WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BGŻ S.A. v. Krzysztof Pachowicz

Case No. D2012-0375

1. The Parties

The Complainant is BGŻ S.A. of Warsaw, Poland, internally represented.

The Respondent is Krzysztof Pachowicz of Kraków, Poland, self-represented.

2. The Domain Name and Registrar

The disputed domain name <bgz.xxx> is registered with Instra Corporation Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2012. On February 24, 2012, the Center transmitted by email to Instra Corporation Pty Ltd. a request for registrar verification in connection with the disputed domain name. On February 29, 2012, Instra Corporation Pty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on March 1, 2012.

The Center verified that the Complaint together with the amended 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 March 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2012. The Response was filed with the Center on March 22, 2012.

On March 23, 2012, the Respondent sent two email communications to the Center and to the Registrar. On March 28, 2012, the Complainant submitted a Supplemental Filing by email to the Center, and the Respondent replied by email on March 29, 2012. The Respondent submitted a Supplemental Filing on April 4, 2012 by email to the Center.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on March 30, 2012. 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 language of the proceedings is English, being the language of the Registration Agreement.

4. Factual Background

The disputed domain name was registered on December 7, 2011.

The Complainant owns the following trademarks:

Bank BGŻ PIENIąDZE Są DLA LUDZI [English: Money is for People] - protection right No. 209357;

Bank BGŻ pieniądze są dla ludzi - protection right No. 209358;

Bank BGŻ - protection right No. 206454.

5. Parties’ Contentions

A. Complainant

The Complainant is a financial institution, one of the biggest and most readily chosen commercial banks in Poland. This conclusion is further supported by the fact that:

- it has a network more than 370 branches and 20 external cashier windows;

- over 3,800 commission-free ATMs belonging to BGŻ and cooperating banks nationwide;

- state of the art and convenient IT access to the banking system.

The Complainant’s trademarks have been well-known and reputable in Poland for more than 30 years.

The Complainant submits that the infringement of the BGŻ trademark consists in unlawful use of a mark in the disputed domain name that is identical to the renowned trademark BGŻ, while the use of the mark to indicate services of pornographic character may bring undue benefits to the Respondent and be harmful for the goodwill of the BGŻ trademark.

Given the fact that the Complainant as a financial institution takes special care to build the trust of its customers, registration of the disputed domain name including the word “bgz” offering pornographic content hampers the Complainant’s name and may undermine customers’ trust in the Complainant.

The disputed domain name including the word “bgz” which is identical to the business name of the Complainant and identical to the trademarks registered by the Complainant, is misleading and infringes the Bank’s personal rights and business name rights.

The Complainant also owns the website named “www.bgz.pl”, which makes it only slightly different from the disputed domain name.

The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no right to use the BGZ trademark. The Respondent’s activity is contrary to the law and good practices, it infringes the Complainant’s interest and is misleading for the Complainant’s customers through a misleading domain name.

Further the Complainant argues that the Respondent knew or should have known about the Complainant’s mark prior to the registration of the disputed domain name. In practice, it is not possible that the Respondent does not know that BGŻ is the business name of the Complainant. The name BGŻ is commonly known in Poland and has been used as a denomination of the Complainant since 1975, with the Complainant being one of the larger banks in Poland (depending on the ranking, it is quoted among the ten largest banks in Poland).

The disputed domain name was registered and is being used in bad faith. The Respondent registered a domain name containing the Complainant’s trademark in order to then sell the disputed domain name to the Complainant.

The Complainant also pointed to the fact that the Respondent also registered a domain name that infringes the trademark of another Polish bank, called DnB NORD Polska S.A. <dnbnord.xxx>.

B. Respondent

The Respondent argues that the disputed domain name <bgz.xxx> is neither identical nor confusingly similar to a trademark or service mark in which the Complainant has rights, that the Complainant has no rights to the word trademark BGZ (which is the domain name) since the registered trademarks are the following: BGZ- Bank BGŻ PIENIąDZE Są DLA LUDZI and the graphic trademarks containing only graphical representations of the three letters: “b”, “g” and “ż”.

