WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Resurs Bank AB v. Whois Privacy services / WWW-Firma, Ltd, Resurs Bank PO, Domain Administrator

Case No. D2010-1488

1. The Parties

The Complainant is Resurs Bank AB, Helsingborg, of Sweden, represented by Setterwalls Advokatbyra, Sweden.

The Respondent is Whois Privacy services and WWW-Firma, Ltd, Resurs Bank PO, Domain Administrator

of St. Petersburg, the Russian Federation, Internally represented.

2. The Domain Name and Registrar

The disputed domain name <resursbank.com> is registered with NICCO.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2010. On September 6, 2010, the Center transmitted by email to NICCO a request for registrar verification in connection with the disputed domain name. On September 10, 2010, NICCO transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Registrar also indicated that the language of the registration agreement for the disputed domain name was Russian. The Center sent two email communications to the Complainant on September 13, 2010 and September 16, 2010 respectively providing the registrant and contact information disclosed by the Registrar and a language of the proceeding document stating that the Complainant would need to either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceeding and inviting the Complainant to submit the amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 15, 2010 adding the disclosed registrant as Respondent and requested that the language of the proceedings be English the subsequent day. The Center verified that the Complaint together with the amendment to the Complaint and language submission 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 September 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2010. The Response was filed with the Center on October 13, 2010. The Acknowledgement of Receipt of the Response was transmitted on October 14, 2010. On October 19, 2010 an additional submission to the Response with Annexes 1 and 2 was received from the Respondent. A further email from the Respondent was received later that same day relative thereto. Emails were received from the Complainant regarding the possibility of it submitting supplemental filing. The Center replied noting that there is no explicit provision under the Rules regarding supplemental filings. In any case, as a matter of practice and to preserve Panel discretion, the Center would typically bring any party submission to the Panel's attention (once duly appointed), and the latter would in accordance with Rules, paragraph 10(d), have sole discretion to inter alia decide whether to consider it or not. The Complainant filed a supplemental filing on November 1, 2010. The same day the Center acknowledged receipt of the same. On November 23, 2010, a further supplemtal filing was filed by the Respondent.

The Center appointed Ladislav Jakl as the sole panelist in this matter on October 28, 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.

On the question of the language of the proceedings, the Center invited the Parties to comment as the language of the proceedings is normally the same as the language of the registration agreement, in this case, Russian. The Respondent did not comment on this question but he submitted his response to Complaint in English. The Complainant requested the Panel to decide that the language of the administrative proceedings in this case be English. According to paragraph 11(a) of the Rules, the Panel has the authority to determine that a different language other than the one of the registration agreement will be the language of proceedings, having regard to the circumstances of the administrative proceeding. Therefore the Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836), decides that the language of the administrative proceedings will be English.

4. Factual Background

The Complainant asserted, and provided evidence in support of the following facts which the Panel finds established:

The Complainant’s Resurs Bank is a market leading bank in Sweden and is also expanding their business in other countries. Resurs Bank appears to be active in marketing its services and is using its trademark actively. Resurs Bank is also their trade name. The disputed domain name contains resursbank and thus is identical to both Resurs Banks's trademarks and the trade name Resurs Bank. The Resurs Bank is a well-established bank with history dating back to the late seventies when the company Resurs Radio & TV was founded. After this the business expanded and they started in the financing business during the eighties and finally in 2001 they traded under the name Resurs Bank. Even though the business has somewhat changed during the years the common trademark for the business has always been RESURS. (Resurs Radio & TV, Resurs Finans, Resurs Bank etc.). Thus, “Resurs“ is the dominant part in the Resurs Banks trademarks.

The Resurs Bank AB is the holder of several trademark registrations for RESURS BANK. For example Ireland - trademark No. 79698, registered on September 23, 2002; trademark No. 867911, registered on October 28, 2004; trademark No. 878618,registered on October 21, 2005 and Sweden - trademark No. 389282, registered on March 1, 2002. The registrations cover classes 7, 9, 28, 35, 36 and 42 of the International Classification of Goods and Services (annex 2-5).

The Respondent registered the disputed domain name <resursbank.com> on March 2, 2001.

