The Complainant is Findomestic Banca S.p.A., of Florence, Italy, represented by Studio Legale Associato Fusi Testa Cottafavi Canu, of Italy.
The Respondent is Dursun Camkerten , of Vienna, Austria respectively.
The disputed domain names <findomestic.name> and <findomestic.org> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2008 relating to the domain name <findomestic.org>. On December 15, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain <findomestic.org>. On December 16, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <findomestic.org> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 18, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 22, 2008 and in its amended Complaint added the domain name <findomestic.name>. On December 22, 2008 the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name <findomestic.name>. On December 22, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response in relation to <findomestic.name> confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2009. The Response was filed with the Center on January 8, 2009.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on January 16, 2009. 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 Complainant is a well-known bank offering consumer credit and financial services that has been in operation since January 1, 1985 and is based out of Florence, Italy. The Complainant is also a member of the BNP Paribas Group.
As evidenced by the numerous Annexes which the Complainant has attached to the Complaint, the Complainant has numerous domestic and international trademarks consisting of variations of the FINDOMESTIC trade name that were filed between February 26, 1985 and February 21, 2007. The Complainant has also registered a number of domain names including <findomestic.com>, < findomestic.net>, <findomestic.biz>, <findomestic.info> and <findomestic.it> between January of 1996 and November of 2001.
The Respondent, as evidenced by an email from the registrar GoDaddy.com, Inc., is the registrant of the domain names <findomestic.org> and <findomestic.name> that were created on June 19, 2006 and has identified himself as “Dursun Camkerten”,an individual addressed in Vienna, Austria.
Throughout its Complaint and the accompanying Annexes, the Complainant has presented significant evidence that it has utilized the FINDOMESTIC mark both in Italy and throughout Europe in order to develop a leading position in the region for offering both consumer credit and financial services. The Complainant argues that through its numerous trademarks and domain names, as well as its business development activities and efforts in Italy and internationally, that it as well as the FINDOMESTIC trademark have attained a high level of notoriety and reputation. As a result, the Complainant avers that any use of the term “findomestic” would likely be construed as emanating from the Complainant.
In arguing its case under paragraph 4 of the Policy, the Complainant argues that the domain names <findomestic.org> and <findomestic.name> have been registered after the registered and common law trademarks and domain names of the Complainant. Furthermore, the Complainant states that the element “findomestic” is the unique portion of the Complainant's business which the disputed domain names wholly incorporate. The Complainant further alleges that due to the above similarity, there is a strong likelihood that confusion would arise between the disputed domain names and the Complainant's marks.
In satisfying the requirements under paragraph 4(a)(ii) of the Policy, the Complainant first alleges that they have over the years acquired a number of rights in the FINDOMESTIC mark. The Complainant notes that both <findomestic.org> and <findomestic.name> lead to a similar website in Italian which allows visitors to provide commentary, news and other services with respect to the Complainant's actual business as well as provides links to unaffiliated third parties.
Additionally, the Complainant argues that the Respondent has not shown that he is commonly known or associated with the disputed domain names. The Complainant also contends that the Respondent has not been issued a license or other authorization to use the Complainant's FINDOMESTIC marks. As a result the Complainant contends that there is no indication that the disputed domain names are being used in a legitimate noncommercial manner and the Respondent has not provided or demonstrated any type of right or legitimate interest in the disputed domain names.
In buttressing this element of their Complaint, the Complainant further avers that the Respondent is using the domain names to misleadingly divert consumers away from the Complainant's website and thus disrupt the Complainant's business. Additionally, the Complainant alleges that the Respondent has intentionally tried to create a likelihood of confusion between the Complainant's mark and the Respondent's website and to commercially benefit as a result.
