WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dukascopy Bank SA v. Sergei Gorneev / Whois Agent
Case No. D2010-2188
1. The Parties
The Complainant is Dukascopy Bank SA of Geneva, Switzerland, represented by Baker & McKenzie, Switzerland.
The Respondent is Sergei Gorneev / Whois Agent of Abinsk, Russian Federation and Bellevue, Washington, United States of America, respectively, appearing per se.
2. The Domain Name and Registrar
The disputed domain name <dukascopy-bank.net> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2010. On December 16, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On December 16, 2010, eNom 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” 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 January 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2011. The Response was filed with the Center on January 30, 2011.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 7, 2011. 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, Dukascopy Bank SA was founded in 2004 and is a leading Forex bank and platform based in Switzerland which employs almost 140 people. The Complainant's primary web presence is at the URL “www.dukascopy.com”. The Complainant relies upon Swiss Trademarks number 585516 for the word mark DUKASCOPY, registered on November 25, 2008 and number P-478567 also for the word mark DUKASCOPY, registered on August 7, 2000. The Complainant provided extracts from the Swiss Federal Institute of Intellectual Property’s database which show the owner of these trademarks to be Dukascopy (Suisse) SA.
The Respondent appears to be an individual based in Abinsk, Russian Federation. On October 13, 2010, the Respondent registered on the Complainant’s website in order to take part in the Complainant’s “Introducing Agent program” and received an automated confirmation from the Complainant that its application had been received. The confirmation stated that the Respondent’s registration would be processed by the Complainant and that the Complainant would assign an account manager who would inform the Respondent “as soon as Dukascopy has taken position on your application”. The confirmation also contained login details which allowed the Respondent to have access to a “temporary IA back office” on the Complainant's website. The Complainant states that the Respondent registered the disputed domain name together with the Russian country code domain name <dukascopy-bank.ru> on or about October 22, 2010. The website associated with the disputed domain name currently displays an “under construction” message.
In early December, 2010, the Complainant initiated correspondence with the Respondent requesting the Respondent to transfer the disputed domain name to the Complainant. The Respondent refused to transfer the disputed domain name and stated that it had a claim for compensation from the Complainant in the sum of 23,000 United States Dollars (hereinafter “USD”) for alleged loss of reputation and costs of setting up support services for the Respondent’s proposed agency. In the Response, the sum claimed is stated to be USD 30,000. The Respondent subsequently offered to sell the disputed domain name together with <dukascopy-bank.ru> to the Complainant for the sum of USD 50,000, failing which the Respondent stated that it would auction both domain names in an international public auction. On December 23, 2010, the Respondent emailed the Complainant providing hyperlinks to a website on which the Respondent was offering the disputed domain name for sale in the sum of USD 100,000.
The Complainant’s “Introducing Agent program” requires potential agents of the Complainant, such as the Respondent, to agree to terms and conditions as part of the online application process. The terms include, inter alia, a requirement that an Introducing Agent Agreement be concluded in writing and (by virtue of clause 9 of the terms and conditions) that an Introducing Agent accept and acknowledge that it has no proprietary interest in and no right to use any intellectual property belonging to the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it owns rights; that the Respondent has no right or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant’s electronic banking business is in very good standing particularly in Switzerland and Russia and its website has become well-known and frequently visited. The Complainant is referenced under almost 1,000 different websites around the world. The element “dukascopy” of the disputed domain name is identical and obviously similar to the Complainant’s DUKASCOPY trademark. It is further similar to the corporate name of the Complainant, Dukascopy Bank SA, which it contains in its entirety, and is similar to the domain names <dukascopybank.com> and <dukascopy-bank.com> which are the property of the Complainant and which redirect to “www.dukascopy.com”.
The Respondent is evidently aware that the disputed domain name corresponds to the Complainant’s trademark. A person or company would not have registered the disputed domain name if it had not known that Dukascopy Bank is one of the world's leading Forex trading platforms which has become particularly well-known for its leading position on the market. The Complainant has not consented to the Respondent’s use of the Complainant’s trademark and trade name for any domain name. The Respondent has nothing to do with the Complainant or its business, and there are absolutely no indications whatsoever that the Respondent would have rights or legitimate interests in respect of the disputed domain name. There is no evidence whatsoever of the Respondent's use of the disputed domain name in connection with a bona fide offering of goods or services. The Respondent does not use the disputed domain name for a website at all but has only registered it to be able to sell it to the Complainant.
