WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BG Bank v. Inikernet Solutions S.A.
Case No. D2002-0876
1. The Parties
The Complainant is BG Bank, a division of Danske Bank A/S, a public limited liability company under the laws of Denmark, with Denmark as its principal place of business.
The Respondent is Inikernet Solutions S.A., a company based in Spain.
2. The Domain Name and Registrar
The domain name at issue is <bgbank.net> which is registered with Core Internet Council of Registrars ("the Registrar") of Geneva, Switzerland.
3. Procedural History
A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on September 19, 2002, and in hardcopy on September 24, 2002. An Amendment to the Complaint was received by the Center by e-mail on September 30, 2002, and in hardcopy on October 3, 2002, (the original) and October 7, 2002 (copies by fax). An Acknowledgement of Receipt was sent by the Center to the Complainant, dated September 19, 2002.
On September 19, 2002, a Request for Registrar Verification was transmitted to the Registrar.
On September 25, 2002, the Registrar stated that it was not in receipt of the Complaint, but confirmed that the domain name at issue, was registered with the Registrar and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details and confirmed that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the domain name.
The Registrar has currently incorporated the Policy in its agreements. The Policy was adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999. There is no evidence that the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the Respondent is bound by the provisions of the Policy.
The Panel has determined that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on October 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of October 27, 2002, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by post/courier, facsimile and e-mail to the addresses indicated in the Complaint.
On October 28, 2002, having received no Response from the Respondent the Center transmitted to the parties a Notification of Respondent Default. On November 5, 2002, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr. Jonas Gulliksson.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules. The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent.
4. Factual Background
The Complainant and its Registered Trademarks
The Complainant alleges that it has used the company name BG Bank A/S since 1995, when the name was founded as a result of a merger between the two banks Bikuben A/S and Girobank A/S in Denmark. The Complainant owns several applications and registered trademarks regarding the trademark "BGBank" in Denmark and the European Community, among these see Annex IV to the Complaint. The trademarks are applied for and registered in international classes 9, 16, 35, 36, 38, 41 and 42. The Complainant has also registered the domain names <bgbank.dk>, <bgbank.com>, <bgbank.biz> and <bg-bank.info>, re Annex V to the Complaint.
5. Partiesí Contentions
(1) The Domain Name is Identical or Confusingly Similar to a Trademark in which Complainant has Rights
The Complainant is a Danish company specialized in banking and financial affairs. The Complainant's main business market is Denmark and with approx. 518 branches and an Internet bank the Complainant is the largest bank in Denmark. Complainant further holds branches in e.g. Luxembourg, London (UK), New York (USA), Germany and Spain, re Annex III to the Complaint.
The Complainant has used the company name BG Bank A/S since 1995, when the name was founded as a result of a merger between the two banks Bikuben A/S and Girobank A/S. Until 2000, BG Bank A/S was the third largest bank in Denmark. The Complainant then merged with Danske Bank A/S, but continues to trade under BG Bank and has no intention of ceasing this use.
"Bgbank" is the closest Internet language version of the trade name and trademark "BG Bank", which is confirmed by the fact that the Danish home page of the Complainant can be reached under exactly the same domain name in the Danish cctld .dk, re Annex V to the Complaint. Thus, the contested domain name is identical with Complainant's trademark, domain name and company name.
(2) Respondent has No Rights or Legitimate Interests in the <bgbank.net> Domain Name
In March 2002, the Complainant became aware of respondent's registration of the contested domain name. By letter on March 20, 2002, the Complainant requested transfer of the domain name, re Annex VI to the Complaint. Having received no response the Complainant reminded the Respondent of the matter by e-mail on April 15, 2002, re Annex VII to the Complaint.
Having received no reply the Complainant was informed by telephone conversation on May 24, 2002, by the Respondent that neither the above-mentioned letter nor the e-mail had reached the Respondent. Accordingly by letter on May 14, 2002, the Complainant repeated the request for transfer of the contested domain name, re Annex VIII to the Complaint.
Respondent replied by e-mail on May 22, 2002, re Annex IX to the Complaint, stating "there is no objection to transmitting this domain to your client, BG Bank A/S, under a contract of sale".
By e-mail on June 6, 2002, Complainant maintained that Respondent should consent to transferring the contested domain name, re Annex X to the Complaint. The Complainant was willing to hold the costs involved in a transfer, but was not interested in buying the domain name. The Respondent did not reply to this e-mail despite being reminded twice thereof, re Annex XI to the Complaint.
The Complainant has no connection or affiliation with Respondent and has not consented to Respondent's use of the contested domain name.
Respondent has not participated with an explanation as to the reason why he has acquired the domain name. However, the Respondent has not claimed to be commonly known by the contested domain name. From Respondent's homepage "www.inikernet.com" it appears that Respondent offers IT-solutions, re Annex XII to the Complaint. The word "bank" generally refers to banking and financial services. The Complainant cannot see how an IT company can have any legitimate interests in a domain name containing the word "bank".
