Corp., of Spencer, Iowa, United States of America, represented by its internal authorized representative Daniel Sanculi.
Respondent is Caribbean Online International Ltd., of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <northwestbanks.com> is registered with BelgiumDomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2008. On January 23, 2008, the Center transmitted by email to BelgiumDomains, LLC. a request for registrar verification in connection with the domain name at issue. On January 24, 2008, BelgiumDomains, LLC. transmitted, by email, to the Center its verification response confirming that respondent is listed as the registrant and providing the contact details.
The Center determined that the Complaint did not satisfy the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), under 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”), and on February 1, 2008 served a notice to this effect on the Complainant, which filed a response with the Center on February 1, 2008 with an amendment to the Complaint. The Center then verified that the Complaint and the amendment thereto satisfied the formal requirements of the Policy.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified respondent of the Complaint, and the proceedings commenced on February 5, 2008.
In accordance with the Rules, under paragraph 5(a), the due date for Response was February 25, 2008. However, Respondent did not submit any response. Accordingly, the Center notified respondent’s default on February 26, 2008.
The Center appointed John Terry as the Sole Panelist in this matter on March 3, 2008. 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.
The Complaint, in the opinion of the Panel, contained only a paucity of material as to the Complainant’s use of its business name and corporate name in a trademark or service mark sense, no evidence as to the manner in which the Respondent may have used the domain name in issue and no evidence as to previous WIPO domain name decisions in respect of which the present Respondent was a party. The onus is on the Complainant to make out a proper prima facie case under the Rules. In this case and due to some exceptional circumstances referred to hereinafter, the Panel considered it proper firstly to make its own investigation of the public record by checking how the present domain name resolves to a website, secondly to review from the public record of WIPO decisions a large number of adverse findings by other Panels against the present Respondent for other domain names and thirdly to decide, in the interests of fair process, that an Administrative Panel Procedural Order No. 1 should be issued before the Panel decided the matter. That Order was issued March 20, 2008 inviting further submissions by the parties no later than March 27, 2008 to the Center. The date for the Panel’s Decision was extended to April 3, 2008.
Shortly stated, the order invited the Complainant to provide further supporting material as to its trademark use and reputation and any secondary meaning at the time the disputed domain name was registered, namely December 13, 2006. Secondly the Panel notes that the Respondent was the subject of adverse findings most recently in General Electric Company vs. Marketing Tool S.A., WIPO Case No. D2007-1834. In the interests of fairness, the Panel invited the Respondent to provide any comments it may have in relation to the issues in that decision.
4. Factual Background
Complainant carries on business in the field of banking and financial services. The uncontested Complaint establishes to the satisfaction of the Panel that the Complainant has traded under the name “Northwest Federal Savings Bank” and used the domain name <northwestfederal.com>. Furthermore, the Complainant states in the Complaint “In 2008, banks under the Northwest Financial Corp. umbrella will be undergoing a name change to Northwest Bank”.
Complainant became aware of the Respondent’s domain name registration and has stated that it made multiple attempts at communication to try and negotiate the purchase of the domain name at issue from the Respondent but no replies have been received.
In this case and on balance the Panel has been disposed to make an enquiry, in the absence of positive evidence in the Complaint, to determine how the present domain name might currently be used. The website “www.northwestbanks.com” was accessed and was found to resolve to a website having numerous sponsored links such as to “IBM Banking Systems” “www.ibm.com/banking” and many other financial service operations. Presumably the present Respondent receives income stream for such a click-through website.
Secondly the Panel elected to search the WIPO database of domain name decisions and found and reviewed some 14 prior decisions all of which are recorded as having been the subject of an order to transfer the domain name to the Complainant in the respective case or to cancel the domain name. In no instance has the Respondent filed a response to any Complaint.
Of potentially significance to the present matter is the finding in General Electric, supra dated February 1, 2008. Extensive evidence was placed before the Panel which found that some of the domain names decided in that case were registered by BelgiumDomains, LLC, (also the Registrar in the present proceeding). Furthermore the Panel found that the present Respondent Caribbean Online International Ltd. prima facie was in a common business and group with several other respondents and also appeared to be a member of the same business group as BelgiumDomains, LLC and other Registrars. The Panel found the circumstances strongly suggested the Respondents had registered and used the disputed domain names to misdirect internet traffic looking for the complainant in that case.
