WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Riyad Bank v J. Boschert
Case No. D2001-1235
1. The Parties
The Complainant is Riyad Bank, a company incorporated under the laws of Saudi Arabia.
The Respondent is J. Boschert of 1402 Hudson Landing, St Charles, Missouri, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <riyadbank.net> (the "Domain Name"). The Registrar of the Domain Name as at the date of the Complaint is Intercosmos Media Group Inc. of New Orleans, Louisiana, United States of America.
3. Procedural History
The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on October 10, 2001, and in hard copy on October 11, 2001. A single member Panel was requested by the Complainant and the fees prescribed under the Supplemental Rules have been paid.
The Center sent the Complainant an "Acknowledgement of Receipt of Complaint" by email on October 15, 2001. The Center sent a request for registrar verification to Intercosmos Media Group Inc. on October 16, 2001, by email. Intercosmos Media Group Inc. responded to the Centerís request by email on October 16, 2001, verifying:
- The Complaint had been received.
- The domain name <riyadbank.net> is registered with Intercosmos Media Group Inc.
- The Respondent is the current registrant of the domain name in dispute.
- The Respondentís contact details.
- The UDRP applies to the Domain Name.
- The current status of the Domain Name is active and paid in full.
The Centerís Formal Requirements Compliance Checklist was completed on October 24, 2001.
The Center sent a "Notification of Complaint and Commencement of Administrative Proceeding" to the Respondent by courier (to the one postal address given as the Registrant, Administrative, Technical and Billing Contact in the Network Solutions database) and by email (to the one address given in the Network Solutions database) and to the Complainant by email on October 24, 2001.
The Respondent sent a Response to the Center by email on November 14, 2001. The Center sent an "Acknowledgement of Receipt (Response)" to the Respondent by email on November 16, 2001. The Response included an allegation that the Complainant was engaging in Reverse Domain Name Hijacking, that is, that the Complainant was using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.
The Complainant sent an enquiry by email to the Center on November 15, 2001, enquiring about whether it had a right to Reply to the Response and deny the allegation of Reverse Domain Name Hijacking. The Center acknowledged receipt of the enquiry by email on November 16, 2001, and noted that the Rules did not provide for Supplemental Filings by either party, and that if the Complainant subsequently filed a purported Reply it would be in the Panelís discretion whether to admit and consider that Reply. The Complainant did not file any purported Reply.
A hardcopy of the Response was received by the Center on November 21, 2001. The Center notified the Respondent by email on November 23 and 29, 2001, and December 3, 2001, that the last page of the original Response was missing, and requested that the Respondent provide it. On December 10, 2001, after the case file was transferred to the Panel, the Center confirmed that the Respondent complied with that request by email.
The Center sent the parties a "Notification of Appointment of Administrative Panel and Projected Decision Date" by email on December 3, 2001.
4. Factual Background
4.1 The Complainantís Activities
The Complainant is a full service commercial bank incorporated in and based in Saudi Arabia. It has 188 branches in Saudi Arabia, one in the United Kingdom (London), an Agency office in the United States (Houston) and a representative office in Singapore.
The Complainant has been trading under the name "Riyad Bank" in Saudi Arabia since its establishment in the city of Jeddah in 1957. Additionally, it has been trading under the name "Riyad Bank" in the United Kingdom since 1984, in the United States since 1990 and in Singapore since 1997.
The Complainantís net income in 1999 was Ä342.6 million and its equity base was Ä2.49 billion. The Complainant is the leader in syndicate lending and project finance in Saudi Arabia in the area of corporate banking and finance. In the last two years it has acted as manager for loan syndications totalling Ä11.94 billion. It received "Best Fund Manager" awards over one and three year terms in 1998 and 1999.
4.2 The Complainantís Trade Marks
The Complainant applied to register the words "Riyad Bank" and logo as a trade mark in Saudi Arabia on June 22, 1996. The application is in Class 36 in respect of financial services, No. 34597. Its status is pending.
The Complainant also holds a published United Kingdom trade mark application for "Riyad Bank".
The Complainant owns the domain name <riyadbank.com.sa>.
4.3 The Respondentís Activities
The Respondent registered the domain name <riyadbank.com> on June 18, 1998.
On June 21, 2001, the Complainant initiated proceedings under the Policy by filing a Complaint against the Respondent in relation to the domain name <riyadbank.com>.
On July 5, 2001, the Respondent registered the domain name <riyadbank.net>. In a "rebuttal" filed in the proceeding referred to in the above paragraph, the Respondent stated that <riyadbank.net> was registered "in case [the Respondent] lost the <riyadbank.com> domain name".
On August 24, 2001, the Panel in WIPO Case No.D2001-0820 (Riyad Bank v J. Boschert) ("D2001-0820"), directed Intercosmos Media Group Inc. to transfer the ownership of the domain name <riyadbank.com> from the Respondent to the Complainant.
5. Partiesí Contentions
5.1 The Complainantís Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
In reference to paragraph 4(a)(i) of the Policy, the Complainant asserts that the domain name in dispute, <riyadbank.net>, is identical or confusingly similar to trade marks in which the Complainant has unregistered rights, including "Riyad Bank".
