WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tesco Personal Finance pIc t/a Tesco Bank v. TES Cooperative Bank / Tong Lei
Case No. D2012-0110
1. The Parties
The Complainant is Tesco Personal Finance pIc t/a Tesco Bank of Edinburgh, Great Britain and Northern Ireland represented by Brodies LLP of Great Britain and Northern Ireland.
The Respondent is TES Cooperative Bank / Tong Lei of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <tescobank.net> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2012. On January 23, 2012, the Center transmitted by email to eNom. a request for registrar verification in connection with the disputed domain name. On January 24, 2012, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient because of a wrongly named Registrar, the Complainant filed an amendment to the Complaint on February 1, 2012. The Center verified that the Complaint together with 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 February 2, 2012. On February 2, 2012 the Respondent indicated via email a change in their address. In response, the Complainant amended their Complaint. The Center received this amended Complaint by email on February 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2012. The Response was filed with the Center on February 21, 2012.
The Center appointed William R. Towns as the sole panelist in this matter on February 28, 2012. 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 is a provider of banking and financial products and services in the United Kingdom of Great Britain and Northern Ireland (hereinafter “UK), including telephone and internet banking. The Complainant was formed in 1997 as a joint venture between Tesco Stores Limited (“Tesco”) and the Royal Bank of Scotland (“RBS”). Tesco acquired RBS’ interest in the Complainant in December 2008. Tesco is a well-known international retailer operating in 14 countries, including China, where it entered the market in 2004, and has 105 stores.1 The Complainant operates a website relating to its banking and financial products and services at the URL <www.tescobank.com>.2
Since October 2009 the Complainant has been formally licensed by Tesco to use various trademarks, including TESCO and TESCO BANK, in connection with the Complainant’s business, although it has used TESCO marks informally with Tesco’s consent since as early as 1997. Tesco has several UK trademark registrations for TESCO, the first which issued on March 24, 2000 (filed March 4, 1996) and a UK trademark registration for TESCO BANK issued on April 2, 2010 (filed December 2, 2009). Tesco has authorized the Complainant to commence and prosecute this proceeding. .
The disputed domain name was registered on March 29, 2009, according to the concerned Registrar’s WhoIs records. The record reflects the use of a privacy protection service WhoisGuard to shield the Respondent’s identity as of April 6, 2012, when the Complaint contacted WhoisGuard seeking registrant contact information for the disputed domain name. Thereafter, the WhoIs records were updated to show the Respondent as the domain name registrant. After the filing of the Complaint, a further change in the contact information for the Respondent was made.
The disputed domain name currently resolves to a webpage identifying the Respondent as a “joint venture cooperative bank” owned by three Chinese people – “Tong, Eric and Song”. There is a disclaimer of any relationship with the Complainant, and a reference to a prior domain name dispute which resulted in a transfer of the domain name <tescobank.org> to the Complainant. See TESCO Personal Finance plc t/a TESCO Bank v. Protected Domain Services Customer ID: NCR-1078639, WIPO Case No. D2011-0084 (issued on March 23, 2011).3
The Response indicates the webpage to which the disputed domain name resolved was not created until the Respondent was contacted by the Complainant regarding the present dispute. The record reflects that the disputed domain name otherwise has been passively held by the Respondent since its registration some three years ago.
5. Parties’ Contentions
A. Complainant
The Complainant maintains that the disputed domain name is confusingly similar to the Complainant’s TESCO mark, in which the Complainant asserts rights based on registration and use prior to the Respondent’s registration of the disputed domain name. According to the Complainant, the addition of the work “bank” does not dispel such confusing similarity, as the TESCO mark is registered for and has been used with banking and financial services for many years, even though the Complainant was not formally rebranded as TESCO BANK until October 2009.
The Complainant asserts that the Respondent lack rights or legitimate interests in the disputed domain name. According to the Complainant, the TESCO mark has a global reputation due to Tesco’s retail presence in 14 countries, which generates an annual turnover of £54.3 billion. Further, the TESCO mark has been used in connection with financial services for more than 10 years in the UK. The Complainant submits on this basis that no third party conceivably could have rights in a domain name comprised of or including the TESCO mark and the word “bank”.
