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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Atticabank S.A. v. Net Promotion, Inc.

Case No. D2006-0317

 

1. The Parties

The Complainant is Atticabank S.A., Athens, Greece, represented by Rokas & Partners, Greece.

The Respondent is Net Promotion, Inc., Lynden, Washington, United States of America, represented by an internal representative.

 

2. The Domain Name and Registrar

The disputed domain name <atticabank.com> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2006. On March 15, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On the same date, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2006. The Response was filed with the Center on April 4, 2006.

The Center appointed James Bridgeman as the sole panelist in this matter on April 20, 2006. 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.

 

4. Factual Background

The Complainant is a Greek corporation and was established in 1925. Since its formation, it has carried on banking and financial services business both in Greece and in other countries.

The Complainant is the owner of the following Greek registered trademarks and a CTM application:

- Greek registered trade mark ATTICA CARD, registration no. 117698, dated January 5, 1993, in respect of services of class 36 (specifically, credit card services and in general financial and banking services);

- Greek registered trade mark TECHNOCARD – BANK OF ATTICA with logo, registration no. 141534, dated September 25, 1998, registered in respect of goods and services in class 9 (in particular electronic magnetic cards), class 16 (specifically printed cards) and class 36 (specifically credit card services and in general financial and banking services);

- Greek registered trade mark TECHNOCARD – BANK OF ATTICA with logo, registration no. 41535, dated September 25, 1998, in respect of goods and services in class 9 (in particular electronic magnetic cards), class 16 (specifically printed cards) and class 36 (specifically credit card services and in general financial and banking services);

- Greek registered trade mark ATTICARD EXTRACASH – BANK OF ATTICA with logo, registration no. 143339, dated February 4, 1999, in respect of goods and services of class 9 (in particular electronic magnetic cards), class 16 (specifically printed cards) and class 36 (specifically credit card services and in general financial and banking services); and

- CTM Application ATTICA BANK with logo, application number No. 004983947, in respect of services in class 36 (banking services, currency services, investment services and financial services).

The Complainant registered the ccTLD domain name <bankofattica.gr> on June 2, 1999 and the ccTLD domain name <atticabank.gr> on September 2, 1999.

The Respondent is the owner of a substantial number of domain names, and, inter alia, maintains web sites with adult content. From early 1998 and August 29, 1999, the Respondent and its affiliates have registered many hundreds of Internet domains with the express goal of attracting visitors to its web sites.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits that the domain name is identical or confusingly similar to the trademarks and service marks ATTICA BANK, BANK OFATTICA and ATTICA in which the Complainant has rights.

The Complainant submits that it has established prior rights in said trademarks ATTICA BANK, BANK OF ATTICA and ATTICA both through the above-referenced registrations and also through extensive and long term use of the marks in trade, both in Greece and other jurisdictions since 1925.

The Complainant has submitted evidence of its use of the corporate name and trade mark BANK OF ATTICA as early as January 17, 1925, when it first issued its shares. Since its incorporation, the Complainant has continuously been known and carried on business in the Greek language as “Trapeza Attikis A.E.” and in English, as “Bank of Attica S.A.” or “Attica Bank S.A.”.

The Complainant submits that since its inception, it has established a protectable goodwill in the field of general financial services and especially banking and credit card services within the Greek market and in other jurisdictions. It has maintained a continuous and strong presence in the Greek banking sector and operates 61 branches in Greece.

The Complainant submits that it has, for many years, used the indication BANK OF ATTICA, accompanied by the letter A device, on its official documents, such as payment warrants, cash payment vouchers, bills receivable, credit notifications, receipts of debit, collection letters, consignment notes, fax transmissions and correspondence. Furthermore, the Complainant has for many years co-operated with leading foreign finance houses including Bank of New York, Citibank, American Express Bank, Marathon National Bank of New York, Commerzbank, BNP Paribas, Credit Suisse. In support of this claim, the Complainant has submitted a number of copy invoices and commercial correspondence bearing its name and marks. The documentation relates to Greek national and international transactions and the dates range from as early as 1980, to the present.

