WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MIG Banque SA (MIG Bank Ltd) v. Akram Mohammad Khalid
Case No. D2011-0159
1. The Parties
The Complainant is MIG Banque SA (MIG Bank Ltd), Neuchatel, Switzerland, represented by BMP Associés, Switzerland.
The Respondent is Akram Mohammad Khalid, Makkah, Saudi Arabia, self represented.
2. The Domain Name and Registrar
The disputed domain name <migbankfraud.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2011. On January 28, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On January 30, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.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” 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 February 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2011. No official Response though numerous email communications from the Respondent were received.
The Center appointed Yijun Tian as the sole panelist in this matter on April 18, 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. Following the Panel’s appointment, three further email communications were received from the Respondent, which have also been considered by the Panel to the extent materially relevant.
4. Factual Background
A. The Complainant
The Complainant is a bank licensed to practice in Switzerland in the form of a corporation existing under the laws of Switzerland with registered headquarters in Neuchatel, Switzerland. It is now the largest Swiss bank specializing in online Forex trading services.
The Complainant owns a number of MIG trademark registrations internationally. These include mark registrations made on June 10, 2010 with a priority dating back to December 17, 2009. (Annex 6 of the Complaint).
B. The Respondent
The Respondent registered the disputed domain name <migbankfraud.com> on December 23, 2010.
5. Parties’ Contentions
(a). The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
The Complainant is the largest Swiss bank specializing in online Forex trading services, and provides its services via an online trading platform accessible at ”www.migbank.com”. The Complainant registered the domain name <migbank.com> (Annex 5 of the Complaint) on August 3, 2007.
The Complainant owns the international registrations of MIG trademark. The registration was made on June 10, 2010 with a priority dating back to December 17, 2009.
The disputed domain name includes the registered trademark MIG; it further contains a generic indication (“bank”) which relates to the complainant’s activities; it ends with “fraud”.
The main element of the disputed domain name is identical with the Complainant’s registered trade name.
The present of the word “fraud” cannot eliminate this risk of confusion.
No fraud whatsoever has been committed by the Complainant. Even if the Panel is not the proper jurisdiction to decide on this.
(b) The Respondent has no rights or legitimate interests in respect of the domain name;
The disputed domain name is not used in connection with a bona fide offering of goods or services.
It is used to exert blackmail on the Complainant.
c). The disputed domain name was registered and is being used in bad faith.
The Respondent knew that “MIG Bank” is the name of the Complainant.
Even if the disputed domain name was not active at the date on which this Complainant was filed, it is already clear that it is used in bad faith: the disputed domain name is being used to blackmail on the Complainant.
If the Respondent was to open this website as he has threatened to do so, the domain name would be used in order to publish false and defamatory allegations. This would amount to use in bad faith.
No official Response was received apart from the numerous email communications. In the emails, the Respondent claims inter alia that (previously-referred-to):
The establishment of this lawsuit against the Respondent will harm a third party (the Respondent’s email to the Center on February 3, 2011).
The website at the disputed domain name is designed for ‘warn[ing] users of Internet from the crimes’. (the Respondent’s email to the Centre on February 3, 2011).
The site will alert the Swiss government against the crimes practiced by the mig bank on its territory. (The Respondent’s email to the Center on February 7, 2011).
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(ii) 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.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trademark MIG (the “Trade Mark”) acquired through relevant registration. (Annex 6 to the Complaint).
The disputed domain name <migbankfraud.com> comprises the Trade Mark in its entirety. However, it also contains a generic indication (“bank”) which relates to the complainant’s activities and the addition of the word “fraud”.
Generally a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Case No. 0500065). Thus, the addition “bank” is not distinctive enough to negate the confusing similarity between the disputed domain names and the Trade Mark.
Moreover, the addition “fraud” makes the disputed domain name fall within the category of so-called “sucks” cases (where a trade mark is joined with a negative term). According to the consensus view in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), “generally, a domain name consisting of a trademark and a negative or pejorative term (such as [trademark]sucks.com) would be considered confusingly similar to the complainant's trademark for the purpose of satisfying the standing requirement under the first element of the UDRP (with the merits of such cases typically falling to be decided under subsequent elements)” (Paragraph 1.3.).