The Complainant asserts that trade marks which have not been registered can be protected under the Policy, and cites a number of WIPO cases as support for this contention. The Complainant particularly notes that in D2001-0820, the Panel decided that "Riyad Bank" satisfies the test for a common law mark. The Complainant also asserts that it has established a reputation under the name "Riyad Bank" sufficient to ground an action in passing off under UK law.
The Complainant asserts that the Respondentís previous arguments in D2001-0820 that the mark "Riyad Bank" contains a geographic or descriptive element are based on the incorrect assumption that the mark refers to a bank that is situated in the city of "Riyad" in Saudi Arabia. Instead, the Complainant notes that:
(a) the capital city of Saudi Arabia is not "Riyad" but "Riyadh";
(b) the Arabic word "riyad" refers to a collection of gardens; and
(c) the Complainant was first established in the city of Jeddah.
The Complainant asserts that, by virtue of the activities it has undertaken since 1957 (see parts 4.1 and 4.2 above), it enjoys a substantial reputation and goodwill in the name "Riyad Bank".
The Complainant asserts that the domain name in dispute, <riyadbank.net>, is identical or confusingly similar to "Riyad Bank", for the same reason that the Panel in D2001-0820 held that <riyadbank.com> was confusingly similar to "Riyad Bank".
In reference to paragraph 4(a)(ii) of the Policy, the Complainant asserts that the Respondent has no legitimate interest in the Domain Name. In particular, it is asserted that the Respondent:
- is not making use of, nor has made demonstrable preparations for use of, the Domain Name;
- is not known by the Domain Name; and
- is not making legitimate non-commercial or fair use of the Domain Name, indeed, that the same information which the Respondent has made available at the Domain Name was held by the Panel in D2001-0820 not to constitute legitimate non-commercial or fair use of the Domain Name;
- was fully aware of the Complainantís rights in the Domain Name at the time of registration, as the Respondent registered the Domain Name after it had received a UDRP complaint in respect of the Respondentís use of the domain name <riyadbank.com>;
In reference to paragraph 4(a)(iii) of the Policy, the Complainant asserts that the Domain Name has been registered and used in bad faith because:
- by registering the Domain Name after registering <riyadbank.com> the Respondent has engaged in a pattern of conduct in order to prevent the Complainant, who owns the trade mark, from reflecting the mark in a corresponding domain name, in accordance with paragraph 4(b)(ii) of the Policy;
- the Respondent was fully aware of the Complainantís rights in the Domain Name at the time of registration.
5.2 The Respondentís Contentions
The Respondent asserts that the Complainant has not made out any of the grounds required to be established under paragraph 4(a) of the Policy and that the Complainant is guilty of Reverse Domain Name Hijacking.
In reference to paragraph 4(a)(i) of the Policy, the Respondent notes that the Complainant has no registered trade mark for "Riyad Bank" and asserts that the absence of registration means the mark does not constitute a trade mark as known to law.
In reference to paragraph 4(a)(ii) of the Policy, the Respondent argues that she has not made use of the Domain Name yet as she is in the process of developing a new web site that will be dedicated to stories about Riyad Bank, opinions from clients and employees of Riyad Bank, and suggestions from Riyad Bank. The Respondent claims that the site will be fully operational in January 2002.
The Respondent argues that this intended use of the Domain Name - to designate a web site for criticism and commentary about the Complainant - constitutes a legitimate non-commercial and fair use of the Domain Name within the meaning of the Policy, that the Respondent is exercising her rights to freedom of speech and that "it is the policy of the Kingdom of Saudi Arabia to stifle this type of freedom of speech". The Respondent asserts that her proposed web site, by operating outside Saudi Arabia, is able to provide criticism of the Riyad Bank without fear of reprisals, as employees and customers are permitted to voice their opinions anonymously.
In reference to paragraph 4(a)(iii) of the Policy, the Respondent notes that the Complainant has failed to demonstrate both bad faith registration and bad faith use, as is required by the Policy.
The Respondent asserts that her interest in the Domain Name is purely for the purpose of providing a forum for clients and employees of the Complainant to voice their concerns regarding the Complainantís activities, and that the Domain Name has not been registered to resell it, nor is it being used to divert customers of the Complainant elsewhere.
The Respondent asserts that her registration of <riyadbank.net> does not prevent the Complainant from reflecting its mark in a corresponding domain name, which was available for the Complainant to register up until July 5, 2001.
The Respondent asserts that the Complainant is simply "attacking freedom of expression".
6. Discussion and Panel Findings
6.1 The Domain Name is identical or confusingly similar to Complainantís mark
The Panel has no doubt that the Complainantís use of the "Riyad Bank" name in relation to the services it has provided for more than 40 years satisfies the test for the establishment of an unregistered "common law" mark. Despite the Respondentís assertions to the contrary, there is abundant authority for the proposition that paragraph 4(a)(i) of the Policy is intended to protect trade marks that have not been registered in any particular jurisdiction. The Panel notes the decision in WIPO Case Nos. D2000-0014 (Bennett Coleman & Co. Ltd v Steven S Lalwani) and D2000-0015 (Bennett Coleman & Co. Ltd v Long Distance Telephone Company)(in which it was, with respect, correctly stated that it is "reputation from actual use which is the nub of the complaint, not the fact of registration as trade marks." There may be any number of reasons why a particular trade mark may not have been registered in a certain jurisdiction, and it is not the role of the Panel to delve into the idiosyncrasies of national trade mark laws.
