The Complainant is Islamic Bank of Britain Plc of Birmingham, United Kingdom of Great Britain and Northern Ireland, represented by Martineau, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Ifena Consulting, Charles Shrimpton of Auckland, New Zealand.
The disputed domain name <islamic-bank.com> is registered with Register.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2010. On April 6, 2010, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On April 7, 2010, Register.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 April 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 7, 2010.
The Center appointed John Swinson as the sole panelist in this matter on May 19, 2010. 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.
The Complainant is based in the United Kingdom of Great Britain and Northern Ireland (“UK”) and provides Sharia'a compliant banking for individuals and businesses. According to its website, the Complainant was the first stand-alone, Sharia'a compliant bank in the UK to be authorised by the Financial Services Authority. The Complainant owns a UK national trade mark registration and a Community trade mark registration for a device which incorporates the words ISLAMIC BANK OF BRITAIN.
Ifena Consulting is not listed on either the New Zealand or Australian company registers so it appears that it is no longer an active company unless registered in another jurisdiction. The Panel will refer to both Ifena Consulting Limited and Mr. Shrimpton collectively as the Respondent although it appears Mr. Shrimpton is the most relevant Respondent. The Respondent appears to be based in Auckland, New Zealand.
The exact date the Respondent first acquired the disputed domain name is unclear. It is possible that it was acquired sometime in 2001; however, no exact evidence on this point was put forth by either the Complainant or the Respondent. For a period in early 2010, the disputed domain name was registered to a Marilyn Cole however it is now back in the name of the Respondent.
From 2001 to September 2004, the disputed domain name was used as a holding page advertising the disputed domain name for sale. From September 2004 until present, the disputed domain name has been used to host the Complainant's website (which promotes its banking operations) pursuant to some arrangement between the Complainant and the Respondent. This seems to be the Complainant's primary website (for example, it ranks first and second in a Google search for the Complainant and no other relevant website appears to exist or be maintained by the Complainant). The Respondent has recently made known his intentions to put the disputed domain name up for auction.
The Complainant makes the following contentions:
The Complainant is the UK's leading provider of Sharia'a compliant banking for individuals and businesses. The Complainant offers banking products and solutions including current accounts, savings accounts, high net worth treasury deposit accounts, home purchase plans, consumer and business financing and commercial property finance. The Complainant was incorporated on July 11, 2002 and was launched on the London Stock Exchange AIM market on October 12, 2004.
The Complainant is the owner of UK national trade mark registration number 2315504, filed November 11, 2002 and Community Trade Mark registration number 8531469, filed July 28, 2009 and which appears to have matured into a registration during the pendency of this administrative proceeding, both for a device which incorporates the words ISLAMIC BANK OF BRITAIN. The Complainant has eight branches throughout the UK, all operating under the ISLAMIC BANK OF BRITAIN name and trade mark. As of December 31, 2008 the Complainant had approximately 47,000 customers and deposits of over GBP 1.58 million.
The Complainant has extensively and continuously used and promoted the ISLAMIC BANK OF BRITAIN mark and has invested a net amount of GBP 3.03 million between 2006 and 2009 (inclusive) in respect of marketing, advertising and publicity throughout the world. The Complainant has won many awards for its products and services including the Regional Award for the UK from the Islamic Financial Institution Awards (2009) and Best Islamic Bank for Europe from the Islamic Finance News Awards (2006).
The disputed domain name is confusingly similar to the Complainant's registered trade marks for ISLAMIC BANK OF BRITAIN. The Complainant has been using the disputed domain name continuously since September 2004 to advertise its business. The registrant for the disputed domain name (i.e., the Respondent) has, from time-to-time ensured that the disputed domain name has been directed to the IP address for the hosting of the Complainant's website. The Complainant's website “www.islamic-bank.com” prominently features the ISLAMIC BANK OF BRITAIN mark and provides information regarding the Complainant's activities, products and services. The disputed domain name is likely to be taken by most people worldwide as a reference to the Complainant's online website, and therefore most people using the disputed domain name will be expecting to reach the website of the Complainant.
It is irrelevant whether or not the Respondent registered the disputed domain name prior to the date of incorporation of the Complainant. The Policy only requires the domain name to be confusingly similar to a trade mark in which the Complainant “has rights” at the date of filing the Complaint (see MADRID 2012 S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598).
The Respondent has no rights or legitimate interests in the disputed domain name. In an email to the Complainant dated February 11, 2010, the Respondent indicated that he registered in the domain name “as an investment” in order to sell or lease the domain name. In this same email the Respondent stated that when the Complainant was formed he arranged to lease the domain name to the Complainant gratis on the basis that the Respondent was providing information technology services to the Complainant. The Complainant denies it has ever entered into a commercial relationship with the Respondent for lease of the disputed domain name.
