WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Den norske Bank ASA (DnB) v. Anders Foss
Case No. D2004-05758
1. The Parties
The Complainant is Den norske Bank ASA (DnB), c/o Cogent IPC AB, Stockholm, Sweden, represented by Joanna Lundquist of Cogent IPC AB, Sweden.
The Respondent is Anders Foss, Lillehammer, Norway, represented by Svein-Harald Foss, Lillehammer, Norway.
2. The domain name and Registrar
The disputed domain name <dnbnor.com> is registered with TierraNet d/b/a DomainDiscover.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2003. On July 25, 2003, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the domain name at issue. On July 25, 2003, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 July 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2003. The Response was filed with the Center on August 18, 2003.
The Center appointed Madeleine de Cock Buning as the sole panelist in this matter on August 26, 2003. 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 following non-contested facts are derived from the Complaint with supporting evidence submitted and from the Response.
Complainant in these administrative proceedings is Den norske Bank ASA ("DnB"). DnB established in 1990, is Norway’s largest financial group with 7000 employees and 125 offices in Norway. Complainant has its international network with units in Europe, the United States of America and Asia.
Sparebanken NOR was formed in 1990. In 1999, Gjensidige Forsikring and Sparebanken NOR merged to become Gjensidige NOR. Gjensidige NOR is Norway’s second largest financial concern.
Complainant bases its complaint on the following trademarks
(i) two trademark registrations for ”DnB” in Norway with registration numbers 197928, and 197929 (classes 35, 36, 38 and 42), registration date September 9, 1999;
(ii) three international registrations for the trademark ”DnB" alone and in combination with other words, with registration numbers: 701 423, 701 455, 701 458, 701 456 and 701 457 (classes 35, 36, 38 and 42), registration date October 13, 1998.
An application for ”DnB NOR”, application number 200302336, was filed in Norway on March 13, 2003, in classes: 1-45.
On July 1, 2002, the Norwegian press confirmed that the planned merger between DnB and another Norwegian bank Storebrand was annulled. At the same time speculations started in the media about which other financial institutes could be candidates for a merger with DnB. In the press, Gjensidige NOR, as Norway's second largest financial concern, was considered as one of the candidates.
The merger between DnB and Gjensidige NOR was approved by the shareholders in May 2003, while a concession application was filed on May 20, 2003. This was made public on May 19 and 20, 2003.
The disputed domain name <dnbnor.com> was registered by Respondent on July 1, 2002. The website at “www.vannski.net” is identical to the site connected to the disputed domain name. Both domain names are connected to the site for the Asker og Bærum Vannskiklubb, a water-ski club. The site contains information for its members with regard to the activities of the club and contains a section for selling and buying equipment.
After the Complainant had contacted Respondent a slogan was added at the site: ”vannski.net - De nautiske brødres nettside og repos” ("waterski.net – The nautical brothers' website and landing").
Complainant sent his first email to Respondent with the request to transfer the domain name to DnB on March 13, 2003. The Respondent did not reply to this email. Another email was sent on March 18, 2003. The Respondent replied on March 19, 2003:
“I am interested in discussing an owner transfer of the domain name dnbnor.com to Den norske Bank ASA. The domain name is for sale for 5.000.000 nok.” This is the equivalent of approximately EUR 610.000.
In reaction to this, Complainant sent its first cease and desist letter on April 12, 2003. When Respondent did not respond within the timeframe indicated therein, a second cease and desist letter was sent on April 28, 2003.
The Respondent replied on this second cease and desist letter on April 29, 2003, through his legal representative stating that one cannot claim any intellectual property rights to domain names and "that many domain names are registered with the purpose of selling them with a profit". He further indicated that the Respondent was open to sell the domain name to a market price.
In May 12, 2003, a third cease and desist letter was sent to the Respondent in which Complainant offered to compensate the Respondent with NOK 5000 for the out of pocket costs for the domain name.
Respondent replied to the third cease and desist letter on June 17, 2003. He than explained that the domain name was an abbreviation of the slogan “De nautiske brødres nettside og repos” ("The nautical brothers' website and landing") used by the Asker og Baerum water-ski club and that the domain name was not for sale. According to the Respondent, the earlier suggested high price for the domain name proved merely that the Respondent was not willing to sell the domain name.