The Respondent has wrongfully claimed that he has acted as agent for the Complainant in Russia. Even if the Respondent had entered into such a relationship, Introducing Agents are only allowed to refer to the Complainant in the content of their websites and to insert "Dukascopy" logos on the same, within the limitations set by the terms and conditions of the program, which apply without distinction to all of the Complainant’s Introducing Agents, and the judgment of the Complainant's Compliance Department. When the Complainant explained the situation to the Respondent and offered an amiable settlement with a possibility to enter into an Introducing Agency Agreement, it became clear that the sole intent of the Respondent was to get cash compensation for the disputed domain name.
The Respondent intends to exploit the fame and goodwill of the Complainant’s trademark and corporate name by diverting Internet traffic intended for Complainant to its website. The Respondent obviously intended to sell the disputed domain name for a price well in excess of its potential out of pocket expenses directly related to the disputed domain name. The express and repeated threat that the Respondent would put the disputed domain name up for sale is compelling evidence of Respondent's bad faith. The Respondent did not make demonstrable preparations to use the disputed domain name before the dispute.
Note: the Respondent appears to have written the Response in Russian and translated this into English. The quality of the translation is not particularly good. Nevertheless, and subject to this limitation, the Panel has attempted to summarise the principal contentions of the Respondent and has done its best to interpret these where the Respondent’s submissions have adopted unusual or unclear phrasing.
The Respondent submits that it has received threats and psychological pressure from the Complainant regarding the disputed domain name. The Respondent has been in partnership with the Complainant but has sustained heavy losses therefrom. The Respondent produces screenshots demonstrating its registration as agent on the Complainant’s website together with its ability and entitlement to log in to the secure part of the Complainant’s website which the Respondent states is for agents only.
The Respondent was confirmed as registered agent on October 13, 2010 and registered the disputed domain name on October 21, 2010. In between these dates the Respondent was an agent for the Complainant and as such the Complainant’s allegation of bad faith is denied. As agent, the Respondent was placed in contact with a manager of the Complainant who assisted with the Respondent’s agent work. During conversations with the Complainant’s manager the Respondent was informed that it could place an agent link on its web page. Accordingly, the Respondent instructed the preparation of an agent website which would introduce the Complainant’s products. The Respondent registered the disputed domain name to use with this website. The website content made it clear that the site operator was an agent of the Complainant.
Following registration of the disputed domain name, the Respondent actively began to fulfill its agent activity, engaging a multilingual customer support team and spending a total of USD 30,000 on this activity and other organizational matters. Thereafter, the Respondent was informed by the Complainant’s manager that it was not allowed to use the disputed domain name. The Respondent was hit psychologically and physically by this and had to halt the work of its support team with immediate effect. The Respondent’s losses were great and accordingly it decided to terminate its agency with the Complainant and seek damages for its losses. The Complainant continued to place the Respondent under psychological pressure and the Respondent attempted to find an alternative means of settlement by selling the disputed domain name to the Complainant. The Respondent is not planning to use the disputed domain name further as it had registered this specifically for its agent site. It continues to seek a settlement with the Complainant by way of a sale of the disputed domain name.
The Respondent asserts that in any event, the disputed domain name consists of the widely recognized terms “Dukas” (a French composer), “copy” and “bank”. The Respondent has the right to use the disputed domain name to communicate with people on these topics. The Complainant does not have rights in the name when used to refer to those terms.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As noted in the Factual Background section above, the owner of the trademarks relied upon by the Complainant is Dukascopy (Suisse) SA. The Complainant does not specify its relationship to the latter entity although both companies appear to share the same business address. The Complainant states that trademark number P-478567 was transferred to the Complainant by its founder, Mr. Andrey Duka. It also states that the Complainant was granted a banking licence in June 2010 and “transformed into Dukascopy Bank SA”. It is possible therefore that Dukascopy (Suisse) SA is the former corporate name of the Complainant, dating from before it obtained its banking licence and thus that the trademark owner and the Complainant are one and the same entity. It is equally possible that Dukascopy (Suisse) SA is a different company within the same corporate group. In any event, the Panel considers that it is extremely likely that both entities are very closely related.