In addition, the Complainant has submitted copies of a number of its Annual Reports that have been published in English since at least since 1980. The Complainant submits that its Annual Reports are addressed to shareholders, investors and prospective investors and that the Complainant is named in English as BANK OF ATTICA in each of them.

The Complainant submits that the domain name <atticabank.com> is obviously confusingly similar to the Complainant’s corporate name, trademark, distinctive mark and branch office distinctive title BANK OF ATTICA and ATTICA BANK.

The Complainant submits that likelihood of confusion is self-evident. This is further reinforced by the fact that the trademarks ATTICA BANK, BANK OF ATTICA and ATTICA and the domain name <atticabank.com> have the same conceptual meaning. In each, the dominant element is the word “Attica”, which refers to the well-known Greek county Attica, the capital of which is Athens.

The Complainant has filed detailed submissions relating to its claimed rights under Greek law. In particular, the Complainant submits that in order to avoid the commercial exploitation of another party’s good reputation and to protect consumers from the likelihood of confusion, Greek law protects marks whose distinctiveness has been acquired through use.

Furthermore, the Complainant submits that in Greek law, the right to use a corporate name is acquired through use in transactions. If a corporate name is, in addition to its function as a name, also used as a distinctive mark, Greek law provides protection for the name where a third party creates a likelihood of confusion in the market by using a similar mark and name.

In Greek law, confusion is likely, when, due to the similarity of two distinctive marks, there is the possibility that third parties would be deceived as to the origin of goods and services or as to the identity of the corporation or as to whether there is co-operation between two businesses. The Complainant submits that Greek law offers protection against both a likelihood of confusion and likelihood of association.

The Complainant submits that it is the only entity legitimately using ATTICA BANK and BANK OF ATTICA as trademarks or service marks in Greece and overseas, and the Respondent has no rights or legitimate interest in respect of the domain name <atticabank.com>.

The words “Attica Bank” indicate a connection with a bank from Attica, the Greek county, the capital of which is Athens. The Respondent is not a bank, nor does it have any connection with Greece. The address and contact details given by the Respondent are either in the United States of America or in Italy.

The Complainant submits that because of its ownership of the above-mentioned national and community trademark, it has the right to an exclusive use of the marks ATTICA, ATTICA BANK and BANK OF ATTICA in its commercial transactions and to restrain others from using the same marks or other marks in such a manner that may cause confusion.

The Respondent has no connection with the Complainant or with any bank or financial institution of any kind, and does not provide banking services.

The Respondent has not been licensed by the Complainant to use the Complainant’s marks. On the contrary, the Respondent has operated a pornographic site for many years and has aimed to make a profit from the site by whisking-off unsuspected Internet users to its site. Until February 28, 2006, there was nothing on the Respondent’s site at <atticabank.com> which referred to any activities of a bank.

The disputed domain name <atticabank.com> is in no way relevant to the Respondent’s products and services.

A customer who is unsure about the Complainant’s domain name will often guess that the domain name is formed by the Complainant’s name. Any unsuspecting customer who might type in the Complainant’s name followed by the gTLD designation “.com” would be whisked-off to a pornographic site. This would disparage the name of the Complainant and tarnish its reputation, by association with a line of sexual photographs and products that are inconsistent with the image that the Complainant has striven to maintain for itself and the services it provides.

The Complainant submits that it contacted the president of the Respondent company by letter and emails on February 28, 2005, February 23, 2006 and March 1, 2006. It would appear that the date February 28, 2005, is an error as the copy documents furnished by the Complainant all relate to the months of February and March 2006.

In said correspondence, the Complainant requested the release the domain name <atticabank.com>, in order to allow the Complainant to exercise its lawful right to use its trademark ATTICA BANK as a domain name.

On March 1, 2006, the Complainant received an email from the president of the Respondent stating, inter alia, that the Respondent had replaced the content of the website with a directory of banks, financial institutions and insurance companies, which where situated in regions all over the USA, that were named ATTICA.

The Complainant alleges that it is obvious that the Respondent, which has a rich past experience with cyber squatting, and has been found guilty of it in several cases, detected the seriousness of the Complainant’s intentions and took action in order to “construct” ex post, a fair use of the domain name <atticabank.com>.