From the registration of a logo containing the word “bgz” the Complainant cannot derive any rights to the word "bgz" as such. The Complainant has no right to the word "bgz", which is obvious, because it is impossible to have any rights to the mark containing three letters of the alphabet at all. Such a mark has no distinctiveness. Furthermore, the Respondent holds that the full name of the Complainant is Bank Gospodarki Żywnościowej, and BGŻ is only the acronym of its full name. It is a clear evidence that the word “bgz” is commonly known and used by the divert companies throughout the whole world.

Before the Respondent received any notice of the dispute, there is evidence of the Respondent's use of the domain name in connection with a bona fide offering of goods or service. Under the disputed domain name <bgz.xxx> the Respondent runs a website with adult materials (movies only for adults). The name of the website is “Bad Girls Zone”. Of course, the acronym of Bad Girls Zone is “BGZ”. Moreover, the content of the website to which the disputed domain name <bgz.xxx> resolves strictly conforms to the sole purpose of “.xxx” Top Level Domain set by ICM Registry, which is serving adult entertainment globally.

Also, the Respondent does not show any connections with the Complainant.

Of course, the Respondent can see that the disputed domain name and BGZ are identical, but it is only accidental coincidence.

The Respondent has neither registered nor used the disputed domain name for the purpose of resale.

6. Discussion and Findings

Paragraph 4(a) of the Policy places a burden on the complainant to prove the presence of three separate elements. The three elements can be summarized as follows:

(a) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(b) the respondent has no rights or legitimate interests in the domain name; and

(c) the domain name has been registered and is being used by the respondent in bad faith.

A complaint may only be admitted if the above criteria are met simultaneously.

A. Identical or Confusingly Similar

The Complainant has proven that the disputed domain name <bgz.xxx> is identical or confusingly similar to the name, trademarks and service marks of the Complainant.

The confusing similarity of the disputed domain name <bgz.xxx> to the Complainant’s trademark BGŻ and service marks is apparent from a simple visual comparison. The disputed domain name is a replica of the Complainant’s mark comprising, however, only letters of the Latin alphabet. The word “bgz” does not appear to have any generic meaning in any European language and though it is an acronym, it is a well-known abbreviation of a bank famous in Poland. In addition to the above, the disputed domain name is a replica of the official domain name held by the Complainant <bgz.pl>, also comprising letters of the Latin alphabet. A Google search for the word “bgz” refers only to the company of the Complainant.

The disputed domain name <bgz.xxx> contains a trademark owned legally by the Complainant. The Respondent is not truly correct when saying that the registration of the verbal-graphic trademark does not extent to the verbal part of that trademark. To the contrary, in this Panel’s view, the security of a verbal-graphic trademark shall be broader than the security granted only to a verbal trademark. Moreover, it is reasonable to conclude that if the “logo” comprises solely from the letters, this acronym shall be protected. Therefore, this is sufficient to satisfy the requirement that the disputed domain name in question be confusingly similar to a mark in which the Complainant has rights (see also Oki Data Americas Inc. v. ASD, Inc., WIPO Case No. D2001-0903, where the panel found that “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for the purposes of the Policy despite the addition of other words”).

The Panel therefore finds that the disputed domain name <bgz.xxx> is confusingly similar to the Complainant’s trademark and as a consequence, the Complaint brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy.

The Panel shares the reasoning adopted in the UDRP decision in Denizbank A.S. v. Registration Private, Domains By Proxy, LLC / Kader Yilmaz, WIPO Case No. D2012-0074, as cited by the Complainant, that some Internet users may falsely associate the disputed domain name with a pornographic website due to the use of the “.xxx” TLD. In the said decision the panel indicated that: “the Panel has taken into account that some Internet users may falsely associate the disputed domain name with a pornographic website due to the use of the “.xxx” TLD, which primarily should indicate explicitly sexual content. Given the notoriety of the Complainant’s trademark in Turkey, any use of a domain name incorporating the Complainant’s trademark DENIZIBANK will most likely result in confusion among Internet uses with respect to the Complainant’s long existing trademark rights.”