The WIPO Overview 2.0, further states: “Panels have recognized that inclusion of a subsidiary word to the dominant feature of a mark at issue typically does not serve to obviate confusion for purposes of the UDRP's first element threshold requirement, and/or that there may be a particular risk of confusion among Internet users whose first language is not the language of the domain name” (Paragraph 1.3.).
It is in any event the Panel's preferred view in these circumstances, including because the Complainant originated in Switzerland, and may have a significant number of non-English speaking customers who may not automatically recognize “fraud” as a pejorative term. As Internet users may not immediately recognize the disputed domain name as involving negative connotations, and because the “fraud” component (when added to the well known trade mark of MIG and the trade name MIG Bank, as the largest Swiss bank specializing in online Forex trading services) is not the most prominent or obvious feature of the name, the Panel finds that the addition “fraud” is not sufficient to negate the confusing similarity between the disputed domain names and the Complainant's trade mark. (See Société Air France v. Mark Allaye-Chan, WIPO Case No. D2009-0327).
Moreover, previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The Panel therefore finds that the additions “bank” and “fraud” are not sufficient to negate the confusing similarity between the disputed domain names and the Trade Mark.
The Panel notes that this finding will not be fatal to the Respondent's case, if the Respondent is in fact operating a true protest site. If this is the case, the “legitimate interest” and “bad faith” elements of the Policy should afford adequate protection to the Respondent. (See Société Air France v. Mark Allaye-Chan, Supra.)
The Panel holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that the Respondent has commonly been known by the disputed domain name; and
(iii) Respondent is making legitimate noncommercial or fair use of the disputed domain name.
The Panel acknowledges that there exists no relationship between the Complainants and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the disputed domain name. Furthermore, the Respondent is not commonly known by the domain name nor is using the domain name in connection with a bona fide offering of goods or services prior to the dispute. In this case to the extent that the Respondent may be able to establish any safe – harbor defence under the second element of the Policy, it is clear that the Respondent would need to rely solely on paragraph 4(c)(iii) to establish rights or legitimate interests.
According to the Policy, the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name (like in the present case), the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441). In the present case, having regard to the numerous email communications made by the Respondent, the explanation provided seems to be that the Respondent was exercising his right to freedom of speech.
The Panel concurs with the views expressed by the Panel in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166, <natwestbanksucks.com>, and in The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No. D2002-0823. "while one must concede that criticism per se is not a commercial use and that a criticism site may well be entirely legitimate, an argument can be made that a non controlled use can be anti-commercial when it has the effect of driving regular customers away from one's business. … the Respondents have used domain names that are identical and substantially similar to Complainants' trademarks to exercise their freedom of expression and this has the direct consequence of tarnishing Complainants' trademarks. Respondents' can very well achieve their objective of criticism by adopting a domain name that is not identical or substantially similar to Complainants' marks. Given the free nature of the media which is the Internet and the chaotic spamming that has become epidemic, it does not appear that one can be at full liberty to use someone else's trade name or trademark by simply claiming the right to exercise a right to freedom of expression".
The Panel notes that, in order to fully exercise free speech rights, is not indispensable to use someone else’s identical or confusingly similar trademark. The same reasoning was followed i.e. in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, Supra; Westminster Savings Credit Union v. Hart Industries Inc., and Gregory Hart, WIPO Case No. D2002-637 and in Bett Homes Limited and Bett Brothers PLC v. Bill McFadyen, WIPO Case No. D2001-1018. For its part, this Panel subscribes to view, as stated in paragraph 2.4 of the WIPO Overview 2.0, and cases cited therein in holding that the right to critize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the Complainant’s trademark.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, according to paragraph 4(a)(ii) of the Policy. Accordingly, the Panel holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:
(i) circumstances indicating that respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain names; or
(ii) respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s websites or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s websites or location or of a product.