The Panel in General Electric, supra further found the circumstances in that case suggest the Respondent’s intention to bulk register domain names that have some value in directing Internet traffic to its portal websites. There, the Panel concluded that the respondents’ likely state of mind when they registered and then used the disputed domain names, supported a finding of bad faith.
Since the prior decisions concerning the present Respondent relate to similar circumstances and the Respondent did not respond to the Complaint, the Panel in the circumstances considered it proper before giving weight to any such findings in other cases where the evidence in question has not been adduced into the present file to give the Respondent specific opportunity to make comments. For that reason the Administrative Order was issued. The Respondent however has not responded to this invitation and the Panel will consider the weight to be given to the findings of other Panels and the evidence referred to in those other panel decisions.
The Complainant responded to the Administrative Order No. 1 by filing on March 25, 2008 a bundle of large undated and uncertified materials which do no more than suggest use such that some secondary meaning of the service mark “Northwest Bank” had been acquired following a “Grand Opening” May 15-20, 2006. However the Panel cannot give much weight to such materials. The Panel is satisfied only that there was a scintilla of proven use by the Complainant at the reported date of registration of the domain name in issue.
Complainants are well advised to have their Complaint professionally and comprehensively prepared as a Panel is generally reluctant (even in the absence of any Response) to make assumptions in their favor. Although certain inferences may be drawn where reasonable, and plausible factual statements accepted as such if left unanswered, a Complainant must still provide sufficient evidence of any claimed rights. Thus, this case is to be determined on the basis, that the Complainant has not established any significant prior reputation in a name which is inherently low on distinctiveness, namely a combination of a geographical bearing (“northwest”) prefix and a descriptive suffix (“banks”).
5. Parties’ Contentions
Without any detailed submissions, the Complainant has asserted that the domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights, that the Respondent has no legitimate interest in the domain name as there is no active website at that domain (and nor has there been since the Respondent registered it), and submits that use of the present domain name would be a legitimate commercial usage if it were used as the domain name for the Complainant’s business. Furthermore, the Complainant contends that the registration and use by the Respondent has been in bad faith on the basis that there has been passive holding of the domain name and multiple attempts at communication by the Complainant to seek to purchase the same and no response thereto.
The evidence of the Complainant points towards some usage in a small portion of United States of America.
The Complainant seeks transfer of the domain name registration to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has placed limited material before the Panel as to its use of its business name and corporate name and trademark usage as of December 14, 2006. It has stated that the usage has been in relation to the provision of a full range of banking and financial services. The geographical extent and the time of extent is not stated and the only evidence is a copy of correspondence with the Regulatory Authorities dated June 1, 2004 notifying the commencement of business under the name “Northwest Federal Savings Bank”. This is corroborated via materials showing the nature of usage on documents and materials associated with the provision of such services.
The Complainant does however refer to its website at “www.northwestbankiowa.com” in the Complaint, which website shows use of the NORTHWEST BANK mark in commerce. The Panel finds on balance that such usage of the Complainant constitutes use as a trademark for banking services of “Northwest Bank”. This usage is of a trademark which is the singular of the characterizing part of the present domain name namely the singular of “NorthwestBanks” and thus the present domain name is held to be confusingly similar to the characterizing part of the name used by the Complainant as a trademark. The Panel is also prepared to accept that the Complainant has on balance succeeded in showing prior use in commerce of the mark NORTHWEST FEDERAL SAVINGS BANK.
The statements as to the intentions of the Complainant in the future are ignored by the Panel because the question is to consider trademarks whether by common law or as registered in respect of which the Complainant might have rights (and there are none specifically asserted in this case), or trademarks in respect which rights arise through trading and the application of common law principles. It is well established that the quantum of trading and geographical extent is not relevant to the initial establishment of rights in a trademark and minimal bona fide usage, in this case established, is sufficient. However, the Panel cannot make undue assumptions in favor of the Complainant, and does not do so. This decision is predicated on the basis that the reputation of the Complainant under a relevant trade mark is minimal. The Respondent for its part has not sought to challenge the Complainant’s claims of trademark rights.
In the circumstances, the Panel finds Complainant has on balance satisfied the first element of the Policy, namely paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances in which a respondent may establish it has rights and legitimate interests in a domain name.