In accordance with paragraph 4(i) of the Policy, the Complainant requested the Panel, appointed in this administrative proceeding, issue a decision that the disputed domain name be transferred to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant argues that disputed domain name <resursbank.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (Policy, paragraph 4(a)(i), Rules, paragraphs 3(b) (viii), (b)(ix)(1)).

The Resurs Bank AB is the holder of several trademark registrations for RESURS BANK. For example Ireland trademarks No. 796981, No. 867911and No. 878618 and Swedish trademark No. 389282. These registrations cover classes 7, 9, 28, 35, 36 and 42 of the International Classification of Goods and Services, see annex 2-5. The Resurs Bank AB is using their trademark actively. Resurs Bank is also its trade name The disputed domain name contains the term “resursbank” and thus is identical to both Resurs Banks trademarks and trade name. Since the page is relating to banking services and also links to other bank websites it is infringing Complainant’s exclusive rights.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent obviously does not practice any business of its own under RESURSBANK but is only interested in selling the disputed domain name.

Moreover the Complainant argues that the disputed domain name was registered and is being used in bad faith. The disputed domain name has obviously been registered in bad faith since it's only been registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name. Also the fact that the site is linking to other banks, i.e. Resurs Bank's competitors indicates that the holder want to mislead the public and use the Resurs Bank's exclusive trademark. Sometimes it also links to the Resurs Bank's own homepage “www.resurs.se” which makes the public think that there is a commercial link between the Resurs Bank and the holder of the current domain name.

In the supplemental filling of November 1, 2010, the Complainant, with the reference to the Respondent Response, states that he has made several attempts to contact the Respondent but since the Respondent was using WhoIs Privacy Services, the Complainant was not able to get in contact with it Attempts were made through both Whois Privacy Services and the registrar NICCO, but contact information could not be obtained.

As to the Respondent’s alleged rights, the Complainant argues that at the time of filing of the Complaint, the appearance of the website of the disputed domain name did not maintain such use which the Respondent is now referring to. Instead, the only use to be contested was a clear offer that the disputed domain name was for sale. There were also no links to the Complainant´s competitors in Swedish on the website. Thus, the allegation that the Respondent never has published general offers to sell the disputed domain name is untrue. The fact that there were links to the Complainant’s competitors and the fact that these links were in Swedish prove that the Respondent knew about the Complainant and that the use of the disputed domain name was made in bad faith. Therefore the Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent’s alleged action and interests must be considered to have been fabricated after the event.

The Complainant further contends that the Respondent has made several claims about the Complaint to the effect that the Complainant would be a company with a bad record engaged into reverse domain name hijacking. On the contrary the Complainant argues that he is a large and well known Swedish bank of good standing. Contrary to what the Respondent claims, when making a Google search on “resurs bank” at least the first 50 hits more or less refers to the Complainant.

Further the Complainant says that the Respondent refers to Complainant’s domain name registrations and states that “the Complainant has enough power and tools to represent its local business without any need to grab the domain name which legitimately belongs to the Respondents”. The Complainant firstly opposes that the fact that he has already several domain names containing “resurs” and “bank” does not mean that the Complainant is not allowed to protect its intellectual property rights. And secondly, if the domain name legitimately belongs to the Respondent, the Complainant certainly do not have any intention to grab the domain name.

The Complainant further argues that disputed domain name <resursbank.com> is identical or confusingly similar to the several trademark registrations for RESURS BANK and registered company name “Resurs Bank AB” and several domain name registrations containing RESURS or RESURS BANK. According to Complainant´s opinion, the disputed domain name (absent of the generic domain suffix) is identical to the registered trademarks, company name and domain names of the Complaint.

As to rights or legitimate interests the Complainant argues that the Respondent lacks genuine rights or legitimate interests in respect to the disputed domain name and that the alleged rights appear to be nothing more than constructions after the event. Corresponding to a statement of Complainant that at the time of the filing of the Complaint the appearance of the website of the disputed domain name was as shown in Annex 6 to the Complaint and that there was no such use which the Respondent is referring to. Instead, the only use to be deleted was an offer that the disputed domain name was for sale.