The Complainant observes that the Respondent has made no apparent use of the disputed domain name other than with a webpage containing a disclaimer notice. The Complainant alleges that the Respondent has made no use of or demonstrable preparations to use the disputed domain name with a bona fide offering of goods or services, has not been commonly known by the disputed domain name, and has made no legitimate noncommercial or fair use of the disputed domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, given the global reputation of the Complainant’s TESCO mark, the Respondent was aware of the Complainant’s rights when registering the disputed domain name. The Complainant maintains that, even though the Complainant did not formally begin trading as Tesco Bank until October 2009, it was clear that such was the Complainant’s intention from an earlier stage, and the Respondent’s intent in registering the disputed domain name was to take advantage of the Complainant’s existing and prospective trademark rights. In the circumstances of this case, the Complainant asserts that the Respondent’s passive holding of the disputed domain name establishes bad faith registration and use under Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
B. Respondent
The Respondent asserts that Beijing TES Cooperative Bank Financial Consulting Co., Ltd. is a joint venture of three Chinese people name whose first names are Tong, Eric and Song. According to the Respondent, the domain name <tescobank.net> has nothing to do with the Complainant, but is a combination of the joint venturers’ initials (“TES”), the abbreviation of “Cooperative” (“Co”) and the word “bank”. On this basis, the Respondent asserts that the disputed domain name is not confusingly similar to the Complainant’s TESCO and TESCO BANK marks.
According to the Respondent, Beijing TES Cooperative Bank Financial Consulting Co., Ltd. was registered with the Beijing Administration for Industry and Commerce on March 18, 2009, prior to the registration of the disputed domain name on March 29.2009. The Respondent indicates that the domain names <tescobank.org> and <tescobank.net> were registered on August 18, 2009, under a privacy service. The Respondent asserts that <tescobank.org> was lost in a domain name dispute in February 2011 because the Respondent “made a mistake on domain transfer process, tescobank.org was still under privacy whois data” and because the joint venturers were all on holiday, with only 5 days left on their return before the submission date for the response.
According to the Response, the joint venturers were “very angry” that Tong Lei was contacted by the Complainant seeking the transfer of <tescobank.net> after <tescobank.orgt> had been lost, so they created the website to which the disputed domain name now resolves to declare that the they have no relationship to the Complainant. The Respondent requests that the Panel make a finding of reverse domain name hijacking.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <tescobank.net> is identical to the Complainant’s TESCO BANK mark, and confusingly similar to the Complainant’s TESCO mark. The Complainant has established rights in these marks based on registration and use. While it appears that the Complainant’s rights in TESCO BANK, at least through registration, arose subsequent to the Respondent’s registration of the disputed domain name, the registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity for purposes of paragraph 4(a)(i) of the Policy.4
Regarding the question of identity or confusing similarity, the first element of the Policy functions essentially as a standing requirement.5 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the mark and the disputed domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011.
The disputed domain name is identical to the Complainant’s TESCO BANK mark. The disputed domain name also incorporates the Complainant’s TESCO mark in its entirety, and the Panel finds that the disputed domain name is confusingly similar to the Complainant’s TESCO mark under the above-described standard. The confusing similarity resulting from the use of the Complainant’s TESCO mark is not diminished by the addition of the word “bank”, given that the Complainant’s TESCO mark is registered for and has been used with banking and financial services for many years. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name is identical to the Complainant’s TESCO BANK mark and incorporates the Complainant’s TESCO mark in its entirety. It is undisputed that the Respondent has not been authorized to use the Complainant’s marks. There is no evidence of any active use of the disputed domain name, which currently resolves to a webpage with a disclaimer notice regarding the Complainant, posted only after the Respondent was placed on notice of this dispute.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain names, even if they have acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent appears to assert that the disputed domain name was registered for use in connection with a joint venture, Beijing TES Cooperative Bank Financial Consulting Co., Ltd., which the Respondent avers was registered online with the Beijing Administration for Industry and Commerce (AIC) in March 2009, a short time before the registration of the disputed domain name. However, beyond submitting what is represented as a print out of online application for approval of the name (“Name Registration Application”), the Respondent has submitted no formal documentation issued by AIC attesting to the formation or incorporation of this entity, and no evidence that the Respondent has engaged in any business or commercial activities under this name since March 2009.