The Panel is satisfied that the substantial financial activities of the Complainant in Saudi Arabia since 1957, the United Kingdom since 1984, and elsewhere around the world in more recent times, has led to the establishment of a significant reputation by reference to the name "Riyad Bank", which the Panel is also satisfied would likely be sufficient to ground an action for passing off in at least the United Kingdom. The Panel does not consider it necessary to determine the extent to which the name "Riyad Bank" could be said to be purely descriptive or geographical so as to defeat registrability - the fact of actual reputation has been adequately proved.
The Panel is satisfied that the domain name <riyadbank.net> is identical, or at least confusingly similar, to the Complainantís mark, "Riyad Bank". The gTLD suffix ".net" forming part of the Domain Name is incapable of serving any relevant distinguishing function.
The Panel therefore finds that the Complainant has proved paragraph 4(a)(i) of the Policy.
6.2 The Respondent has no rights or legitimate interests in the Domain Name
The Panel is highly sceptical of the Respondentís claims that she is making or intends to make a bona fide use of the Domain Name for the purpose of fair criticism of or commentary about the Complainant and its activities. Since registration of the <riyadbank.com> domain name on June 18, 2001, the Respondent has done nothing to develop such a site. Although she has continually asserted that the web site is "not fully operational" and "under development", and the site itself contains statements that the Respondent has "relatives and friends who worked and who are still suffering at Riyad Bank", the Respondent has not produced a shred of evidence in five months to support these allegations. It seems both extraordinary and convenient that the Respondent claims to have more than one relative and friend who has worked for Riyad Bank, when the Respondent lives in Missouri and the Bank merely has an agent in Houston. The Panel would be far more receptive to such claims were they supported by evidence or even details.
Even if the Panel had found that the Respondent had a bona fide intention to create a site for the purpose of providing legitimate criticism of the Complainant, for such an intention to be sufficient for the Respondent to establish a legitimate interest in the name <riyadbank.net>, the Respondent would also have had to satisfy the Panel that the particular domain name selected was necessary for that critical function to be carried out. The cases are littered with examples of web sites that exist for the purpose of genuine criticism and commentary, and demonstrate that, in the absence of unusual circumstances, it will be rare that a party that chooses for its domain name the exact trade mark of the Complainant will succeed in retaining the name: see for example WIPO Case Nos. D2001-0212 (The Royal Bank of Scotland Group plc v natwestfraud.com and Umang Malhotra), D2001-0505 (Britannia Building Society v Britannia Fraud Prevention) and D2000-0020 (Compagnie de Saint Gobain v Com-Union Corp). The discussion in the last-mentioned case is particularly apposite to the present circumstances:
"The issue at hand is, however, not as Respondent seems to contend, the freedom of speech and expression but the mere choice of the domain name used to exercise this inalienable freedom of speech and expression.
When registering the Domain Name, Respondent knowingly chose a name which is identical and limited to the trademark of Complainant and which is identical to the domain name registered by Complainant in the .com gTLDÖ
Respondent could have chosen a domain name adequately reflecting both the object and independent nature of its site, as evidenced today in thousands of domain names.
By failing to do so, and by knowingly choosing a domain name which solely consists of Complainantís trademark, Respondent has intentionally created a situation which is at odds with the legal rights and obligations of the parties."
The .net gTLD is also not one that typifies the activity in which the Respondent claims an intention to engage.
The Panel finds that the Complainant has proved paragraph 4(a)(ii) of the Policy.
6.3 The Domain Name has been registered and is being used in bad faith
The Respondent was obviously aware of the Complainantís trade mark prior to its registration of the Domain Name. The Panel is satisfied that the registration of <riyadbank.net> during proceedings relating to <riyadbank.com> was opportunistic and evidence of bad faith.
Although there is no evidence that the Respondent obtained the Domain Name for the primary purpose of selling it to the Complainant or a competitor, or to attract Internet users to the site for commercial gain, the Panel is unable to conceive of any rational explanation for the Respondentís registration other than intended bad faith use (apart from the Respondentís fair criticism assertions which the Panel has declined to accept). The Panel is satisfied that the registration of <riyadbank.net>, subsequent to the registration of and during arbitration of the dispute in relation to <riyadbank.com>, was part of a pattern of conduct intended to prevent the Complainant from reflecting its trade mark in a corresponding domain name, and the Panel therefore finds that the Complainant has proved paragraph 4(a)(iii) of the Policy.
The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant.
Accordingly, the Panel orders that Intercosmos Media Group Inc. transfer <riyadbank.net> to the Complainant.
Philip N. Argy
Dated: December 18, 2001