In arguing the final element under paragraph 4 of the Policy, the Complainant alleges that the Respondent registered the disputed domain names in bad faith due to the fact that the Respondent likely had knowledge of the Complainant's prior existence, rights and worldwide reputation. The Complainant notes that the term “findomestic” was chosen arbitrarily by the Complainant in order to describe its own business and that the word garnered a significant amount of notoriety, visibility and reputation over the years. Due to this fact, as well as the fact that the Respondent has used a generic term not usually associated with credit services, the Complainant argues that the Respondent could not have denied his knowledge of the existence of the Complainant. The fact that users on the disputed websites are posting commentary and news on the Complainant's business further demonstrates this. As a result, the Complainant argues that the domain names were registered in bad faith.
The Complainant further alleges that the Respondent is also using the disputed website for his commercial advantage and with companies that are direct competitors of the Complainant. Furthermore, the Complainant alleges that a portion of the Respondent's website provides an opportunity for Internet users to purchase the website, thus further evidencing bad faith.
In terms of bad faith use of the domain names, the Complainant alleges that the Respondent intended to capitalize off the FINDOMESTIC marks notoriety and worldwide reputation associated with the Complainant's business. The Complainant contends that the Respondent, having knowledge of the Complainant's business, sought to benefit commercially and capitalize off its goodwill by registering similar domain name and attempting to confuse visitors to believe the disputed domain names were associated with the Complainant.
The disputed domain names are not subject to any legitimate commercial or noncommercial use and both lead to a website that offers links to different financial services, some of which are those of the Complainant's competitors. The Complainant also alleges that a number of consumers are actively being confused by the Respondent's domain names and as a result the Respondent has disrupted the business of the Complainant. The Complainant contends that the Respondent's uses above would not be considered as a bona fide use of the disputed domain names. Furthermore, the disclaimer put on the Respondent's website further emphasizes the nature and extent of the confusion.
In the Respondent's response to the Complainant, the Respondent identifies himself as “Dursun Camkerten” an individual addressed in Vienna, Austria.
In response to the Complainant's contentions, the Respondent first alleges that he had no knowledge of the Complainant's trademark or business as they are not located within Austria. The Respondent further notes that the Complainant's international trademark was registered on June 20, 2006, one day after the Respondent's domain name registration and that the trademark was FINDOMESTICABANCA S.P.A and not specifically FINDOMESTIC.
In terms of the Respondent's use of the disputed domain name, the Respondent notes that <findomestic.org> is still in development and that the intention was to create a multilingual, international forum where individuals can write about anything and everything with ease. In this regard, the Respondent argues that confusion between the Complainant's business and marks and the disputed domain name is unlikely as the Complainant is a financial institution.
In terms of the Italian nature of the disputed domain name <findomestic.org>, the Respondent notes that individuals began posting comments in Italian on the website and as a result the Respondent installed a free Italian translation pack to accommodate these individuals. The Respondent claims that he has not had time to install other languages but once registered, users could do this on their own.
In responding to the Complainant's contentions under paragraph 4(a)(iii) of the Policy, the Respondent argues that he did not have any bad faith during registration or during the use of the domain names. The Respondent notes that while he utilized some advertisements on the domain names to pay server expenses, any advertisements of the competitors of the Complainant were not intentionally included.
In terms of any sale, the Respondent avers that selling the domain names was not his actual intention, but that the Respondent was not opposed to considering offers. The Respondent notes that he had a prior offer which he turned down and now is of the opinion that he would not sell the domain names regardless of the asking price. The Respondent also argues that the initial ambiguity over his identity was not done in bad faith, but the Respondent only wanted to protect his privacy, which the Respondent argues was possible with the registrar GoDaddy.com, Inc.
In terms of the use of the domain names, the Respondent contends that users were free to write what they wanted and that there was no intended or actual similarity between the websites portrayed on the disputed domain names and the Complainant's websites. The Respondent argues that the disclaimer incorporated on the disputed domain names was an alternate solution to the Complainant's ultimatum to transfer the domain names.
As a result of the above as well as the fact that the Complainant's international trademark was registered after the disputed domain names, the Respondent contends that no bad faith was evidenced during registration or in the subsequent use of the domain name.
