WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Domain Bank, Inc. v Sonic Co., Ltd.
Case No. DBIZ2001-00014
1. The Parties
The Complainant is Domain Bank, Inc., a corporation organized under the laws of Pennsylvania, United States of America. Its principal place of business is at 23 West 4th Street, Bethlehem, Pennsylvania, 18015 United States of America.
The Respondent is named as Sonic Co., Ltd., with an office at 4-6-17-204, Sumidaku, Tokyo, 130-0012 Japan.
2. The Domain Name and Registrar
The contested domain name is <domainbank.biz>.
The registrar is Procurement Services International, Inc. (PSI-Japan), of Asahi Sanban-cho, Plaza #206, 7-1, Sanban-cho, Chiyoda-ku, Tokyo, 102-0075 Japan.
3. Procedural History
The electronic version of the Complaint was filed on December 9, 2001. The hardcopy of the Complaint was received on December 17, 2001.
In accordance with Paragraph 4(a) of the Rules for Start-Up Trademark Opposition Policy for <.BIZ> ("STOP Rules"), the Center verified that the Complaint satisfies the formal requirements of the Start-Up Trademark Opposition Policy for <.BIZ> ("STOP"), the STOP Rules and the WIPO Supplemental STOP Rules.
On December 21, 2001, the Center formally notified the Respondent of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
In accordance with the STOP Rules, the last day for submitting a Response was January 10, 2002. The Respondent failed to submit a Response by that date and on January 14, 2002, the Center formally notified the Respondent of its failure to do so.
On January 30, 2002, the parties were notified that Mr. Swinson had been appointed as the sole panelist.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the STOP Rules and the WIPO Supplemental STOP Rules; payment was properly made; the Panel agrees with the Center’s assessment concerning the Complainant’s compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(a) of the STOP Rules; the Respondent was properly notified of its failure to submit a Response within the time period allowed in the Notification of Complaint and Commencement of Administrative Proceeding in accordance with paragraph 2(a) of the STOP Rules and the Administrative Panel was properly constituted.
4. Factual Background
Since 1997, the Complainant has used the "Domain Bank" mark throughout the world, including the United States, in its business of Internet domain name registration, management services and related services.
The Complainant is the owner of a trademark registration for "Domain Bank" in the United States, pursuant to an assignment of all rights and goodwill in that registration by Altronics, Inc. on July 1, 1999. The assignment was recorded in the United States Patent and Trademark Office on May 3, 2000.
The Complainant filed a separate trademark registration for "Domain Bank" on May 26, 2000, (serial number 76056945). Although not stated, the application was filed in the United States. The application is pending.
The Complainant has registered the following domain names containing the "Domain Bank" mark: <domainbank.com>, <domainbank.net> and <domainbank.info>. The President of Domain Bank has registered the <domainbank.org> domain name.
The Respondent has registered the domain name <domainbank.biz>.
5. Parties’ Contentions
The Complainant’s submissions can be summarized as follows:
The Complainant owns a trademark registration, and has filed a trademark application, for the "Domain Bank" mark in the United States. It has registered several domain names incorporating the "Domain Bank" mark.
Since 1997, the Complainant has used the "Domain Bank" mark extensively throughout the world, including in the United States, in its business of Internet domain name registration and related services. The mark is, as a result, well known to the public throughout the world and has become a very valuable asset of the company.
Other than in respect of the top level domain <.biz>, the disputed domain name is identical to the "Domain Bank" mark in which the Complainant has rights. The disputed domain name is therefore confusingly similar to the "Domain Bank" mark.
The Respondent has not used, and is not currently using, the disputed domain name in connection with any business, has not been commonly known by the domain name <domainbank.biz> and does not operate a business using that domain name. There is no website functioning at the address of the disputed domain name. For these reasons, the Respondent has no rights or legitimate interests in <domainbank.biz>.