The Complainant contends that the Respondent was not the original holder of the disputed domain name as the previous holder of it was Eurobox Ltd. and that it must be stressed that bad faith is recognizable by the Eurobox Ltd’s prior practice of registering other well known trademarks as part of domain names. The Respondent has then acquired the disputed domain name for the mere purpose of selling it and thus the disputed domain name has been used in bad faith.

B. Respondent

Respondent does not argue that the disputed domain name is identical to trademarks of Complainant.

Furthermore, the Respondent opposes to the allegation that the Complainant has any rights in designation “resursbank” superior to the disputed domain name rights of the Respondent since art. 1483.9.3 of the Civil Code of RF sets forth the priority of the domain name holder’s rights against the ones arising out of any trade or service mark registrations by the virtue of denying the application for trademark registration of the trade mark which is identical or similar to the domain name, registered before the application for trademark registration was filed. Complainant’s trademarks are protected only in a few countries in European Union, and may not receive legal protection in the Russian Federation. Beyond plenty of supporting arguments, the Respondent says that in the present case he should be considered as having rights and legitimate interests in respect of the disputed domain name because before any notice of the dispute the Respondent used and made demonstrable preparations to use the disputed domain in connection with a bona fide offering of services such as rendering the legal advise and information support for the holders of copyright and other intellectual property rights.

The Respondent also contends that he is the in process of developing several business projects under the common logo “INFOBANKS” and the main corporate project “RESURS BANK”, carried out in association with the Public Association “RESURS BANK” (another Respondent in this proceeding) constitutes the core part thereof. The other projects ( “exportdatabank”, “databanka” and “textbank”) are planned to be developed as a part of information data bank web-sites cluster, unified by some common ideas, technical skills and know-how.

Moreover the Respondent argues that the Complainant, filing this Complaint, acts in bad faith and it raises the serious concerns regarding the attempt of reverse domain name hi jacking. This pattern of behavior is unfortunately consistent with the Complainant’s policy – the Complainant has been mentioned in negative context in some other legal proceeding.

The Respondent moreover states that he has never had neither actual nor constructive knowledge of the Complainant and/or about his trademark at the time of the disputed domain name registration. In his opinion the Complainant demonstrates ignorance of the UDRP requirements and inserts the pseudo-arguments which at Complainant’s sole opinion can support his claim. The Respondent does not market the goods and/or services under the classes of Nice Convention for which the Complainant’s trademark registrations are made and does not intend to do so in future as flows from his feasibility study. The Respondent also has no real motifs for the Complainant why he realized in so delayed after the domain registration by the previous domain holder or almost 8 years after Complainant’s first trademarks registration on March 2002. The fact that the Complainant decided not to challenge the Respondent’s registration of the disputed domain name for such a long if not to say prohibitive period of time simply converts his Complaint into a practice of misusing of the UDRP proceeding to commit a domain name pick-up. The reason for that seems to be pretty simple and very cynical as far as the type of behavior of the Complainant.

In the additional response of October 19, 2010 the Respondent says that he needs to emphasize that Resurs Bank PO (Public Organization) has been a member and co-owner of the project and of the domain name practically from its registration, and he stress on the fact that the domain name <resursbank.com> was registered in 2001, one year before the Complainant´s trademark was registered, which absolutely and entirely eliminates a possibility that the domain name could be registered in bad faith, aiming to make any damage to trademark owner, and the disputed domain name has always been used in good faith, despite participants of the project might have had some different opinions regarding the use of the project.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is 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.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

There is no doubt that the disputed domain name <resursbank.com> is identical to the Complainant’s trademark RESURS BANK, which is registered in Ireland - trademark No. 796981, registered on September 23, 2002; trademark No. 867911, registered on October 28, 2004; trademark No. 878618, registered on October 21, 2005 and Sweden - trademark No. 389282, registered on March 01, 2002. The registrations cover classes 7, 9, 28, 35, 36 and 42. Non-distinctive inclusion of the gTLD suffix “.com” do not avoid confusing similarity of domain names and trademarks (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-aventis v. Brad Hedlund, WIPO Case No. D2007-1310; Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300). Moreover the disputed domain name is identical to the Complainant’s company name and domain names.