The Complainant has not licensed or otherwise authorised the Respondent to use to ISLAMIC BANK OF BRITAIN trade marks or its trading name at any time. The Respondent has, however, been involved in the provision of information technology services to the Complainant through various companies. The Respondent has no business or other reason for using the name Islamic Bank or the ISLAMIC BANK OF BRITAIN trade marks or trading name. The Respondent is not an Islamic Banking Institution nor does he have any association or connection with the same.
The disputed domain name is not being used, nor have there been any demonstrable preparations to use the disputed domain name, in connection with the bona fide offering of goods or services offered by the Respondent. The Respondent has admitted that it is his intention to auction the domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, to misleadingly diverting consumers or tarnish the trade mark in issue.
The disputed domain name has been registered and used in bad faith by the Respondent. The records from “www.archive.org” in respect of the disputed domain name indicate that the disputed domain name had originally been created sometime in 1999 and operated under the name of Faisal Finance.
The Respondent has indicated that he subsequently registered the disputed domain name as an investment in order to sell or lease the disputed domain name. Therefore the Respondent, by his own admission, has registered the disputed domain name in bad faith primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or its competitors for valuable consideration. As stated above, for a certain time the disputed domain name was owned by a Marilyn Cole. The Respondent has since become the owner of the disputed domain name again with the purpose of auctioning the domain name. Therefore again, the Respondent, by his own admission, has registered the disputed domain name in bad faith primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or its competitors for valuable consideration.
The Complainant denies that it has entered into any commercial arrangement with the Respondent for lease of the domain. In fact, during the provision of other domain name services from companies associated with the Respondent, such companies have acted as an agent for the Complainant as part of the provision of information technology services where domain names are held on trust for the Complainant who enjoys beneficial ownership at all times. The Complainant submits that an equivalent commercial arrangement is in existence for the disputed domain name under which the Complainant enjoys beneficial ownership of the disputed domain name. This is supported by the fact that the registrant of the domain name from time to time has directed the domain name to the Complainant's IP address.
Depriving the Complainant of ownership and access to its primary domain name will cause the Complainant and potentially its customer's severe loss and damage, especially considering that the website is used for the Complainant's online banking services. The fact that the Respondent admits that the website is “key” to the Complainant's business (in his email to the Complainant of February 11, 2010) is further evidence of the Respondent's bad faith in the registration and use of the disputed domain name.
The Respondent knew when he re-registered the disputed domain name that it was likely to be taken by many people as a reference to the Complainant, that people accessing a website by reference to the disputed domain name will have been expecting to reach a website of the Complainant and that people accessing a website by reference to the disputed domain name may well be confused as to the source, sponsorship, affiliation or endorsement of the website hosted in connection with the disputed domain name.
If the disputed domain name is not transferred to the Complainant, there will be a continuing risk of the Respondent disposing of the disputed domain name or otherwise using the disputed domain name in association with another website which could result in harm to the business, reputation and valuable trade mark rights of the Complainant.
The disputed domain name has not been used by the Respondent in connection with the bona fide offering of goods or services, and nor have there been any genuine preparations for such use. Nor has the Respondent been commonly known by the disputed domain name, or has he made legitimate noncommercial or fair use of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
To succeed, the complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the complainant.
The Complainant is the registered owner of a UK registered trade mark for a device which incorporates the words ISLAMIC BANK OF BRITAIN and was, at the time the Complaint was filed, the owner of a community trade mark application for the same mark which has now proceeded to registration. For the Complainant to succeed on this element it must show that the domain name “islamic-bank” is confusingly similar to “Islamic Bank of Britain”. It is well established that the suffix “.com” can be ignored for this purpose.
The Panel acknowledges that the relevant date for consideration of this element is the date of filing the Complaint and not the date of registration of the disputed domain name (see Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827).
In some prior decisions, it has been found that a domain name comprising generic words is not identical or confusingly similar to a registered trade mark that comprises generic words in combination with a logo. See, for example, Brisbane City Council v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047. However, it is a matter of impression in each case as to whether a domain name can be confusingly similar to trade mark that includes a logo or graphic element.
The disputed domain name omits the words “of Britain”, which is part of the Complainant's trade mark, and which is also a geographic reference. This is not of itself sufficient to prevent a finding of confusing similarity because the words “Islamic Bank” are more distinctive than “of Britain” in this Panel's view. The use of “Britain” in the trade mark is geographic in the sense that it refers to the place where the organisation is based.
In this case, the disputed domain name has been used to display website content of the Complainant for a number of years, with the apparent consent of the Respondent, and without any written agreement regarding such use.
Accordingly, based on all the circumstances, the Panel considers that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
Accordingly the first element has been met.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or 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.”
The Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has not licensed or otherwise authorised the Respondent to use to ISLAMIC BANK OF BRITAIN trade marks or trading name at any time (at least outside of any arrangement regarding a beneficial use thereof by the Complainant). The Respondent is not an Islamic Banking Institution nor does he appear to have any association or connection with Islamic banking, or banking in any other context. In a number of countries, the Panel notes that it may be illegal to use the term “bank” as part of a trading name unless one holds a banking license, and it appears from the present record that the Respondent does not.