The following is evidence of the Respondent’s bad faith registration and use of the domain name:
(a) the Respondent operates an Internet services website at <www.sonic.co.jp>;
(b) the Complainant operates a global domain name registration business under the name and mark "Domain Bank";
(c) it is inconceivable that the Respondent would not have known that the "Domain Bank" mark was an exclusive and valuable mark belonging to the Complainant before it sought to register the disputed domain name;
(d) the Respondent registered the domain name to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s use of the domain name has created initial interest confusion;
(e) the Respondent registered and is using the domain name in order to disrupt the Complainant’s business;
(f) the Respondent has not provided any evidence of actual or contemplated good faith use of the disputed domain name;
(g) the Respondent has refused to transfer or cancel the domain name in light of the Complainant’s clear objection; and
(h) the Complainant has not agreed to the Respondent’s use or registration of the domain name.
The Respondent has not submitted a Response.
6. Discussion and Findings
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(b) of STOP, namely:
(i) the disputed domain name is identical 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 domain name; and
(iii) the domain name has been registered or is being used in bad faith.
The onus of proving these elements is on the Complainant.
6.1 Identical to a trademark or service mark
The Panel must find that:
(a) the Complainant has a trademark or service mark; and
(b) that the contested domain name is identical to that trademark or service mark.
The Complainant asserts that it has used and continues to use the "Domain Bank" mark significantly throughout the world in its Internet domain name registration business. Supporting evidence for this was not presented.
According to its website at <domainbank.com>, accessed by the Panel, "Domain Bank, Inc is an ICANN accredited, Bethlehem, Pennsylvania based domain name registrar and was founded in 1997 for the purpose of facilitating registrations in Top Level domains. As the first active post-testbed registrar and a leader in< .Com>, <.Net>, and<.Org> registrations, Domain Bank, Inc. has been prominent in the domain name industry since its inception".
Both the <domainbank.info> and <domainbank.net> websites owned by the Complainant resolve to the <domainbank.com> website. The latter website displays a copyright notice dated 1997-2002.
The Complainant has presented evidence of an assignment of a trademark registration for "Domain Bank" in the United States from another company, Altronics, Inc. In addition, the Complainant filed a separate trademark application in the United States for the "Domain Bank" mark on May 26, 2000, shortly after taking the assignment from Altronics, Inc.
In light of the above, the Panel finds that the Complainant has trademark rights to the "Domain Bank" mark.
The Panel also finds that the domain name <domainbank.biz> is identical to the Complainant’s mark, apart from the addition of the generic <.biz> identifier. The addition of the generic identifier <.biz> does nothing to deflect the impact on the viewer of the "Domain Bank" mark.
Under Paragraph 4(c) of STOP, the Respondent may demonstrate its rights and interests in the contested domain name by showing any of the following circumstances, in particular but without limitation:
(i) the Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; or
(ii) before any notice to it of the dispute, the Respondent used, or made 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
(iii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights.
Those circumstances are not exhaustive of the circumstances that may establish rights or legitimate interests.
The Respondent had the opportunity to respond and present evidence, for example, that it has a legitimate business and that it registered the domain name without knowledge of the Complainant’s rights. The Respondent has not submitted a Response. The Complainant is not entitled to relief simply by default, but the Panel can and does draw evidentiary inferences from a failure to respond.
There appears to be no functioning website yet accessible via the disputed domain name.
The Panel visited the Respondent’s website at <www.sonic.co.jp>. While most of the site is in Japanese, the "Domain Bank" mark does not appear to be used and there is nothing to suggest that the Respondent uses or is known by that mark in its business.
Although there is little evidence presented by the Complainant on this point, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
6.3 Bad Faith
Paragraph 4(b) of STOP states that any of the following circumstances, in particular but without limitation, shall be evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the contested domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the contested domain name; or
(ii) the Respondent has registered the contested domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant provided no evidence of any correspondence or communication between the Complainant and the Respondent. The Complainant has provided no evidence relating to the use of the disputed domain name.