The ease with which the Respondent changed the content of its website, combined with the fact that the Respondent has neither registered the trademark ATTICA BANK nor used the trademark in commerce, demonstrates that the real purpose of the Respondent is to prevent the Complainant from using its trademark, and constitutes conduct which is completely abusive.

The Complainant submits that the domain name was registered and is being used in bad faith and submits that the Respondent acquires domain names for the sole purpose of obtaining money or other advantages from the trademark owners, with no intent or desire to use the domain name for any other purpose. Previous UDRP cases show that the Respondent has engaged in a pattern of such conduct, and has been involved in several cases of cyber squatting.

The Complainant refers to the UDRP case Veuve Clicquot Ponsardin v. Net-Promotion, Inc., WIPO Case No. D2000-0347, in which the Respondent had registered the domain names <champagneclicquot.com>, <champagne-clicquot.com>, <champagnecliquot.com> and <champagne-cliquot.com>. The corresponding web sites had been used for pornographic purposes.

In Louis Vuitton v. Net Promotion, Inc., WIPO Case No. D2000-0430, the Respondent had registered the domain name <luisvuitton.com>.

In each case, the Panel decided that the Respondent had registered the disputed domain names in bad faith and ruled that they be transferred to the respective complainants.

In said cases, it was established that the Respondent had registered in the past an impressive number of domain names, which referred to the names of banks and well- known entities, such as <mumm-reims.com>, and <champagnemoet.com>, which are not at issue here but which included words identical or confusingly similar to famous trademarks.

The Complainant further refers to a case involving the domain name <groupama.net> brought against the Respondent, a case of cyber squatting, brought before the courts in France.

In the present Administrative Proceedings, it has been demonstrated that the Respondent has once again used the name of a bank, specifically the Complainant’s bank, as the domain name address of a pornographic site even though the Respondent has neither connection with any bank nor with Greece and the website that operated under the domain name had no notional relevance to its domain name.

When the Respondent contacted the president of the Respondent, on February 28, 2006 by email, the Respondent’s answer was to immediately change the content of the website and to construct a directory of 15 branches and agencies of banks, insurance and trust companies with addresses in several regions of the USA, all of which bear the name ATTICA. The fact that the Respondent omitted, intentionally of course, to include the Complainant in this directory and that with the new content the site misdirects the public to other banks and financial institutions, reinforces the Complainant’s argument that the Respondent has acted in bad faith.

The Complainant submits that the Respondent registered the domain name, intending to resell it to the legitimate owner or/and to take other advantages from this registration.

Furthermore, the Respondent has registered the <atticabank.com> domain name with the sole purpose of exploiting the confusion, which would arise through the use of the Complainant’s trademark as the Respondent’s domain name, to make a profit from it by securing extra accidental visits to its pornographic site, and additionally by forcing the Complainant to buy the domain name, in order to protect its name and reputation from defamation. Even if an Internet user did not believe that he has visited the Complainant’s site, such perception would be activated only after the deception or confusion has kicked in and when damage would already be done.

Further, the Respondent insinuated in its email that if the Complainant wants the domain name <atticabank.com> then it should be prepared to pay a substantial amount of money.

B. Respondent

The Respondent submits that the domain name <atticabank.com> was registered and is being used in good faith. The Respondent submits that it is a reputable telco related company with activities covering many interests in entertainments, mobile devices and Internet billing and payments with the brand name PagoMat™ and DotPaysolutions.

Since early 1998, the Respondent and its affiliates have registered many hundreds of Internet domains with the goal of attracting visitors to their websites. In two or three cases, the Respondent was naпvely at fault in registering domains containing popular trademarks.

The domain name in dispute <atticabank.com> was registered before either the Anti-Cyber Squatting Consumer Protection Act came into effect on November 29, 1999, or the Policy became effective on October 24, 1999.

While the Complainant claims that, “the indications Attica and Attica Bank are internationally registered trademarks” the Complainant’s trademarks were not internationally registered at the time the domain name was first registered.

