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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bankinter S.A. v. BI Financial Inc.
Case No. D2000-0460
1. The Parties
The Complainant is Bankinter S.A., a corporation organized under Spanish law, with its principal place of business at Paseo de la Castellana, 29, 28046 Madrid, Spain. It is represented by its lawyer, Señora Assumpta Zorraquino of Price Waterhouse Coopers of Barcelona, Spain.
The Respondent is BI Financial Inc., 11900 Biscayne Blvd. Suite 806, Miami, Florida, U.S.A. Its administrative contact is Josh Markus, 201 South Biscayne Boulevard, Miami, Florida, U.S.A. Tel.: 305 358 1666; Fax 305 371 8759. The Respondent is represented by Mr. J. M. Vleck of Reddie & Grose, Trademark Attorneys of London, U.K. The Respondent was formerly known as B.I. Financial LLC.
2. The Domain Name and Registrar
The domain names at issue are "Bankinternet.com", "Bankinternet.org" and "Bankinternet.net". The domain names are registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America ("NSI").
3. Procedural History
A complaint was submitted electronically by the Complainant to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on May 18, 2000. The hard copy had been received by WIPO Center on May 22, 2000. An acknowledgment of receipt was sent by WIPO Center to the Complainant on May 22, 2000.
On May 22, 2000, a request for Registrar verification was transmitted by WIPO Center to NSI to:
Confirm that a copy of the complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(a).
Confirm that the domain names at issue are registered with NSI.
Confirm that the person identified as the Respondent is the current registrant of the domain names.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact for the domain names.
Confirm that the Uniform Domain Name Dispute Resolution Policy is applicable to the domain names at issue.
Indicate the current status of the domain names.
By email dated May 30, 2000, NSI advised WIPO Center as follows:
NSI had not received a copy of the complaint from the Complainant.
NSI is the Registrar of the domain name registrations "Bankinternet.com", "Bankinternet.org" and "Bankinternet.net".
B.I. Financial LLC, with the postal address as shown above, is the current registrant of the said domain names. The technical, zone and administrative contact is Josh Markus, whose details are as shown above. The billing contact is David Greenberg of BI Financial Inc. at the address shown above.
NSI’s 5.0 Service Agreement is in effect.
The domain name registrations "Bankinternet.com", "Bankinternet.org" and "Bankinternet.net" are in "Active" status.
With effect from January 1, 2000, NSI adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). As can be deduced from the advice of NSI that the domain names in question are still "active", the Respondent has never requested that the domain names at issue be deleted from the domain name database. The Respondent has not sought to terminate its agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSI’s Domain Name Dispute Resolution Policy, i.e., the ICANN policy.
Having notified the Complainant on May 31, 2000, of a deficiency in its Complaint and having been satisfied with the Complainant’s rectification of the deficiency, WIPO Center on June 6, 2000, transmitted to the Respondent a notification of Complaint and Commencement of Administrative Proceedings. A copy of the Notification of Complaint was also emailed to NSI and ICANN.
The deficiency was that the Complaint and its annexures were in the Spanish language, whereas the language of the administration proceeding is English. The Complainant supplied an English translation of the Complaint, but not of the numerous annexures. In the Panel’s view, the Complainant should have provided a translation of the annexures also.
In its Response, the Respondent rightly complained about the lack of an English translation of the annexures. If the Panel had not formed a clear view of the outcome of this proceeding, based on the evidence and submissions of the Respondent, it would have called for a translation. One of the Panelists is a Spanish-speaker, who confirms that the annexures are merely expansive of the material in the Complaint itself.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by July 26, 2000). It was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
On June 28, 2000 (by email) the Respondent filed a Response with WIPO Center. An acknowledgement of receipt was forwarded by WIPO Center on June 30, 2000.
The Complainant elected to have its Complaint resolved by a single member Panel. In its reply, the Respondent, in accordance with the Rules, elected to have a three-member Panel. Both parties have paid the amounts required of them to WIPO Center.
On August 25, 2000, WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand, to chair the Panel in this case. It had already invited Mr. Matthew Powers of California, U.S.A and Mr. Roberto Bianchi of Buenos Aires, Argentina, to be Panelists. It transmitted to all Panelists a statement of acceptance and requested a declaration of impartiality and independence.
The Panelists duly advised their acceptance of appointment and forwarded to WIPO Center their statements of impartiality and independence. On August 25, 2000, the Complainant and the Respondent were notified of the appointment of the Panel. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.
On August 25, 2000, WIPO Center forwarded to the Panelists by courier the relevant submissions and the record. These were duly received by them. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by September 8, 2000.