5. Parties’ Contention
1. The domain name is confusingly similar to Complainants trademarks.
Any person confronted with the domain name is bound to get confused and will certainly relate the domain name to the Complainant. This is the more so since after the merger DnB and NOR will be named “DnB NOR”. There is a considerable risk that the common public will perceive the Respondent’s domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant.
2. Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent has no registered trademark rights or any other rights corresponding to the domain name. The Respondent is not a representative or licensee of the Complainant and no permission has been given to Respondent to use the trademark “DnB” or “NOR” in the domain name.
The late explanation of the Respondent that the domain name is an abbreviation of ”De nautiske brødres nettsted og repos” is not trustworthy. The abbreviation was added after the Complainant contacted the Respondent.
3. The domain name was registered and is being used in bad faith.
● By the registration of the disputed domain name Respondent prevented Complainant from reflecting its company name and well-known trademarks in a corresponding domain name.
Since the awareness of the trademark “DnB” is significant in Norway, it is unlikely that the Respondent was not aware of the trademark when the domain name was registered.
A member of Respondents water-ski club, Pål Martin Olsen, was employed at DnB. Respondent and Olsen may have discussed the alternatives when the merger between DnB and Storebrand was annulled. It is very unlikely that the Respondent was not aware of the potential merger between DnB and NOR when he registered the domain name.
● The Respondent has offered to sell the domain name in excess of his investments and refused the offer to be compensated for his out of pocket costs. Respondent therefore most likely registered the domain name with the purpose of selling it to the Complainant.
● The domain name is presently used to attract, for commercial gain, Internet users to the Respondent’s site by creating a likelihood of confusion regarding whether Complainant is the source, sponsor, affiliate or endorser of the site. Since the disputed domain name has been activated, both layout and content of the site are identical to the site connected to vannski.net. Although Internet users might soon discover that it is unlikely that there is a business relationship between Complainant and Respondent, the Respondent has than already gained website traffic.
1. The domain name is not confusingly similar to Complainants trademarks.
The use of the domain name by the water-ski club is different from the activities of DnB and Gjensidige NOR. There is no possibility for a mix up. Even if the water-ski club uses the domain name as a market place for (advertisements for) second hand water-ski equipment, it has no relation to the activities of DnB and Gjensidige NOR.
The abbreviations DnB and NOR were already used by other companies in combination with other words. The Respondent had therefore no reason to believe that DnB and Gjensidige NOR had sole rights to their abbreviations, separate or in combination with other names.
2. Respondents has a legitimate interest in respect of the domain name
The Respondent is making a legitimate non-commercial and fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant and Respondent are not competitors. The domain name was not registered for the purpose of selling, renting or otherwise transferring it to Complainant. The website is primarily for water-ski enthusiasts.
The domain name <dnbnor.com> is used for the club’s activities and is just drawing the attention of the users to “De nautiske brødres nettside og repos” which has been a slogan for the club. It was natural for the club when creating a website to make a reference to this name.
The slogan “De nautiske brødres nettside og repos” was added after the Complainant had contacted the Respondent because the club was preparing the summer season activities at that time. It was therefore a coincidence in time that the Complainant was in touch with the Respondent before the slogan was added.
The club is using two domain names because the slogan “De nautiske brødres nettside og repos” makes the club different from all other water-ski clubs.
There has never been any information on the site that has mislead the users or offended Complainant.
3. Respondent did not register and used the disputed domain name in bad fait
● There is no evidence supporting the Complainant’s contention that the disputed domain name was registered primarily for the purpose of selling, renting or otherwise transferring the domain name to Complainant or to a competitor of Complainant.
Pål Martin Olsen could not possibly have had any knowledge of a possible merger between the two companies, since he had no access to such information in his occupation. There is no evidence that the Respondent has been aware of the potential merger between DnB and Gjensidige NOR when he registered his domain name. The merger was at that time only based on doubtful speculations, without any factual evidence.
It was not obvious that the name after a possible merger between DnB and Gjensidige NOR would become DnBNOR. There were many alternatives.