B. Rights or Legitimate Interests

From the evidence submitted before the Panel it is clear that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorised to use the Complainant’s marks. There is no evidence of the Respondent’s use of, or demonstrable preparation to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, in view of the Panel’s findings below under the third element of the Policy. There is no evidence that the Respondent is commonly known by the disputed domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.

C. Registered and Used in Bad Faith

The Complainant is the owner of the trademark comprising the word “bgż” and the owner of the domain name <bgz.pl>, under which it runs its official website. The Complainant is a well-known bank in Poland, one of the biggest banks in Poland, while the Respondent is a Polish individual. Bad faith has already been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303).

The Panel took into account the Respondent’s reasoning regarding its right to use the anagram “bgz”. The Respondent in a very persuasive manner explained that this anagram, used for the disputed domain name, stands for “bad girls zone” and the content of the website within the gTLD “.xxx” corresponds to that name and the purpose of .xxx domains. In addition to that, the Respondent states that its activity is and may be in no way connected with the activity of the Complainant.

On the other hand, given the fact the Complainant’s trademark is well-known in Poland, the Panel is persuaded that the Respondent knew or should have known of the Complainant’s trademark and services at the time the Respondent registered the disputed domain name, and did so with a view to illegitimately taking advantage thereof. It is well established that knowledge of a complainant's intellectual property right, including trademarks, at the time of registration of a domain name may prove bad faith registration (NBC Universal Inc. v. Szk.com, Michele Dinoia, WIPO Case No. D2007-0077; ALSTOM v. Domain Investments LLC, WIPO Case No. D2008-0287).

The Panel also reviewed the allegations of the Respondent regarding the source and author of the text of the article from Wirtualna Polska, on which the Complainant relied and shares the view of the Respondent that the Complainant did not prove that the text of that article was allegedly spoken by the Respondent and that it directly referred to the Complainant.

In the above scenario, the use of the disputed domain name by the Respondent could conceivably have been found a bona fide use for purposes of the Policy in connection with the .xxx space, had the Respondent not been apparently engaged in similar conduct vis-à-vis at least one other holder of well-known trademark rights in the banking sector in Poland. Paragraph 4(b)(ii) of the Policy provides that registration of a domain name in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name is evidence of bad faith registration and use of the domain name, so long as the registrant has engaged in a pattern of such conduct (see Australian Stock Exchange Limited and ASX Operations Pty Limited v. Community Internet (Australia) Pty Ltd, WIPO Case No. D2000-1384). Use in bad faith is manifest also from the pattern of conduct with the trademarks of other parties (see American Funds Distributors, Inc. v. Domain Administration Limited, WIPO Case No. D2007-0950). The Complainant has demonstrated that the Respondent has also registered another domain name, <dnbnord.xxx>, including the trademark of a well-known bank in Poland – DNB NORD, aimed principally to provide to websites with adult entertainment. The Panel notes that the Respondent claimed that the Complainant has not presented any evidence that this domain name is used by the Respondent illegally. In this context it is worth mentioning the UDRP decision in PepsiCo, Inc. v. Phayze Inc., WIPO Case No. D2003-0693 according to which: “the Panel greatly considers the fact that several UDRP complaints have been filed against the Respondent. These decisions tend to indicate a pattern by which the Respondent initially registers domain names comprising trademarks or variations of trademarks for which he has no rights, and then links the domain names to websites that directly compete with the owners of the trademarks or that tarnish the goodwill associated with the trademarks”. While there is no evidence that the Respondent in this case has been involved as a respondent in previous UDRP cases, as the Respondent rightly underlined, the specific circumstances of this case, including the apparent registration of another domain name which includes the trademark of another well-known bank in Poland, suggest opportunistic bad faith on the part of the Respondent. While the (Polish-based) Respondent may be entirely within its rights to offer adult-related material on the Internet and within the .xxx space in particular, this does not extend to doing so via another’s well-known (in Poland) trademark in the circumstances of this case. The Panel is persuaded that the registration of the domain names in the same way – both referring and potentially infringing trademarks of the well-known banks in Poland, is tantamount to a registration and use in bad faith.

As a result, the Panel finds that the disputed domain name <bgz.xxx> was registered and is used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.

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 disputed domain name <bgz.xxx> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist
Dated: April 13, 2012