The Panel has independently determined and agrees with the assessment of WIPO Center that the complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
Since its incorporation in 1965, the Complainant has offered banking services in Spain. Since 1997 for private customers and in 1999 for business customers, it has operated a service whereby customers can carry out banking operations and access financial products on the internet from anywhere in the world. In 1998 the number of users – private and corporate – numbered 53,905.
Since 1996, the Complainant has been using the expression "Bankinternet" in advertising campaigns in various media. It incorporated on January 27, 2000, a full-owned subsidiary called Bankinternet S.A. and obtained the necessary government approvals.
It has a Spanish trademark for a device mark "Bankinternet" for various classes, registration having been granted on February 29, 1996, for some classes and January 20, 1997, for others. The device marks either include a colored mark with "Bankinter" in orange and "net" in black, or the word "Bankinter" with a stylized "BK" device.
It uses "Bankinternet" in its official material, such as its annual report. It also holds a Spanish mark (registered in 1999) "Bankinter". The Complainant applied for the registration of the trademark "Bankinternet" in the United States on February 1, 2000, claiming retroactivity to August 5, 1999. It has a pending application before the EU Trademark Office for a "Bankinternet" device which was advertised on May 29, 2000.
The Respondent uses both "Bankinternet.com" and "Bancointernet.com" as its websites. On the "Bancointernet.com" site, the browser can be linked to a statement in the Spanish language saying (in translation) "Bancointernet.com to become first virtual bank for U.S. Hispanic and U.S. Brazilian Communities". The word "banco" means bank in both Spanish and Portuguese.
The type used by the Respondent on its websites (including the "Bancointernet" ones), is identical to the Complainant’s. The logo accompanying the denomination "Bancointernet (i.e. the Respondent’s initials "B.I." before the initials "Bk" in a window) is similar to that used by the Complainant as a figurative trademark.
The Response filed by the Respondent is well-argued and detailed. It shows clearly from the annexures that the domain name "Bankinternet.com" was registered on January 4, 1996, and the domain names "Bankinternet.net" and "Bankinternet.org" were registered on February 7, 1999. The original registrant was Bank Internet Inc., a corporation associated with a Mr. Brooks McCarty. He and a Mr. David Greenberg subsequently formed the Respondent which was first known as Bank Internet LLC, then B.I. Financial LLC and now BI Financial Inc. The domain names have been duly transferred to the Respondent (now BI Financial Inc.).
The Respondent or its predecessors in title provided a working website at each of the three domain addresses shortly after registration in each case.
The Complainant (according to an affidavit filed by a Mr. Pique on behalf of the Respondent) must have known that the disputed domain names were registered before November 10, 1999. The Complainant first approached B.I. Financial LLC in September 1999 inquiring whether the Respondent would agree to the transfer of the domain names. Consequently, according to the Respondent, the Complainant’s assertion that the domain names were not registered until November 10, 1999, is clearly wrong. The evidence attached to the Response makes this very clear.
The Respondent is acquiring the business of the Orlando-based Metro Savings Bank. Subject to regulatory approval, "Bancointernet.com" plans to become the nation’s first virtual bank, servicing the U.S. Hispanic and Portuguese communities. According to reports in "American Banker Online" of February 11, 2000 "Bankinternet.com" plans to offer online banking services and products "in the language of the community we are serving and geared to their culture".
The Respondent has filed a U.S. trademark application on August 12, 1999, in respect of the words "Bank Internet" on the basis of use dating back to January 4, 1996. If granted, the registration will confer rights back to that date.
There have been approaches by the Complainant to the Respondent to sell the domain names, culminating in a telephoned offer from a Mr. Playa in December 1999 to pay the Respondent $250,000. All offers were refused.
At a meeting between representatives of the parties at Miami Beach in November 1999 according to Mr. Pique’s affidavit, a Mr. Playa stated that if the parties were unable to work together, then the Complainant would pursue all avenues to ensure its alleged rights to the name prevailed. The Complainant, on his account, had ample resources to enable this to occur.
In January 2000, the Respondent wrote to the Complainant a "cease and desist" letter about its use of a "Bankinternet" mark. On February 7, 2000, the Respondent even threatened the Complainant with legal action for infringement.
Contrary to the Complainant’s allegation, there is no evidence of an injunction having been issued against the Respondent in connection with this dispute by any Court of competent jurisdiction.
5. Parties’ Contentions
In summary, the Complainant alleges:
(a) The disputed domain names are identical to its Spanish device trademark "Bankinternet".