For all the above cited reasons, the Panel concludes that disputed domain name is identical or confusingly similar to the Complainant’s trademark, and therefore the condition of paragraph 4(a) (i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

The Panel accepts the arguments of the Complainant that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name that is the subject of the Complaint and that none of the circumstances mentioned in the Policy, paragraph 4(c), are met whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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. This corresponds to a statement of Complainant that at the time of the filing of the Complaint the appearance of the website of the disputed domain name was as shown in Annex 6 to the Complaint and that there was no such use which the Respondent is referring to. Instead, the only use to be deleted was an offer that the disputed domain name was for sale. Moreover the disputed domain name does not correspond to the name of the Respondent and there is nothing in the record to indicate that the Respondent was commonly known as RESURS BANK.

The Panel accept the arguments of the Complainant that the appearance of the website of the disputed domain name there was no such use which the Respondent is now referring to. Instead, the only use to be deleted was a clear offer that the disputed domain name was for sale. There were also no links to the Complainant´s competitors in Swedish on the website. Thus, the allegation that the Respondent never has published general offers to sell the disputed domain name is untrue. The fact that there were links to the Complainant´s competitors and the fact that these links were in Swedish prove that the Respondent knew about the Complainant and that the use of the disputed domain name was made in bad faith. Therefore the Complainant claims that the Respondent has no legitimate rights or interests in respect of the disputed domain name and that the Respondent´s alleged action and interests must be considered to have been fabricated after the event.

Therefore the Panel finds that Respondent has no rights in the disputed domain name. Furthermore, it is obvious that the Respondent uses the domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s trademark and company name.

There is a consensus view by previous UDRP panels that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use in circumstances as the ones that are present in this case (Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang, WIPO Case No. D2005-0819).

For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the Respondent has registered the disputed 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) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.

There are present circumstances indicating that, by using the domain name <resursbank.com>, the Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct. The disputed domain name has been registered or acquired primarily for the purpose of selling of it. Also the fact that the website is linking to others banks, i.e. Resur’s Bank’s competitors indicates that the Respondent want to mislead the public and use Complainant´s trademarks and trade name. Such conduct has been found to signal bad faith in other cases such as Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658.

Although the Panel notes that the trademark registrations relied upon by the Complainant do not appear to predate the registration of the disputed domain name, taking into account the composition of the disputed domain name (that is the combination of the Complainant’s trademark and the term “Bank”, which is its business), and that the Complainant appears to have been doing business before the date of the domain name registration, the Panel considers that on balance the disputed domain name was registered in bad faith with the Complainant in mind.

The Complainant’s trademark and trade name RESURS BANK are distinctive and the fact that the Respondent has registered the disputed domain name that is identical to them indicates that the Respondent had by the time of registration of the disputed domain name knowledge of the Complainant’s (especially it’s trade name and domain names similar to the disputed domain name (www.resurs.com, which was registered already in 1997, and “www.resurs.se”)).

The Panel accepts the arguments of the Complainant, that the disputed domain name has been registered in bad faith as it was registered for the mere purpose of selling it. Internet users, while searching for information on the Complainant’s products, are confusingly led to website connected to the disputed domain name. In such a way, the Respondent is using the disputed domain name to intentionally attract for commercial gain Internet users by trading on the goodwill associated with the Complainant. WIPO UDRP decisions have stated that the registration and use of a domain name to re-direct Internet users to websites of competing organizations constitute bad faith registration and use under the Policy. Such conduct has been found to signal bad faith in other cases such as Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658, Encyclopaedia Britannica Inc. v. Sheldon.com, WIPO Case No. D2000-0753, Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768, Zwack Unicum Rt.. v. Erica J. Duna, WIPO Case No. D2000-0037.

For the above cited reasons the Panel finds that the disputed domain name was registered and used in bad faith.

Considering all the facts and evidence, the Panel therefore finds that the requirements of the paragraph 4(a)(iii) of the Policy are fulfilled in this case.

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 domain name <resursbank.com> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Dated: November 30, 2010