Based on the above factual grounds the Complainant is of the opinion that Respondent's registration of the contested domain name constitutes an infringement of the intellectual property rights of the Complainant, and that the Respondent has proved no rights or legitimate interests to the contested domain name. Further Respondent has shown no bona fide intentions of offering of goods or services, nor is he making a legitimate non-commercial or fair use of the domain name by showing any business or personal plans for use. Thus the domain name could eventually mislead consumers and tarnish the trademark of the Complainant.
In view of the foregoing, Complainant submits that the Respondent lacks any rights or legitimate interest in the <bgbank.net> domain name.
(3) Respondent Registered and is Using the <bgbank.net> Domain Name in Bad Faith
To the best knowledge of the Complainant only the Complainant uses BG BANK as a business name. Due to the well-known and established status of the Complainant, also in Spain where the Complainant holds branches, it must be clear to the Respondent that the contested domain name can only refer to the Complainant.
The only reply the Respondent has made to the Complainant contained an offer to sell the contested domain name to the Complainant. This indicates that the domain name was registered with the purpose solely of offering to sell the contested domain name to the Complainant.
According to the Policy and prior cases, e.g. WIPO Case No. D2000-0003, the stating of bad faith is not limited to positive actions. The contested domain name has been registered since March 2000, without having an active homepage. Thus, the Respondent's registration prevents the Complainant as a trademark owner from reflecting the mark in a corresponding domain name.
Moreover, Respondent has not in any way been participating in documenting any possible bona fide use of the contested domain name.
Therefore, the Complainant finds that Respondent has registered and used the domain name in bad faith.
Finally, Complainant has requested the Administrative Panel to issue a decision by which the contested domain name is transferred to Complainant.
Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
The Panel is of the opinion that the domain name at issue is identical to Complainantís mark "BGBank".
The Respondent has not proven that he has any prior rights or legitimate interests in the domain name.
The prerequisites in the Policy, Paragraph 4(a)(i) and (ii) are therefore fulfilled.
Paragraph 4 (a)(iii) of the Policy further provides registration and use in bad faith.
Given Respondentís failure to file a Response in this case, the Panel accepts as true all the allegations of the Complaint. Respondentís default does not, however, translate into an automatic ruling for the Complainant. To the contrary, the Complainant still must establish a prima facie showing that, under the Policy, it is entitled to transfer of the domain name.
According to paragraph 4(b)(i)-(iv) of the Policy the certain circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
The Panelist does not find that the circumstances under paragraph 4(b)(ii)-(iv) are at hand in this particular case. The Panelist has therefore considered whether the circumstances under paragraph 4(b)(i) could be applicable to this case.
The Panelist is of the opinion that the fact that the Respondent has offered to sell the contested domain name to the Complainant upon having been contacted by the Complainant on several occasions is not sufficient to establish bad faith. Furthermore, the contested domain name has been registered since March 2000, during which time the Respondent has not made any attempt to contact the Complainant for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. For bad faith it is necessary that the acquisition of the domain name and use thereof is "primarily" meant for the transfer to Complainant and it is on this point that the Complainant has failed to present necessary proof.
The Panelist would like to mention that he is aware of WIPO Case No. D2002-0643 in which the Complainant was the same entity as in the present case, namely BG Bank. The contested domain name in this case was <bgbank.info> which was transferred to the Complainant.
The Panelist is of the opinion that the circumstances in the <bgbank.info> case were different than in the present case. In the <bgbank.info> case the Respondent admitted that he was aware of the existence of the Complainantís name in Denmark and that he intended to promote on his website the Cadiz coastal line between Bolonia and Gibraltar to Danish tourists. Consequently, the intention was to direct the contents of the website and the domain name towards the Danish market. In view of these facts in combination with the obvious notoriety of the trademark BG BANK in Denmark, it could be inferred that the Respondent was in bad faith. Evidence of such circumstances have not been presented by the Complainant in the present case.
Consequently, the panel concludes that there is no proof that the domain name was primarily acquired and used for assignment to Complainant in accordance with paragraph 4 (b)(i) of the Policy.
However, according to the Policy and prior cases, e.g. WIPO Case No. D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows, the stating of bad faith is not limited to positive actions. It is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith. The Panelist has therefore considered whether, in the circumstances of this Complaint, the passive holding of the domain name of the Respondent amounts to the Respondent acting in bad faith.
According to the Complainant the fact that the contested domain name has been registered since March 2000, without having an active homepage and the fact that the Respondent has not been participating in documenting any bona fide use of the contested domain name constitutes evidence of registration and use in bad faith.
However, the Panelist does not find these circumstances sufficient in order to prove bad faith on behalf of the Respondent
Having found that the Complainant has failed to meet these requirements, the Complaint must be rejected.
Complainant has failed, on this record, to satisfy Paragraph 4 (a) (iii) of the Policy. The Panel therefore denies the Complainantís request that the domain name <bgbank.net> be transferred from Respondent to Complainant.
Dated: November 18, 2002