(b) The disputed domain names are confusingly similar to the Complainant’s commercial name "Bankinter S.A." which it was granted in 1965 and its establishment sign denominative granted in 1989. The Complainant is the holder of the Spanish trademark "Bankinter" granted in 1975 for Class 1 Nomenclature and for denominative and mixed trademarks. It is the applicant for an EU trademark for "Bankinter" where retrospectivity is sought to June 3, 1996.
(c) The disputed domain names are contrary to the corporate denomination "Bankinter" which it has used since 1965. This submission seems to two of the Panelists familiar with the concept of common law trademarks to be a claim for just that.
(d) The Respondent has no legitimate interests or rights in the domain names. Its United States trademark application is still pending, whereas the Complainant sought to register the Spanish and EU trademarks in the United States with retroactivity to August 5, 1999.
(e) The Respondent appears, from a search of its website, to be an intermediary used to link banks and customers, and not a proper bank.
(f) The Respondent is guilty of bad faith by registering a website advertising online banking services for Hispanics and Brazilians in the United States. It is diverting the customers of the Complainant and cashing in on its reputation.
(g) The registration of the domain name is November 10, 1997.
(h) The Respondent offers the same services as the Complainant.
In summary, the Respondent submits:
(a) There are several factual errors or wrong inferences in the Complaint, i.e.:
(i) the date of registration of the disputed domain names (it was January 4, 1996 and not November 10, 1999);
(ii) the Complainant has only a pending application for an EU trademark which may not be granted;
(iii) no injunction has ever been served on the Respondent.
(b) The Respondent operates a genuine business and is not a "cybersquatter". This is not a case of an abusive registration suitable for the ICANN/WIPO administrative procedure. If the Complainant has a case, it should be one for the Courts to determine.
(c) The fact that the Complainant sought to buy the domain names from the Respondent for $250,000 and threatened to take heavy action against it, shows bad faith and, indeed, reverse domain name hijacking.
(d) The domain name "bankinternet.com" was registered before any of the Complainant’s "Bankinternet" marks were filed.
(e) The Complainant’s registered marks are device marks.
(f) The Complainant’s registered marks "internet" are not confusingly similar under trademark law. The word "Bankinternet" evokes clearly a banking service on the internet; whereas "Bankinter" evokes an international bank, if it evokes anything at all.
(g) The Respondent comes within all three limbs of Section 4(c) of the Policy:
(i) By September 1999, when first approached by the Complainant, the Respondent or its predecessors had used the "bankinternet.com" website for almost 4 years, thus demonstrating "a bona fide offering of goods and services".
(ii) B.I. Financial LLC’s predecessor, Bankinternet Inc. has been referred to by the press as "Bankinternet", according to documents produced. This is some evidence that the Respondent is known by the domain name.
(iii) The Respondent’s websites indicate a fair and significant use of the name and not an attempt to divert customers.
(h) The Complainant’s allegations of registration and use in bad faith are weak and unsubstantiated. It relies on the above submissions. "Bancointernet" is targeted to the languages spoken by the Respondent’s potential customers: the website type is fairly standard.
(i) The Complainant’s claim to be one of the most important financial entities operating in the internet is unproven.
(j) The Complainant is deliberately harassing the Respondent, as is shown by the various matters raised.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "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".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
That the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
That the Respondent has no legitimate interests in respect of the domain names.
The domain names have been registered and used in bad faith.
The Panel holds that the Complaint has no prospect of success. For the reasons set out in the Respondent’s submissions, it considers that the Respondent has proved rights or legitimate interests to the domain name at issue in accordance with Rule 4(c) of the Policy:
"(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."
Although only one leg of Rule 4(c) of the Policy needs be demonstrated, the Panel considers that the Respondent has shown all three for the reasons advanced by the Respondent above. In particular, contrary to the submissions of the Complainant (and the information could and should have been checked) the Respondent has used one of the disputed names since January 1996 and has used it ever since. Also, it is making a legitimate and fair use of the name and there is some evidence that it is known by the disputed domain name.
In the Panel’s view, even if it could be shown that the name of a mark and the domain names were identical or confusingly similar, the Complainant just has made out no case for bad faith registration and use of the domain names.
The Panel does not need to find reverse domain name hijacking. It is enough to reject the Complaint.
If the Complainant wishes, it can always take Court proceedings against the Respondent where its allegations can be scrutinized closely.
In the opinion of all members of the Panel, the Complainant has not discharged the onus cast on it under Paragraph 4(a) of the ICANN Policy, the Panel decides that the domain names "Bankinternet.com", "Bankinternet.org" and "Bankinternet.net" should not be transferred to the Complainant.
Hon. Sir Ian Barker QC
Mr. Roberto Bianchi Mr. Matthew Powers
Dated: September 5, 2000