The Complainant is the owner of three (3) logo Greek registrations for the brand names associated with a credit/debit card, ATTICA CARD, TECHNOCARD, ATTICARD. The Complainant does not have a Greek national registration for the trademarks BANK OF ATTICA or ATTICA BANK.

The Complainant claims to be the owner of a CTM registration for the trademark ATTICA BANK but that is just simply not true. The CTM application for a graphic logo was filed only on June 17, 2005, and has now published application status.

The Respondent submits that the Complainant’s trademarks are not distinctive. The Respondent chose to register the name <atticabank.com> because it is composed of very popular names.

The Complainant’s name ATTICA BANK is not a well-known name in the world. A Google search with the word “attica” produced about 6,720,000 results and the word “bank” about 962,000,000 results. In the world’s most important trademark database, the United States Patent and Trademark Office, there are no trademark registrations with the words ATTICA BANK, and there are abandoned registrations only for the mark ATTICA. There was no result associated with the Complainant in a search for ATTICA BANK in 1999 in the most popular search engines and directories Altavista Yahoo.

Searches in Dun & Bradstreet’s EuroPages business directory, Switchboard or BigBook disclose numerous companies with the name ATTICA as tradename but there is not one record concerning the Complainant.

The Respondent is not affiliated in anyway with the Complainant and has no desire to fool or confuse the Complainant’s “clients”. The Complainant is probably a reputed institution in Greece but is a very small financial institution. The Complainant has only 25 branches located around Athens, no branch or office in other European countries and no branch or office in the United States of America. It cannot be considered an internationally well-known entity or a world-famous brand name.

Before February 28, 2006, the Respondent did not know of the existence of this bank, no representative from the Complainant has ever been in contact with the Respondent.

Recently, the Respondent has bona fide promoted an adult network with the domain name <atticabank.com> and has autonomously reached the decision (not solicited) to abandon this promotion. The Respondent intends to use the domain in the future to promote other services.

From March 1 to March 31, 2006, the website established at the domain name <atticabank.com> has been visited by only 3 persons in total.

A search for “attica bank” using Google discloses that the Respondent’s web site is currently ranked in third position (just below the <bankofattica.gr> site). The fact that the Respondent’s website is not visited at all despite the top rank position demonstrates that the Complainant is not a well-known trademark and the claims of prejudice and damages invoked by the Complainant are poor and inconsistent.

On November 21, 1999, the Complainant registered the Greek ccTLD domain name <atticabank.gr> but the domain has never been used for a concrete website.

If the Respondent were a “real” cyber squatter, it would register all the possible variants names like <bankofattica.com> or <bankofattica.net> or <bank-of-attica.com> or <bank-of-attica.net>. All of these domain names are available in registration in all the best known Internet extensions: .com, .net, .org, .us, .info, .name, .biz, .tv, .ws, .cc.

The Respondent has no intention of selling the domain name. The domain has never been listed in one of the “domainforsale.com” directories. From the Respondent’s first contact with the Complainant’s representative, the Respondent has clearly stated: “We have no special interest in selling this domain name but in case it will be sold you should consider the actual market value and must be concerned the costs to build up this domain name, to maintain it, and may be, to build up a new domain. You should consider the costs of our legal representation also.”

The Respondent should not be considered to be like a cyber squatter if it asks to be paid its maintenance costs since 1999.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:

(i) the domain name in dispute is identical or confusingly similar 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 said domain name; and

(iii) the said domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Although the Complainant’s business is primarily based in Greece, the Complainant has for many years used the words ATTICA BANK and BANK OF ATTICA in the English language both as a corporate name and as a trademark and service mark. The Complainant has built a substantial goodwill in the use of these marks both in Greece and in other jurisdictions throughout the world for its banking and financial services.

The Complainant’s Greek registered trademark ATTICA CARD, registration no. 117698, is for a word mark. The Greek registered trademark TECHNOCARD – BANK OF ATTICA, registration no. 141534, includes a logo but the registration document expressly includes the words as protected indications. Similarly, Greek registered trademark TECHNOCARD – BANK OF ATTICA, registration no. 141535, includes a logo device but again the registration document expressly states that the words are protected indications. Similar protection is afforded to the word elements in the Greek registered trademarks TECHNOCARD – BANK OF ATTICA with logo, registration no. 141535 and ATTICARD EXTRACASH – BANK OF ATTICA with logo, registration no. 143339.

