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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ABN AMRO Holding N.V. v. Poldomeny
Case No. D2001-0465
1. The Parties
The Complainant in this administrative proceeding is ABN AMRO Holding N.V., ("Complainant"), a public company limited by shares, incorporated under the laws of the Netherlands, with its main business address at Gustav Mahlerlaan 10, 1082 PP Amsterdam, the Netherlands. Complainant's authorised representative is Mr. Gregor S.P. Vos, Attorney at law, Nauta Dutilh, P.O. Box 7113, 1007 JC Amsterdam, the Netherlands.
According to the Registrar's WHOIS database, the Respondent is Poldomeny ("Respondent"), Mr. Leszek Pakulski, Plochocinska 33, Warsaw, Poland 03-044, PL.
2. The Domain Names and Registrar
The domain names at issue are <abnamrobank.org>, <abn-amro-bank.org> and <abn-amro-bank.net> ("Domain Names"), registered with Tucows Inc. ("Registrar") of 96 Mowat Avenue, Toronto, Ontario M6K 3M1, Canada.
3. Procedural History
A complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on March 30, 2001, by e-mail and was received on the same day in hardcopy.
The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the WIPO Center on April 3, 2001.
On April 4, 2001, a Request for Registrar Verification was transmitted to the Registrar, which confirmed on the same day with its Verification Response that the disputed Domain Names were registered with Tucows Inc. and that Respondent, Poldomeny, was the current registrant of the disputed Domain Names. The reply also contained contact information for the Respondent.
The assigned WIPO Center Case Manager completed a Formal Requirements Compliance Checklist on April 5, 2001, without recording any formal deficiencies.
The Panel independently determines and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the applicable requirements.
A Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to the Respondent on April 5, 2001, setting a deadline of April 24, 2001 by which the Respondent could file a response to the Complaint. The Commencement Notification and Complaint was also transmitted to email@example.com, firstname.lastname@example.org and email@example.com. In addition, the aforementioned documents were sent by DHL courier service to the available postal address of Respondent. Despite of a delivery attempt at Respondent's postal address, the courier company returned the shipment on April 9, 2001, to the WIPO Center as undeliverable due to incorrect provided address information.
On April 23, 2001, Respondent contacted the assigned Case Manager in order to request an extension of time beyond the set deadline of April 24, 2001, for filing a response. Not following Complainant's opposition, the parties were informed on April 25, 2001, by the Case Manager in charge that the WIPO Center would grant Respondent a ten-day extension. The new due date by which Respondent could file a response to the Complaint was set as of May 4, 2001.
Following the first unsuccessful delivery attempt, Respondent provided the assigned Case Manager on April 25, 2001, with new contact details consisting of a fax number (48 22 6696226) and a new postal address (ul. Sieciechowska 11, 01-928 Warsaw, Poland). The attempt to send the correspondence to Respondent's indicated fax number was unsuccessful. In addition, on April 26, 2001, the WIPO Center sent the exhibits to the Complaint (only available in hardcopy) by courier service to the new address provided by Respondent. According to DHL's track a shipment report the package with the exhibits to the Complaint were delivered on May 2, 2001. Nevertheless, on May 8, 2001, Respondent stated to the Case Manager that the package was only received on May 7, 2001, and therefore requested another extension of at least ten days. On the same day, the assigned Case Manager informed Respondent that the requested extension was not granted and that it would be the Panelist's sole discretion whether to consider a response submitted after the set deadline.
Having reviewed the communications' records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under paragraph 2(a) of the Rules to "employ reasonably available means calculated to achieve actual notice to Respondent".
The Panel would like to note that Respondent has until today failed to submit any response to the Complaint.
Complainant requested a single-member panel. Since Respondent failed to submit a response, the WIPO Center invited the undersigned to serve as sole panelist in Case No. D2001-0465 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence which was duly signed and returned to the WIPO Center on May 22, 2001.
The WIPO Center transmitted to the parties on May 25, 2001, a Notification of Appointment of Administrative Panel and Projected Decision Date as of June 7, 2001. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
The following facts and statements appear from the Complaint and its annexed documents which have not been contested by Respondent:
Complainant, one of the largest banking groups worldwide, is the registered owner of the trademark "ABN AMRO" for various goods and services in most countries of the world including, but not limited to, the United States, Canada, Argentina, Australia, South Africa, Japan, Switzerland as well as all countries of the European Union. A computer printout of all trade mark registrations for "ABN AMRO" was attached to the Complaint [Annex 6].
In Poland, "ABN AMRO" has been registered as a Trade mark No. 660 574 on August 6, 1996, in Class 16, 35 and 36 [Annex 3].
The disputed Domain Names <abnamrobank.org>, <abn-amro-bank.org> and <abn-amro-bank.net> were registered by Respondent on June 21, 2000.
5. Parties’ Contentions
Complainant contends that:
- the domain name is identical to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the Domain Names were registered and are being used in bad faith; and
- the domain name <abnamrobank.org> should be transferred to the Complainant; and
- the domain names <abn-amro-bank.org> and <abn-amro-bank.net> should be cancelled.