When Respondent answered Complainant on March 19, 2003, he offered a price far off a reasonable marked price. It was not the Respondent who offered the domain name to DnB, but the demand from DnB which forced him to give an answer. The Respondent has never actively offered the domain name for sale. It is evident that the Respondent is not in the business of buying and selling domain names.
● Respondent had no intention to exploit the fame and goodwill of the DnB and Gjensidige NOR by divirting Internet traffic intended for the Complainant.
● The domain name has not been registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct.
● It is evident that the Complainant and the Respondent are not competitors, and the domain name was not at all registered to disrupt the Complainant’s business.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.C).
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable
A. Identical or Confusingly Similar
The Policy requires that the disputed domain name be "identical or confusingly similar" to the Complainant’s trademarks.
The disputed domain name is <dnbnor.com>.
The Complainant has provided sufficient evidence of its rights to the DNB trademarks, registered both nationally and internationally and well known in the circle of consumers and trade. Complainant has argued that NOR is a common law trademark, but did not provide substantial evidence thereof. In this case it is of little consequence whether NOR should be considered a common law trademark or merely as (an abbreviation of) a geographical indication for Norway, since DNB is a strong trademark and can therefore rely on a wide scope of protection.
Although the combination of the two signs is presently not registered or used as a trademark, the contested domain name must nevertheless be considered to be confusingly similar to the trademarks in which the Complainant has rights (WIPO Case No. D2002-0118 Société des Produits Nestlé SA v. Stuart Cook). In this combination the domain name <dnbnor.com> is creating the likelihood of confusion as to the origin of the domain name and possible affiliations between Respondent and Complainant. The public may think that the disputed domain name is connected to either Complainant or to the merger entity.
In view of the above the Panel decides that the domain name is confusingly similar to the Complainant's trademarks
B. Rights or Legitimate Interests
While the overall burden of proof is on the Complainant, the element of possible rights or legitimate interests of Respondent in the disputed domain name involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complaint in the often impossible task of proving the negative. This should, as indicated correctly in WIPO Case No. D2001-0121, Julian Barnes v. Old Barn Studios, be approached as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy.
The Respondent claims that the disputed domain name <dnbnor.com> is an abbreviation of its slogan “De nautiske brødres nettside og repos”. A slogan which was only published on Respondent's website after Respondent was contacted by Complainant and of which (earlier) use Respondent did not submit any evidence, although – if its assertions were true - Respondent would have been in the position, and had indeed the responsibility, to submit such evidence.
The bare assertions from Respondent also seem indeed too far fetched, since it is not credible that Respondent who registered the domain name on July 1, 2002, was not aware of, at least the possibility of, a merger between the two very large financial institutions in Respondent's Norwegian home country and with the disputed domain name <dnbnor.com> just happening to be the same as that of those entities that at that time may have been about to initiated a process of merger.
For all of the above, and considering the fact that the Asker og Bærum Vannskiklubb (water-ski club) uses the disputed domain name <dnbnor.com> for exactly the same website as connected to its domain name <vannski.net>, the Panel is of the opinion that Respondent did not give evidence to justify his legitimate interest in the disputed domain name. The Complaint has met the second element of the Policy.
C. Registered and Used in Bad Faith
Policy paragraph 4(a)(iii) requires the Complainant to show, on the balance of probabilities, that the Respondent registered and is using the domain name in bad faith.
The expression DNB NOR is so obviously connected with two well-known financial institutions in Norway that its very registration and use by someone with no connection with either, gives the clear impression of opportunistic bad faith. The fact that Respondent chose to register the domain name <dnbnor.com> at the exact same date that is was announced in the media that DnB was available again for new merging partners, suggests that his primary purpose in registering the domain name was to sell it to the Complainant. This is further confirmed by Respondent's initial offer for sale of the domain name to Complainant for 5.000.000 NOK (the equivalent of EUR 610.000). Respondent's unsubstantiated explanation of its registration based on the (abbreviation of a) slogan by the water-ski club, that was added on the website only after Respondent was contacted by Complainant, seems nothing more than a fabricated excuse afterwards.
Accordingly, the Panel finds that the Complainant has established that the Respondent registered and is using the disputed domain name in bad faith pursuant to Policy paragraph 4 (b)(i).
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, <dnbnor.com> be transferred to the Complainant.
Madeleine de Cock Buning
Dated: September 15, 2003