In accordance with the Rules, a panel is required to render its decision “on the basis 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.” (Rules, paragraph 15(a)).
Additionally, a complainant must establish each element of paragraph 4(a) of the Policy, which is as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The complainant must establish the three elements above regardless of whether the respondent replies to the complaint. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.
The Complainant has provided a number of records evidencing that the Complainant registered the FINDOMESTIC mark as early as 1985 with a number of additional variations incorporating the mark over the years. Additionally, the Complainant has provided evidence through the Annexes that they have also registered a number of domain names including <findomestic.com>, <findomestic.net>, <findomestic.biz>, <findomestic.info> and <findomestic.it> as early as 1997.
In addition to the registration evidence, the Complainant has also presented evidence of its services and activities both in Italy and internationally through evidence relating to the brand exposure of the FINDOMESTIC mark, publications by the Complainant, marketing, advertisements, as well as the services offered by the Complainant's business. In light of the extent of the Complainant's activities, the Panel finds that a certain amount of goodwill and reputation has become associated with the FIDOMESTIC mark. The majority of the Complainant's registrations and use of the FINDOMESTIC mark predate the registration of the Respondents domain name.
Furthermore, the Panel finds that Respondent's disputed domain names of <findomestic.org> and <findomestic.name> both wholly incorporate the Complainant's trademark FINDOMESTIC. Both the Respondent's domain names are identical to Complainant's FINDOMESTIC trademark. Additionally, the Panel disregards the addition of both the suffixes “.org” and “.name” as irrelevant distinctions that do not alter the likelihood of confusion in this instance. Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709. Additionally, the Panel finds that since the Complainant owns a number of similar domain names as stated above, the likelihood of confusion would be further increased.
As a result the Panel finds that both of the disputed domain names are confusingly similar to the FINDOMESTIC mark in which the Complainant has rights.
In accordance with paragraph 4(a)(ii) of the Policy, the complainant is now required to make a prima facie case that the respondent lacks rights or a legitimate interest in the disputed domain name. Thereafter it becomes the respondent's burden to demonstrate that it has rights or legitimate interests in the domain name. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (See also Belupo d.d. v. WACHEM d.o.o, WIPO Case No. D2004-0110). Paragraph 4(c) of the Policy provides the respondent with a non-exhaustive list of circumstances that may be used to demonstrate to the panel that the respondent has legitimate interests or rights in the domain name.
In establishing its claim in this regard, the Complainant has evidenced its rights to the FINDOMESTIC trademark both in Italy and in the region. Additionally the Respondent has not presented any evidence that the Complainant has provided him with a license or other authorization to use the FINDOMESTIC mark. In terms of whether the Respondent has become commonly known by the domain names, the Panel does not find the Respondent's argument that the domain name <findomestic.org> was independently renowned as very convincing. The Panel believes, on a balance of probabilities, that the domain names' notoriety and Internet exposure came as a result of appearing to be associated with the Complainant in one way or another.
Although the Respondent argues that as an individual in Austria he was not aware of the Complainant's marks or business, the Panels finds that the Respondent likely had constructive notice of the Complainant, if not actual notice, as a result of Internet users confusing the Respondent's website as being associated with the Complainant. See Scania CV AB v. Leif Westlye, WIPO Case No. D2000-0169. The fact that the Respondent incorporated a disclaimer potentially even acknowledges the existence of the confusion with the Complainant's business.
The Panel also finds that the Respondent has failed to present a circumstance under paragraph 4(c) of the Policy or any other viable reasoning that the Respondent has rights or a legitimate interest in either of the disputed domain names. Presently both disputed domain names lead to a similar if not identical webpage in Italian. When translated into English, the majority of the websites at the disputed domain names contain responses from individuals seeking assistance from the Complainant. In fact, even going back to the initial “article” at the domain names, the responses are from users that have mistakenly associated the domain names to be associated with the Complainant's business.