Additional respective contentions of the Complainant may be contained in the following discussions and findings.
As mentioned above, Respondent has been notified in accordance with paragraph 2(a) of the Rules, but failed to submit a response in accordance with the requirements under the Policy. Thus, Complainant's allegations are deemed to be non contested.
6. Discussion and Findings
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."
Identical or confusingly similar Domain Name: Policy 4(a)(i)
The domain names at issue are <abnamrobank.org>, <abn-amro-bank.org> and <abn-amro-bank.net>. Complainant is the holder of the registered trade mark "ABN AMRO", which obviously is identical with the first and relevant part of the disputed Domain Names even though, in two cases, separated by a hyphen. The fact that all three Domain Names contain, in addition, the supplementary word "bank" at the end of the wording does not reduce the danger of possible confusion. Moreover, since Complainant has its main activity in the banking business, the suffix "bank" in each Domain Name amplifies the possibility of confusion with Complainant's trade mark for the public.
In any event, the Respondent does not contest this point.
The Panel holds that the Complainant has established element (i) of the Policy's paragraph 4(a).
Respondent's Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)
It is first convenient to recall that, according to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] 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 trade mark or service mark at issue."
Respondent has not provided any evidence of legitimate rights or interests in the above sense, and has not shown any other circumstances reflecting right or legitimate interest in the disputed Domain Names.
In the absence of any indications as to a legitimate interest of Respondent to use the Domain Names, the Panel finds that Complainant has fulfilled its burden of proof under paragraph 4(a)(ii) of the Policy.
Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)
The third element to be established by Complainant is that the Domain Name has been registered and used in bad faith.
Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:
"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name.; or
(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or your location."
Complainant alleges that Respondent registered and used the Domain Names in bad faith.
Complainant alleges, and Respondent does not deny, that all three disputed Domain Names were offered for auction on the web site <vipserwis.com> which is registered by Respondent (Annex 7 and 8). On January 17, 2001, Complainant's attorney, Mr. Gregor Vos, sent a cease and desist letter to the Respondent (Annex 17). On the same day, Mr. Vos received an e-mail from Respondent which stated that Complainant " (…) has still more than 8 hours to buy this domain and two more on the auction <vipserwis.com>, i.e. the domain names <abn-amro-bank.org> and <abn-amro-bank.net> (...)". Mr. Vos replied that Complainant had no intention to pay any money for the Domain Names since the registration hereof constituted an infringement as to the Complainant's rights. On the same day the Respondent sent another e-mail, which stated that "(…) if ABN AMRO has no intentions to pay, we will sell it to the new buyer, and ABN AMRO will never have it." These e-mails have been attached to the Complaint as Annexes 18, 19, 20 and 21. According to Complainant, the domain name <abnmrobank.org> was offered for auction for PLN 169.500.- (Annex 9), which amounts to EURO 45.566.- (Annex 12). The domain names <abn-amro-bank.org> and <abn-amro-bank.net> were offered for auction for PLN 136.700.- (Annex 11) and 145.700.- (Annex 10) which amounts to EURO 36.748.- (Annex 14) respectively EURO 39.168.- (Annex 13). Obviously, the prices at which the disputed Domain Names were offered for auction are by far higher than any out-of-pocket costs directly related to these Domain Names and this fact by itself is one of the indications mentioned in the Policy for bad faith. The fact that the auction offerings of the three Domain Names in question finished on February 21, 2001, does not change the fact that excessive amounts were sought.
Furthermore, it should be noted that Respondent has registered and is auctioning on its web site "vipwereis.com" a large number of domain names consisting of the trade marks and/or company names of several banks such as <citybankpl.com> or <kredytbank.org>. Complainant has produced a list of domain names and WHOIS database searches to underline this fact (Annex 15).
Additionally, in WIPO Case No. D2000-0003 (<telstra.org>), paragraphs 7.9 to 7.11, as well as in other WIPO decisions, it was ascertained that a passive holding of a domain name may be sufficient to constitute bad faith, taking into consideration the overall context of Respondent's behavior. In the present case, the following circumstances seem relevant in this respect: Complainant's trademark is well known throughout the world; Respondent provided no evidence of any good faith use of the disputed Domain Names, and does not seem to have associated the Domain Name with any serious activity or any genuine web site presence of his own until today.
In an overall assessment of the contentions and the facts mentioned above, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant, and that Respondent's bad faith registration and use of the Domain Names have been proven.
In view of the circumstances and facts discussed above, the Panelist decides that the disputed Domain Names are confusingly similar to the registered trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Names, and that the Respondent's Domain Names have been registered and are being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist requires that the disputed Domain Name, <abnamrobank.org>, shall be transferred to the Complainant and that the disputed Domain Names, <abn-amro-bank.org>; and <abn-amro-bank.net> shall be cancelled.
Bernhard F. Meyer-Hauser
Dated: June 7, 2001