WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ABN AMRO Bank N.V. v. Domains By Proxy, Inc. / Ronald Huisman, Kentra
Case No. D2010-2243
1. The Parties
Complainant is ABN AMRO Bank N.V. of Amsterdam, the Netherlands, represented by Kennedy Van der Laan, the Netherlands.
Respondent is Domains By Proxy, Inc. / Ronald Huisman, Kentra of Scottsdale, Arizona, United States of America, of Bussum, the Netherlands, of Naarden, the Netherlands, of Uithoorn, the Netherlands and of Encinitas, California, United States of America, respecitively.
2. The Domain Names and Registrar
The disputed domain names <abnamromarkets.info>, <tradebox.info>, <tradeglobe.info> (the “Domain Names”) are registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2010. On December 22, 2010, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Domain Names. On December 23, 2010 and December 28, 2010, Wild West Domains, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 29, 2010, providing the registrant and contact information disclosed by Wild West Domains, Inc., and inviting Complainant to submit an amendment to the Complaint. Complainant filed an Amended Complaint on December 30, 2010.
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 Respondent of the Complaint, and the proceedings commenced on January 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2011. Respondent submitted multiple email communications to the Center, which the Panel shall consider as the Response.
The Center appointed Dinant T.L. Oosterbaan 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
Complainant ABN Amro Bank N.V. (also: “ABN AMRO”) is a large financial institution. It has various Benelux, Community and United States trademarks, including the marks ABN AMRO, TRADEBOX and TRADEGLOBE.
From the voluminous file of a few hundred pages it appears to the Panel that since 2006 Respondent has a dispute with Complainant for an amount of EUR 19.500, as the online tradebox trading platform of Complainant was offline on a particular day. This domain name dispute is part of the larger dispute between parties.
On December 24, 2010, upon request of Complainant the Amsterdam District Court granted an ex parte preliminary injunction against continued use by Respondent of the Domain Names.
5. Parties’ Contentions
According to Complainant it has various Benelux, Community and United States trademarks, including the trademarks ABN AMRO, TRADEBOX and TRADEGLOBE. These three trademarks are used in the websites of Complainant with the names “www.abnamro.nl”, “www.tradebox.nl” and “www.tradeglobe.nl”.
Complainant acquired the trademarks ABN AMRO and TRADEBOX before the registration of the Domain Names by Respondent. The Benelux TRADEGLOBE trademark was registered by Complainant on September 6, 2007, while Respondent registered the Domain Name <tradeglobe.info> on June 26, 2007. According to Complainant the marketing campaign for its tradeglobe services started on June 12, 2007, and according to Complainant Respondent knew of the pending widespread announcement of the new services at the time it registered the Domain Name <tradeglobe.info>.
According to Complainant the Domain Names are identical or confusingly similar to the trademarks of Complainant. According to Complainant Respondent has no rights or legitimate interests in the Domain Names.
Complainant also contends that the registration and use of the Domain Names is in bad faith as the Domain Names of Respondent <abnamromarkets.info> and <tradeglobe.info> redirect to pornographic websites, while the Domain Name <tradebox.info> is a website with unfounded accusations against Complainant and is offered for sale by Respondent.
In his Response, Respondent explains that after a year of complaining in vain with the management of Complainant and with the Netherlands Financial Services Authority about the loss of EUR 19.500 of unrealized profit, he decided “to claim the ‘Look-a-like’ Domainnames and put a warning to all (small) investors NOT to step in the Tradebox servieces or do any business with ABN-AMRO being an unriliable partner” [sic].
According to Respondent he put a weblog called “The Weblog for Victimized Investors” at the website “www.tradebox.info” while the websites under the Domain Names <abnamromarkets.info> and <tradeglobe.info> were initially redirected to this first website “www.tradebox.info”. In December 2010 the two websites using the Domain Names <abnamromarkets.info> and <tradeglobe.info> were redirected to pornographic websites as - according to Respondent - “a last hope to force a discussion with the New Management”. According to Respondent this redirection prompted the actions of Complainant.
Respondent also contends that Complainant did nothing for many years and that there are many other websites using the words “trade globe” and “trade box”.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
The Panel is satisfied that the Domain Names and associated websites are all subject to the common control of Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed Domain Names are identical to or confusingly similar to a trademark in which Complainant has rights.
Complainant has established that it is the owner of numerous Benelux and other trademark registrations for ABN AMRO, TRADEGLOBE and TRADEBOX. With the exception of the TRADEGLOBE trademark, all Complainant’s registrations predate the creation date of the Domain Names. The Panel will deal with this timing issue in its discussion under the third element of paragraph 4(a) of the Policy.
The disputed Domain Name <abnamromarkets.info> incorporates the entirety of Complainant’s well-known ABN AMRO trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety.