The Panel is not limited by the paragraph 4(b) to determine whether the domain name was registered and used in bad faith and the Panel can infer the proof of bad faith also from additional circumstances provided that the two requirements, i.e. (a) that the disputed domain name was registered in bad faith, and (b) that said domain name is used in bad faith are proved. (See The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166).
a). Registered in Bad Faith
The Respondent was certainly aware of the existence of the Complainants’ trademarks at the time of registration of the disputed domain name in light of the prior registrations of domain names identical or confusingly similar to the Complainants’ trademark, a view reinforced here by the content of the front page of the disputed domain name web site clearly referred to the bank. (Annex 3 of Complaint: E-mail sent by Mr. Khalid on January 26, 2011 to MIG Bank).
b). Used in Bad Faith
According to the WIPO Overview 2.0, “a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name.” (Paragraph 1.3.). The Panel finds the disputed domain name does not presently appear to be put in use. . However, according to the WIPO Overview 2.0, passive holding ‘does not as such prevent a finding of bad faith. (Paragraph 3.2.)
The Panel notes that the front page of the Respondent’s web site to which the disputed domain name resolved accuses the Complainant of "financial crimes” and “fraud” which resulted in the Respondent being defrauded by MIG Bank “with amount 177000 USD$ unlawfully…” (Annex 3 of the Complaint). Although there appeared to be a link “learn more” on the front page of the web site (Annex 3 of the Complaint) the Panel sees little if any evidence of the Respondent having clearly explained the "financial crimes" and the other serious accusations on their web site. Moreover, no official Response was received by the Center apart from the numerous email communications. In other words, based on the evidence received, the Respondent neither specifies nor explains the "financial crimes" and the other serious accusations on their web site nor is reference made in the Respondents emails to this issue but for affirming that it did not need to be substantiated.
The Panel concurs with the decision in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, surpa, and The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, Surpa) stating that: "without support, this innuendo serves no purpose other than to tarnish the reputations of Complainants and their trademarks. While Complainants need not know the identity of their accusers to respond to the accusations, Complainants cannot defend themselves against Respondents’ slurs without knowing the facts on which they are based. It is here that Respondents’ free speech arguments fail. Respondents may have a valid basis to denigrate Complainants, but having failed to allege any basis for their slurs on their website, Respondents have not demonstrated that use of their Domain Names is legitimate" …Respondents having failed to provide a better explanation (or any explanation) other than that they sought to tarnish Complainants and their trademarks, Panel finds that Respondents have not engaged in legitimate non-commercial or fair use of the Domain Names, nor have they shown a lack of bad faith sufficient to negate Complainant’s showing of bad faith use and registration."
The Panel concurs with the decision in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, supra, and finds that should the disputed domain name <migbankfraud.com> be registered to “be a true criticism site in order to express the Respondent’s free speech rights, additional content and further explanations should have been added by the Respondent.”
The Panel acknowledges the importance of freedom of speech and recognizes in some instances the legitimacy of a criticism site claimed by the Respondent; however, the Panel is also convinced, as held in other "sucks" cases, that “Respondent can continue expressing themselves through the registration of a domain name other than the ones that may cause confusion or mislead the public; the disclaimer added to the web page published serves little or no purpose in the instant case in view of the general conduct to the Respondent”. (See The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, supra)
In light of the fact that the parties and the facts are coinciding, the panel again concurs with the decision in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, supra, and in The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez supra stating that "the Respondent actions are pointing to an intention to tarnish Complainants' trademarks or dilute their goodwill. Given the very nature of the Internet, the readily free access to a world-wide audience and the impossibility of Complainants to counteract or respond to inaccurate and/or incomplete statements or accusations made by Respondents, the Panel is of the view that the Respondents can achieve the goal of exercising their right to freedom of expression, by using another name. Consequently, the Panel finds that all of this points to bad faith on Respondents' part".
The Panel also indicates that even thought the Policy is not a forum to decide defamation/fraud issues, it is worth highlighting that the instant apparent damage to goodwill does not appear supported by any evidence nor substantiated in the Respondents email communications, is occurring via use of a sign confusingly similar to the Complainants’ registered trademarks, and in this Panel’s view is therefore likely to tarnish and damage those marks. Since the Respondent is not apparently a competitor, this behaviour cannot fall under the provision of paragraph 4(b)(iii) and therefore be considered primarily aimed at disrupting the business of a competitor, but can certainly be considered an additional circumstance evidencing bad faith. (See The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, supra).
In view of the above, the Panel finds that the Respondent registered and used the disputed domain name in bad faith. The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) 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 name <migbankfraud.com> be transferred to the Complainant.
Dated: May 18, 2011