The Complainant further contends that the disputed domain name is not being used, nor have there been any demonstrable preparations to use the domain name, in connection with any bona fide offering of goods or services offered by the Respondent. The Complainant also argues that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain misleadingly diverting consumers to tarnish the trade mark in issue.
The Panel is able to presume in this case that the Respondent has no rights or legitimate interests in the disputed domain name, taking into consideration all of the facts present in the current record and the Respondent's failure to respond to the Complainant's allegations. See GEOCITIES v. GEOCIITES.COM, WIPO Case No. D2000-0326, where the respondent was found to have no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise, and Pavillion Agency, Inc. v. Greenhouse Agency, and Glenn Greenhouse. Ltd., WIPO Case No. D2000-1221, where the respondents' failure to respond was construed as an admission that they had no legitimate interest in the domain names.
On the limited evidence available, the only active use of the disputed domain name by the Respondent relevant under this element seems to be use for or on behalf of the Complainant. In fact, one may conclude that this use of the disputed domain name is in fact a beneficial use by the Complainant. The Respondent has not apparently received payment for the Complainant's use of the disputed domain name. Because there is apparently no written license between the Respondent and the Complainant, and the evidence as to why the Respondent is allowing the Complainant to use the disputed domain name is less than clear, one might consider that the Respondent appears to use the disputed domain name only with a view to its value to the Complainant and its use thereby.
In certain circumstances, in may be legitimate to register generic or dictionary words as a domain name with the intent of leasing the use of such domain name to a third party. However, in this case the Respondent has provided no evidence regarding its intent when registering the disputed domain name, nor any information concerning its subsequent use of or rights in the domain name, and the Panel cannot come to such a conclusion in this case.
On balance, without any Response from the Respondent as to why and the circumstances in which it registered the disputed domain name, the Complainant has made a prima facie case and the Panel finds that the second element has been met.
The evidence in this case is unclear as to when and why the disputed domain name was acquired by the Respondent. Therefore, it is possible that the Respondent acquired the disputed domain name before, during or after the launch of the Complainant's business. The Respondent has not put forth evidence to show that it acquired the disputed domain name prior to the launch of, and without knowledge of, the Complainant's business.
It seems suspect that the Respondent could have registered the disputed domain name as “an investment” with no knowledge of the Complainant when it and companies it is associated with have provided IT services to the Complainant, including services relating to use of the disputed domain name. On balance, the Panel concludes that the Respondent had some knowledge of the Complainant's business or intended business when the disputed domain name was registered or acquired by it.
On the basis of the limited evidence available, the Panel finds that the Respondent registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for valuable consideration, which is evidence of bad faith under the paragraph 4(b)(i) of the Policy.
As well as registering the disputed domain name in bad faith, the Panel finds that the Respondent used the disputed domain name in bad faith. This factor is complicated by the fact that the disputed domain name has been used for the Complainant's website since 2004. In Nova Banka v. Iris, WIPO Case No. D2003-0366 the domain name was also used to point to the complainant's website. In this case it was determined that the respondent had not only registered but also used the domain name in bad faith due to the surrounding circumstances. The Panel agrees with and relies upon the following statement in that decision:
“The Respondent has always used the Domain Names to point to the Complainant's official website. The Panel has to consider whether this is bad faith usage since the Domain Names were in fact used for the Complainant's business, however, at the discretion of the Respondent. […] All this leads to the assumption that the Respondent tries to get benefit in money's worth out of the Domain Names. Even if the Respondent never tried to sell or rent the Domain Names to the Complainant for an amount of money exceeding the Respondent's out-of-pocket costs, it continuously exercises pressure over the Complainant. This, in the view of the Panel, constitutes bad faith use of the Domain Names.”
Here, the Respondent is threatening to auction the disputed domain name to a third party, which would cause detriment to the Complainant and prevent its continued use of the disputed domain name.
The Complainant also raises the issue of the re-registration of the disputed domain name by the Respondent sometime in 2010 as further evidence of bad faith under paragraph 4(b)(i) of the Policy. Despite the Panel's findings above, the Panel will address this issue and look at whether the change to the listed registrant on record equals a “re-registration for the purpose of the Policy.” It has been acknowledged that situations where a registrant seeks to correct a typographical error in its name or a company changes its name may not be re-registration for the purpose of the Policy (see ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785). This is contrasted with a situation where there has been a transfer of the domain name from one legal entity to another (see ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., supra). In an email to the Complainant by the Respondent (dated February 11, 2010), the Respondent explains the need for re-registration as follows - “within the last few weeks I registered an unrelated domain name for Marilyn Cole and when this was done register mistakenly linked her name with some of my domains. I believe this is why the record shows her as the registrant rather than myself, and this is now rectified.” This explanation is consistent with the fact that the Respondent was still listed as the contact for the disputed domain name during this period. Accordingly, the Panel does not rely on the re-registration of the disputed domain name in relation to the findings made herein.
Accordingly the Panel finds that the third element has been met.
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 <islamic-bank.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: May 28, 2010