WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bank of Jerusalem Ltd. v. Shek Cheung Chung
Case No. D2017-1153
1. The Parties
Complainant is Bank of Jerusalem Ltd. of Airport City, Israel, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
Respondent is Shek Cheung Chung of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <bankofjerusalem.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2017. On June 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 18, 2017.
The Center appointed M. Scott Donahey as the sole panelist in this matter on July 25, 2017. 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,
4. Factual Background
Complainant is the owner of the trademark BANK OF JERUSALEM (together with a graphical element), which trademark was registered in Israel on August 5, 1998. Complaint, Annex 9. Complainant has used the mark in conjunction with its provision of commercial banking services since at least as early as 1998. Complainant has 24 branches across Israel, and has been increasingly financially successful in its operations. Complaint, Annexes 5 and 6..
Complainant is active in promoting its banking services and its trademark on the Internet. Complainant operates a website at “www.bankjerusalem.co.il”, which domain name Complainant registered on March 31, 1998. Complaint, Annex 7. Complainant has had an active web presence since as early as 2007. Complaint, Annex 8. Complainant also uses social media to promote the BANK OF JERUSALEM trademark, utilizing social media such as Facebook and Twitter. Complaint, Annex 11.
Respondent registered the disputed domain name on August 21, 2016, some eighteen years after Complainant registered its trademark and domain name, and some nine years after Complainant established a presence on the Internet.
Respondent uses the disputed domain name to resolve to a website which features pornographic videos together with pop-up advertising links to services offering content of an adult nature. Complaint, Annexes 15 and 16.
On April 18, 2017, Complainant sent Respondent a cease and desist letter, which letter was followed by a reminder email sent on April 26, 2017. Complaint, Annexes 13 and 14. Respondent did not reply either to the letter or to the reminder email.
5. Parties’ Contentions
Complainant contends that it has rights in the trademark BANK OF JERUSALEM by virtue of its Israeli registration and its use in commerce and on the Internet; that Respondent has no rights or legitimate interests in respect of the disputed domain name as Complainant has never authorized Respondent to use its trademark, nor has Complainant ever had any business relationship with Respondent; and that Respondent has registered and used the disputed domain name in bad faith, as Respondent has used the disputed domain name to resolve to a website at which adult content videos are offered and at which links to other adult sites are present.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these 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:
(i) 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,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant argues that the disputed domain name <bankofjerusalem.com> is identical or confusingly similar to Complainant’s registered mark. It is true that Complainant’s trademark includes a geographical term, but Complainant nonetheless has registered and used the mark in conjunction with its commercial activities, and is entitled to rely upon its registered mark in UDRP proceedings. While it is also true that Complainant’s mark includes a graphical representation, the predominant element of the trademark is the lexical element. Therefore Complainant’s rights in the mark are enforceable under the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.10.
The Panel finds that the disputed domain name incorporates the textual element of Complainant’s trademark in its entirety, and is identical to or confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. None of the circumstances envisaged by paragraph 4(c) of the Policy are present. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Complainant notified Respondent that Complainant believed that the disputed domain name was being used in bad faith in violation of Complainant’s rights under the Policy. Complainant sent a reminder notice that Respondent should cease and desist such activities. Respondent did not reply to these communications. Respondent failed to reply to the Complaint filed in these proceedings. Finally, Respondent is using the disputed domain name to resolve to a website at which adult content and links to websites at which pornographic contact is being offered, tarnishing Complainant and its trademark, and for which Respondent is likely receiving commercial gain. For the above reasons, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith.
For 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, <bankofjerusalem.com>, be transferred to Complainant.
M. Scott Donahey
Date: July 31, 2017