Clearly, if Dukascopy (Suisse) SA is a former name of the Complainant then the Complainant has rights in the trademarks. The situation of a related or subsidiary company however requires further consideration. This is not the first time that the issue has arisen before panels under the Policy and it is addressed within the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“the WIPO Overview”) at Paragraph 1.8 which provides as follows:
“Does a trademark licensee or a related company to a trademark holder have rights in a trademark under the UDRP?
Majority view: In most circumstances a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a mark is considered to have rights in a trademark under the UDRP.”
In light of the above, the Panel considers that it is entitled to find that the Complainant has rights in the trademarks cited in the Complaint irrespective of whether the Complainant and Dukascopy (Suisse) SA are the same, or related entities, provided that in the latter case the Panel follows the majority view set out above.
It has been said that the purpose of the test under paragraph 4(a)(i) of the Policy is simply “to ensure that the Complainant has a bona fide basis for making the Complaint in the first place” (SMART DESIGN LLC v. CAROLYN HUGHES, WIPO Case No. D2000-0993). Based upon the evidence submitted with the Complaint as to the substance of the Complainant and its activities in the financial sector, the Panel has no doubt that the Complainant has a bona fide basis for making the Complaint and that, on the analysis above, the Complainant’s failure to specify whether Dukascopy (Suisse) SA is the former name of the Complainant or a related company is not fatal to its case. In all of these circumstances, the Panel finds that the Complainant has rights in the trademarks cited in the Complaint.
Clearly the trademark DUKASCOPY is entirely incorporated within the disputed domain name but is not identical to it given that the disputed domain name also includes the term “bank”. The Panel considers that “dukascopy” is the dominant element of the disputed domain name and that the additional term “bank” is generic and descriptive. Numerous previous decisions under the Policy have found that the use of descriptive or generic words in addition to a trademark in a domain name do not prevent the domain name from creating a likelihood of confusion. One or more descriptive elements cannot remove the overall impression made on the public by the trademark which is the dominant part of the domain name (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409). Furthermore, the Panel notes that the addition of the word “bank” to the trademark also denotes the Complainant’s corporate name which is likely to lead to even greater confusion. The hyphen in the disputed domain name is of no consequence in that it merely replaces white space which is not permitted within a domain name for technical reasons.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating such rights or legitimate interests.
In the present dispute, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that it has not given any permission to the Respondent to use its trademark and trading name for a domain name, that the Respondent is not connected with the Complainant or its business, and that there is no evidence of the Respondent's use of the disputed domain name in connection with a bona fide offering of goods or services.
The burden of production accordingly shifts to the Respondent to demonstrate that it has rights and legitimate interests. The Respondent's case falls into two parts. In the first place, it asserts that it registered the disputed domain name in connection with a business arrangement with the Complainant (which it describes as a “partnership”) and in the second place, it submits that it has the right to use the disputed domain name to communicate with people on the topics covered by the widely recognized terms “Dukas” (a French composer), “copy” and “bank”.
Taking the subject of the Respondent's alleged business relationship first, the Panel considers that this is akin to the situation where a respondent claims to be a reseller of a complainant’s goods or services. This circumstance has been addressed by the WIPO Overview at paragraph 2.3 as follows:
“Majority view: A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
This approach was originally expressed in the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and in this Panel's view remains a solid foundation for the basis on which a genuine reseller or agent may demonstrate a right or legitimate interest in a domain name. In the present case however there is an added complication in that the existence of any relationship or business connection between the Complainant and Respondent has been called into question. The Complainant asserts that the Respondent is not an authorized agent and the Respondent asserts that it is.
If the dispute was focused only on whether or not the Respondent was an authorized agent of the Complainant and the extent of any implied rights accompanying that designation, it would probably be beyond the scope of the UDRP (Terex Corporation and Genie Industries, Inc. v. Powko Industries LLC, WIPO Case No. D2010-1468). However, in the present case the extent of the rights which the Complainant either would have conferred, or did confer, upon the Respondent via the Complainant’s online process is clearly expressed. Unlike the situation in Oki Data, the Complainant has sought protection via appropriate contractual language, namely clause 9 of its Introducing Agent Agreement which the Respondent was required to accept during the online application process. Thus, the Respondent is either not an agent, as the Complainant contends, or the Respondent is a duly authorized agent but is thereby subject to the restriction provided in the Complainant's terms and conditions. There is no middle ground available to the Respondent.