While the overall burden of proof rests with a Complainant, previous UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of a respondent. A complainant is therefore generally required to make out a prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, a respondent then carries the burden of demonstrating rights or legitimate interests in the domain name. If a respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (cf. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
In the present case, the Respondent has filed no Response. The Panel has therefore considered whether the material in the Complaint is sufficient to establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Of the three alternative subparagraphs in paragraph 4(c) of the Policy, clearly paragraph 4(c)(i) of the Policy is not relevant as there is no evidence before the Panel that Respondent has made any bona fide offering of goods or services under the domain name in dispute. Furthermore, there is no evidence that supports any finding under paragraph 4(c)(ii) of the Policy because Respondent has not established it has been commonly known by the domain name in dispute. Under paragraph (4)(c)(iii) of the Policy, the only evidence of activity of Respondent, with respect to the domain name in dispute, is from the initiative of the Panel in reviewing the website to which the domain name in issue appears to resolve.
Such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by Respondent within the meaning of paragraph 4(c)(iii) of the Policy. Doubts on this issue are resolved by giving weight to the absence of a Response from the Respondent and the bad faith issues discussed later.
The Panel finds that a prima facie case is established, and that none of the three circumstances potentially available to Respondent under paragraph 4(c) of the Policy are applicable, and that Respondent lacks rights or legitimate interests in the disputed domain name. As Respondent has failed to file a Response, this has not been rebutted.
The Panel finds accordingly that Complainant has established the second element of the Policy, namely para. 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four specific, non-exclusive circumstances, which, if established by Complainant, are deemed to lead to a conclusion of registration and use of a domain name in bad faith.
Paragraph 4(b)(i) of the Policy lists the following as evidence of bad faith:
circumstances indicating that [the Respondent] has registered or 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 [Respondent’s] documented out-of-pocket costs directly related to the domain name.
The panel finds Complainant has not made its case under this paragraph on the basis of the factual circumstances contained in the Complaint, since failure of a Respondent to reply to an offer for purchase is not sufficient and no other circumstances of relevance are alleged.
A further potential basis for decision is that arising under Paragraph 4(b)(ii) of the Policy, namely if it is shown that Respondent registered the domain name in order to prevent the owner of the trademark from reflecting in a corresponding domain name, provided that Respondent engaged in a pattern of such conduct. There are no asserted facts leading to any finding under this paragraph.
Paragraph 4 (b)(iii) can apply where it is shown that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor. There is however no such evidence put forward by the Complainant and thus this paragraph cannot apply.
A further basis for a decision in Complainant’s favor are the circumstances of 4(b)(iv) of the Policy, which is in the following terms:
(iv) by using the domain name you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location of a product or service on your website or location.
The review by the Panel of the provided printout of the website to which the domain name resolved at the time of the filing of the Complaint shows it is a portal with a facility to click through to websites of potential competitors of the present Complainant. The Respondent has not responded with any legitimate explanation. While the facts before the Panel do not positively establish anything pursuant to which the Respondent could be judged to have known about the trademark usage of the Complainant at the date of registering the domain name, or that it ought to have known about such usage, or even was willfully blind, nevertheless in the absence of explanation from the Respondent the Panel considers the facts suggest the Respondent had a state of mind at the time of registering the domain name to add a further domain name to bulk registrations already held, the present domain name being for misdirecting Internet traffic. The Panel finds this an example of bad faith registration and use under the broad general heading of paragraph 4(a)(iii) and also justifying a finding of the same within the terms of paragraph 4(b)(iv) of the Policy.
The Panel has taken into account that the Complainant has not shown any significant level of secondary meaning in terms of trademark rights under a relevant name (which is confusingly similar to the present domain name) at the date of registration of the present domain name, but nevertheless the Panel considers the conclusion reached of bad faith is reinforced by the prior decisions against the present Respondent and in particular the findings in General Electric, supra, to which some weight may be given in the absence of any Response of the Respondent and to assist resolving the doubts in this matter.
For all the foregoing reasons, the Panel in accordance with Paragraph 4(i) of the Policy and 15 of the rules, orders that the domain name <northwestbanks.com> be transferred to the Complainant.
The Panel notes of the decision in the General Electric case Paragraph 7 refers to the report that BelgiumDomains, LLC has been “locked out” by Verisign and that such a locked out registrar cannot administer domain names registered by its customers. The present panel therefore respectively adopts the approach of the panel in the General Electric case and requests this decision be copied by the Center to Verisign and that if Verisign is acting even temporarily as the registrar-in-fact of the present domain name that Verisign takes appropriate action. The Panel also requests the Center to forward to ICANN, as the accrediting authority, this decision for it to take any appropriate action.
Dated: April 3, 2008