The Respondent asserts TESCOBANK (“TES Cooperative Bank”) was chosen as an abbreviated name for the joint venture, comprised of (1) the initials of the first names of the three joint venturers (“Tong, Eric, and Song”), (2) “co”, which the Respondent submits is an abbreviation for “cooperative”, and (3) “bank”. According to the Respondent, the disputed domain name reflects the abbreviated name of the purported joint venture, and not the Complainant’s mark. Nevertheless, Tesco has a significant retail presence in China, and the Respondent does not claim to have been unaware of the Complainant’s TESCO mark prior to registering the disputed domain name (and selecting a name for the joint venture). The Respondent’s selection of an “abbreviated name” for its joint venture that incorporates the Complainant’s TESCO mark, which has acquired a global reputation and is known in China, strikes the Panel as more than mere coincidence. The Panel, based on the relevant circumstances as reflected in the record, considers it more likely than not was that the Respondent was aware of the Complainant when registering the disputed domain name. At a minimum, a knowledgeable provider of banking consulting services would likely to have been aware of Tesco’s acquisition of RSB’s interest in the Complainant in 2008. The Panel also notes that there are a number of alternative arrangements of the three joint venturers’ initials to “TES”, and the Panel is unaware of any naming convention under which “co” serves as an abbreviation or acronym for “cooperative” (as opposed to “coop” or “co-op”).
Regardless, the Respondent has failed to meet its burden under paragraph 4(c) of the Policy to come forward with credible evidence of rights or legitimate interests in the disputed domain name. There is no indication in the record that the Respondent has been commonly known by the disputed domain name, and no evidence that the Respondent has ever provided bank consulting services under a name corresponding to the disputed domain name. The record does not reflect either demonstrable preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i), or any legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii). The record in fact, reflects no use of the disputed domain name at all until the Respondent received notice of this dispute, and then only to disclaim any affiliation with the Complainant.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel is persuaded from the record that the Respondent was likely to be aware of the Complainant and the TESCO mark when registering the disputed domain name. The record strongly suggests that the Respondent’s registration of the disputed domain name was speculative in nature, and the Panel is inclined to view the Respondent’s proffered explanation as a pretext, for the reasons discussed under the preceding heading. In short, the Panel concludes from the totality of circumstances in the record that the Respondent more likely than not registered the disputed domain name seeking to take advantage of the Complainant’s trademark rights. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”.
That the Respondent appears to have been passively holding the disputed domain does not preclude a finding of bad faith registration and use in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Considerations that supported a finding of bad faith in Telstra are present in this case as well. The Complainant’s mark has a global reputation, and is not susceptible to use in a generic sense. As in Telstra, there is no evidence of any actual good faith use of the disputed domain name by the Respondent, or of any demonstrable preparations to make a good faith use of the disputed domain name.
The Policy is designed to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, supra. This Panel is persuaded by the totality of the circumstances in this case that the Respondent’s primary motive for the registration of the disputed domain name was cybersquatting. For the reasons set forth above, the Panel finds that the disputed domain name has been registered and is being used in bad faith by the Respondent.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <tescobank.net> be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: March 19, 2012
1 Information regarding Tesco’s operations in these countries may be found in the Tesco PLC Annual Review and Financial Statement, accessible online at www.tescoplc.com.
2 Since becoming a wholly owned subsidiary of Tesco, the Complainant has provided banking and financial services under the trade name Tesco Bank, and began using the TESCO BANK beginning in 2009.
3 The named respondent in this case was a privacy protection service. No formal response was submitted.
4 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.4.