The Complainant is incorrect in stating that it is the owner of a CTM registration as it would appear to be merely the applicant for registration of a CTM and the application is the subject of opposition proceedings at the OHIM.

The Complainant has established to the satisfaction of this Panel that it has rights in the trademarks ATTICA BANK and BANK OF ATTICA through long term use, and in addition, it has rights in the marks ATTICA CARD, TECHNOCARD – BANK OF ATTICA and ATTICARD EXTRACASH – BANK OF ATTICA through its Greek registered trademarks.

The domain name <atticabank.com> is clearly identical to the Complainant’s trademark ATTICA BANK and is confusingly similar to the Complainant’s trademark BANK OF ATTICA.

B. Rights or Legitimate Interests

The evidence is that the Respondent is in the business of maintaining websites with adult or pornographic material. It also claims to be engaged in other businesses, specifically “entertainment, mobile device and Internet billings and payments with the brand name PagoMat™ and DotPaysolutions”.

The Respondent has no connection with the Complainant’s business or with the geographical location Attica. Neither does the Respondent have any connection with banking.

Based on the case file, the Panel is satisfied that the Respondent has no rights or legitimate interest in the domain name <atticabank.com>.

C. Registered and Used in Bad Faith

The essence of the Respondent’s defence to the Complaint is that the Complainant did not have an international reputation at the time the domain name <atticabank.com> was registered. The Respondent’s argument is that it was not aware of the Complainant or its reputation when it registered the domain name and so the registration was not made in bad faith.

This Panel rejects that argument. It is clear that the Complainant had an established and growing reputation since it was formed in 1925. Over the years, it has established a significant number of branches in Greece. Furthermore, it has carried on business with other financial institutions internationally.

The Respondent could easily have been aware of the Complainant’s reputation. The Respondent registered the domain name in issue <atticabank.com> on August 29, 1999, which was less than three months after the Complainant registered its ccTLD domain name <bankofattica.gr> on June 2, 1999.

The fact that cases Veuve Clicquot Ponsardin v. Net-Promotion, Inc. WIPO Case No. D2000-0347, and Louis Vuitton v. Net Promotion, Inc. WIPO Case No. D2000-0430 have been determined against the Respondent should not and does not, in themselves, influence this Panel in making its determination on the facts in this case.

It is however notable that in Louis Vuitton v. Net Promotion, Inc. WIPO Case No. D2000-0430 there was an uncontested statement by the complainant that the Respondent had sent a message on July 3, 2000, which translates approximately as “the domain name is about to be given free to a Greek company interested in it…” This may indicate to this Panel that the Respondent had some connections with Greece at about the time that the domain name <atticabank.com> was registered in 1999.

On the balance of probabilities, the choice of the Complainant’s corporate name and trademark as a domain name by the Respondent was more than a coincidence as claimed by the Respondent.

The use of the domain name as the address of a site offering pornographic content is indicative of use in bad faith.

In reaching the conclusion that the domain name was registered and is being used in bad faith, this Panel is fortified by the fact that while on the one hand the Respondent has stated in the Response that it has no intention of selling the domain name, on the other hand, the Respondent has stated in correspondence with the Complainant: “We have no special interest in selling this domain name but in case it will be sold you should consider the actual market value and must be concerned (sic) the costs to build up this domain name, to maintain it, and may be, to build up a new domain. You should consider the costs of our legal representation also.”

The indication that the domain name may be for sale for a sum in excess of the Respondent’s out of pocket costs directly related to the domain name and the fact that the domain name was connected with a website with pornographic content are evidence of registration and use in bad faith as set out in sub-paragraphs 4(b)(i) and (iv) of the Policy viz:

- circumstances indicating that the Respondent has registered or has 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 trademark or service mark for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; and

- by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel therefore, finds that the disputed domain name has been registered and used in bad faith.

 

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 domain name <atticabank.com> be transferred to the Complainant.


James Bridgeman
Sole Panelist

Dated: May 4, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0317.html

 

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