The other two disputed Domain Names are identical to the trademarks of Complainant.
The Panel finds that Complainant has proven that the Domain Names, comprised solely of Complainant’s trademarks in their entirety or with the addition of a generic term and the top level domain descriptor “.info” are identical to or are confusingly similar to Complainant’s trademarks.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Names.
At the time the Complaint was filed, two of the three Domain Names (<abnamromarkets.info> and <tradeglobe.info>) redirected to a pornographic website. In the Panel’s view such redirection tarnishes the trademarks of Complainant and that such use cannot be considered a legitimate fair use of the Domain Names. In the Panel’s view, this cannot be considered as a legitimate interest.
Respondent’s use of the third Domain Name <tradebox.info> was also intended or had the result to tarnish the reputation of the trademarks of Complainant. According to the first full paragraph of the response filed by Respondent the intent was the following: “The action I made with ‘loo-a-like’ domain names <tradebox.info>, <tradeglobe.info> and <abnamromarkets.info> were ment to force this big Bank ABN-AMRO to settle my dispute I have already since 4,5 years” [sic].. In the Panel’s view, this cannot be considered as a legitimate interest.
Moreover, in accordance with one of the views as expressed in the answer to question number 2.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademarks, the Panel is of the opinion that Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the Domain Names have been registered and are being used in bad faith.
The evidence submitted by Complainant about the bad faith registration of the Domain Name <tradeglobe.info> could have been more convincing given that the Benelux TRADEGLOBE trademark registration of Complainant was granted after the Domain Name <tradeglobe.info> was registered by Respondent.
Complainant argues that Respondent could have checked the earlier filing of the TRADEGLOBE trademark and that there was a widespread marketing campaign (although it only offered as evidence a marketing plan of its advertising agency, not actual marketing publications).
Respondent, for its part, did not refute the allegation of Complainant that he was aware of the Trade Globe name and stated (see the two quotes above under paragraph 5.B and 6.B) that he chose “look-a-like” Domain Names. These quotes suggest that Respondent at the time of registration of the Domain Name <tradeglobe.info> was likely aware of the services offered or to be offered by Complainant using the Trade Globe name and the later TRADEGLOBE trademark and thereby registered this Domain Name in bad faith. ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669 (“For the purposes of the Policy, a domain name registration can have been undertaken in bad faith even if the trade marks rights at which such bad faith was directed arose after the registration of the domain name.”)
The Panel also takes into account the view most recently expressed in Jappy GmbH v. Satoshi Shimoshita, WIPO Case No. D2010-1001, that the requirement that the domain name “has been registered and is being used in bad faith” can also be satisfied in the absence of express bad faith intent upon initial registration where such registered domain name is being used in bad faith. In practical terms this means that bad faith use plays an important role.1
In view of the intent expressed by Respondent that the action of registration and use of the Domain Name <tradeglobe.info> was intended to force a settlement of a dispute, in combination with the fact the website using the Domain Name <tradeglobe.info> was redirected to a pornographic website at the time the Complaint was filed which in the view of the Panel is express bad faith use, the Panel is satisfied that the bad faith registration and use of the Domain Name <tradeglobe.info> has been established.
With respect to the Domain Names <abnamromarkets.info> and <tradebox.info> the following is mentioned. Respondent did not refute the evidence submitted by Complainant that Respondent on its website offered the <tradebox.info> Domain Name for sale to the general public. In addition, Respondent admitted that the primary purpose of the websites using the three Domain Names, including <abnamromarkets.info> and <tradebox.info>, was to force Complainant to settle the dispute with Respondent. In the opinion of the Panel this in effect can be considered not as only bad faith registration but also as bad faith use of the Domain Names <abnamromarkets.info> and <tradebox.info>, especially as it disrupts the business of Complainant. Finally, the Panel is of the view that the redirection of the website using the Domain Name <abnamromarkets.info> to a pornographic website is proof of bad faith use.
In the view of the Panel it is not relevant in the present circumstances that Complainant did not act for several years against Respondent and that there are several other websites using the tradeglobe and tradebox names. It is a matter of policy whether and when a trademark owner wants to act and it cannot form a bar to the present action of Complainant in the event such action is not taken for some time. This is the more true as Respondent himself initiated the redirection to pornographic websites which obviously prompted the present action of Complainant.
Accordingly, the Panel finds that Complainant satisfies 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 <abnamromarkets.info>, <tradebox.info>, <tradeglobe.info> be transferred to Complainant.
Dinant T.L. Oosterbaan
Dated: February 16, 2011
1 The Panel has also noted the more recent decision Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, but does not find it necessary in the present case to make a finding with respect to the discussion of the conjunctive requirement in that case and in Jappy GmbH, supra.