The Complainant has claimed that it was inconceivable that the Respondent would not have been aware of the Complainant’s rights in the "Domain Bank" mark, in light of the fact that the Respondent operates "an Internet services website". The inference to be drawn, the Complainant seems to be suggesting, is that the Respondent is in the same or similar line of business as the Complainant and would by virtue of that fact invariably know of the Complainant and its mark. This claim presumably is intended to go towards establishing bad faith by the Respondent in registering the disputed domain name.
The Complainant may be a well-known and long standing domain name registrar. However, the Complainant has presented very little evidence on this issue. It is unclear whether the Complainant’s reputation extends to Japan, where the Respondent is located. The Respondent registered the disputed domain name with a Japanese domain name registrar. It is not improbable that the Respondent has never heard of the Complainant. The word "domain" and the word "bank" are both generic words, and it is possible that the Respondent decided to register "domainbank" as a domain name without prior knowledge of the Complainant or its service. In short, the Complainant has not presented any evidence of the Respondent’s knowledge or likely knowledge of the Complainant’s business or trademark.
As noted earlier, the Panel visited the Respondent’s website at <www.sonic.co.jp>. Most of the website is in Japanese and it is not clear whether the Respondent is engaged in the same business as the Complainant. The fact that the Respondent’s website is almost entirely in Japanese suggests that its business is limited to Japan. It is likely that users of the Complainant’s site (which is in English only), and the Respondent’s website are a different class of people.
The Complainant goes on to claim, "on information and belief", and without presenting any evidence, that the Respondent registered the domain name in question to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Whilst not stated, the claim here is presumably intended to be that the Respondent is doing so in order to attract users to its site for commercial profit. The Complainant says that the Respondent’s registration of the domain name constitutes "initial interest confusion" and that this weighs in favour of a finding of bad faith. Thomas & Betts International, Inc. Power Cabling Corp., Inc. ICANN/DeC Case No. AF-0274.
The Complainant also claims, again, that on information and belief, the Respondent has registered and is using the disputed domain name for the purpose of intentionally disrupting the business of the Complainant.
The Complainant has the onus of proving these claims.
However, the Complainant has not explained or provided the "information" it is relying on in making these claims about attracting users for profit or disrupting the Complainant’s business. It has not provided any supporting evidence whatsoever. Evidence that the Respondent is engaged in, or intends to engage in, the same business as the Complainant would tend to suggest that the Respondent was benefiting from using the Complainant’s domain name for the purpose of attracting customers to the Respondent’s website. However, this has not been established.
As to the claim of "initial interest confusion" weighing in favour of a finding of bad faith, there is no evidence that the Respondent intentionally registered or sought to use the disputed domain name for the purpose asserted by the Complainant. It is also not clear that users visiting <domainbank.biz> would likely to be confused as to the association of the site with the Complainant, its business and the "Domain Bank" mark. There is also nothing to suggest an intention on the Respondent’s part to disrupt the Complainant’s business.
In short, the Complainant has provided very little supporting evidence, and has provided no evidence of bad faith on behalf of the Respondent.
Merely because the Complainant has a series of <.com>, <.org> and <.net> domain name registrations does not entitle the Complainant to succeed in a domain name dispute over the corresponding <.biz> domain name, absent any evidence of bad faith.
The Complainant has not provided sufficient evidence of any of the conduct listed as evidence of bad faith in paragraph 4(b) of STOP, nor has it provided sufficient evidence of any other conduct showing bad faith on the Respondent’s part for the purpose of paragraph 4(a) of STOP.
The Panel has decided that there is no evidence of bad faith. That is not to say that the Respondent registered the disputed domain name with good motives. Even taking into account the fact that the Respondent did not file a response, and drawing appropriate inferences against the Respondent, the Panel is unable to draw the required conclusions where no evidence has been presented on this issue, where the dispute domain name comprises two generic words, where the disputed domain name has not been used, and here the Complainant and the Respondent are located in different countries.
For the reasons set forth above, the Panel decides that the Complaint fails.
Dated: February 13, 2002