In this case, the Respondent is not making a legitimate noncommercial use of the domain names as in the Respondent's own document he acknowledges originally maintaining advertisements on the website to pay his server expenses. Even with the advertisements, such a use would not be considered a bona fide use as the domain names were confusingly similar to those of the Complainant and being seemingly used to perpetuate confusion among Internet users. Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548. Additionally, the Panel finds that the Respondent is not commonly known by the disputed domain name as a significant part of the data on the websites pertains in one way or another to the business of the Complainant.
Although the Respondent contends that the websites was to be used as an international forum for the free communication of ideas, this objective has not been evidenced. Additionally, the fact that the domain names are in Italian, as well as the references to the business of the Complainant, lead the Panel to the conclusion that the Respondent was not making or able to demonstrate that he had any rights or legitimate interests in the disputed domain names.
As a result the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Under paragraph 4(b) of the Policy, a number of instances that constitute bad faith registration and use are provided. In addition to the non-exhaustive list of circumstances, a panel is also able to draw inferences about bad faith registration and use in light of the various facts and circumstances of each case. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In this case the Complainant has presented evidence that the Respondent has offered the disputed domain names for sale to the general public. The Respondent acknowledges that this was the case but that his overall intentions were not to sell. While there is some ambiguity as to this element, there does appear at one point to be an intention to sell the domain names. While the Panel cannot construe the above facts as conclusive as to the bad faith element, it is one element that has led the Panel to its final decision with respect to paragraph 4(b)(ii) of the Policy.
As stated above, the Respondent argues that his intentions were to create a multilingual, international forum for the dissemination of ideas. The present domain names lead to a website in Italian, with a number of services pertaining to the business of the Complainant. Additionally, as evidenced by postings at Respondent's domain names, the majority of the Internet users appear to have confused the Respondent's domain names as being associated with the Complainant.
Paragraph 4(b)(iv) of the Policy states that evidence of bad faith registration and use, can be shown if the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his 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 the website or location or of a product or service on the website or location.
In this case, the Complainant has shown that Findomestic Banca S.p.A has a significant business presence in both Italy and the surrounding region. The Complainant has also shown the extent of the marketing, publications and advertising associated with the business of the Complainant. The Complainant's trademarks and domain name registrations also predate those of the Respondent.
Presently the Respondent has not offered any reason why the disputed domain names were chosen. The Respondent, when registering the disputed domain names, could have reasonably discovered that a number of other variations of the “findomestic” domain names existed and had been owned by the Complainant. Additionally, when the Panel entered “findomestic” into a number of Internet search engines, the first link was to a site of the Complainant. Also, the Respondent has not demonstrated a legitimate purpose for utilizing the disputed domain names. Instead the website is in Italian, references the services of the Complainant who is based out of Florence Italy and contains inquiries as to the Complainant's business.
The Panel is of the present opinion that, on a balance of probabilities, the Respondent intended to benefit from the reputation of the Complainant's trademark and to capitalize by attracting Internet users to the domain names for commercial gain. See Infospace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075. The Complainant has presented evidence that the disputed domain names had links to websites offering financial and consumer credit services that directly compete with those of the Complainant. The Respondent acknowledges that advertisements of that nature were included to pay for server expenses, but that he did not choose the specific websites. The Panel can likely assume though that the Respondent intended to benefit from the Complainant's name based on the fact that he changed the language to Italian, the incorporation of similar colors with respect to the Complainant's website, and the continued operation of the website despite numerous indications from Internet users that there was a potentially grave confusion occurring.
Taken together, the Panel believes that these facts and circumstances are enough to constitute, on a balance of probabilities, that the disputed domain names were registered and being used in bad faith in line with paragraph 4(b)(iv) of the Policy. Additionally, in terms of the disclaimer, previous panels have established that a disclaimer cannot cure bad faith when the bad faith has been established by other facts. See Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869.
In that respect, the Panel finds that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.
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 names <findomestic.org> and <findomestic.name> be transferred to the Complainant.
Nasser A. Khasawneh
Dated: January 29, 2009