Taking the Respondent’s case at its highest, in other words assuming that the Respondent is indeed an authorized agent of the Complainant, the Respondent nevertheless was not entitled to register a domain name incorporating the Complainant’s trademark. This was clearly and unequivocally brought to the Respondent’s attention during its completion of the registration process on the Complainant’s website. Accordingly, the Respondent’s use of the disputed domain name in contravention of the agency agreement could not in the Panel's opinion be described as bona fide or giving rise to any legitimate interest. Furthermore, if the test in Oki Data is applied to the present circumstances, it may be noted that the Respondent cannot offer the trademarked services. It is precluded from doing so without the prior agreement and approval of the Complainant’s Compliance Department.
In any event, and in light of the Respondent’s other submissions, the Panel doubts the genuineness of the Respondent’s claim that it has any business relationship with the Complainant. The Respondent states that upon being notified of the Complainant's objections to the disputed domain name the Respondent immediately shelved its business plan, dismissed its large multi-lingual team of support staff at a cost to itself of either USD 23,000 or USD 30,000 (the former is the figure in the correspondence between the parties and the latter is taken from the Response) and put the disputed domain name up for auction to recoup its losses. The Panel considers it wholly incredible that the Respondent would commence an agency arrangement with a financial service provider and, when told that it could not use a particular domain name in connection with such agency, would instantly shelve its plans and dismiss its team at considerable cost. Any agent or potential agent in this position would simply check with its principal as to what was permissible and would then proceed with a non-infringing domain name, for example, one related to its own business name or something of a more generic nature. These submissions give rise to a distinct impression in the Panel's mind that the Respondent's claims of “partnership” were merely a ruse designed to create the appearance of rights or legitimate interests in the disputed domain name. That impression is fortified by the fact that the Response consists largely of assertions which are not accompanied by supporting evidence.
Equally, the Respondent’s claim that the disputed domain name is composed of commonly used terms does not sit well with the notion that it had any business relationship with the Complainant. It is entirely clear from the Response, and indeed is a central pillar of the Respondent's case, that the Respondent registered the disputed domain name in connection with its plan to set up in business as an agent of the Complainant. As such, the Respondent evidently registered the disputed domain name for its value as a representation of the Complainant's trademark and corporate name and not because of any alleged generic components. In these circumstances, the Respondent's suggestion that it has legitimate interests in the disputed domain name in connection with the individual word elements “Dukas”, “copy” and “bank” is wholly without merit.
In all of the above circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
On this topic, the Complainant’s submissions focus principally on the Respondent’s offer to sell the disputed domain name to the Complainant for the sum of USD 50,000 and subsequently on the open market for the sum of USD 100,000 together with the assertion that the Respondent intended to exploit the fame and goodwill of the Complainant’s trademark and corporate name by diverting Internet traffic intended for Complainant to its website. The Respondent replies that it registered the disputed domain name in good faith in connection with the “partnership” arrangement and that it only proposed to sell the disputed domain name to recoup its losses following the breakdown of that relationship.
The question of the Respondent’s agency and of its actions following notification of the Complainant’s objections to the disputed domain name have already been considered in the preceding section. In the opinion of the Panel, the Respondent’s submissions are both unconvincing and lacking any proper evidential basis. In addition to the obvious implausibility of the Respondent’s various claims, the Respondent’s stated plans for the disputed domain name are contradictory; on the one hand the Respondent submits that it is not planning to use the disputed domain name further yet on the other indicates that it may use it to communicate with people regarding what it states are the widely recognized terms “Dukas”, “copy” and “bank”.
In all of these circumstances, the Panel concludes that it is more likely than not that the Respondent’s primary motivation in registering the disputed domain name was to sell it to the Complainant for valuable consideration in excess of its documented out of pocket costs directly related to the domain name and that as such, the Respondent registered and used the disputed domain name in bad faith. Accordingly, the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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, <dukascopy-bank.net> be transferred to the Complainant.
Andrew D. S. Lothian
Dated: February 18, 2011