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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

DZ Bank AG v. Bentz

Case No. D2006-0414

 

1. The Parties

The Complainant is DZ Bank AG, Frankfurt am Main, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwдlte, Germany.

The Respondent is Bentz, Seoul, Republic of Korea.

 

2. The Domain Name and Registrar

The disputed domain name <dzbank.com> is registered with Cydentity, Inc. dba Cypack.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2006. On April 3, 2006, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the domain name at issue. On April 11, 2006, Cydentity, Inc. dba Cypack.com 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 May 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2006.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on June 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

(a) DZ BANK is the fifth largest bank in Germany and was formed following the merger between the two co-operative central banks GZ-Bank and DG BANK on September 1, 2001.

(b) The Complainant owns numerous DZ BANK trademarks.

(c) As a result of exclusive and extensive use, Complainant’s mark DZ BANK has acquired significant goodwill and is widely known.

 

5. Parties’ Contentions

A. Complainant

(a) The domain name <dzbank.com> is virtually identical and confusingly similar to the trademark DZ BANK registered and used by the Complainant, as the domain name consists entirely of the distinctive term “Dz Bank”.

(b) The disputed domain name meets the test of confusing similarity under the Policy as it wholly incorporates the Complainant’s trademark DZ BANK.

(c) It is also well established that the specific top level of a domain name such as “.com”, “.org” or “net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.

(d) The domain name <dzbank.com> is confusingly similar to the trademark DZ BANK in which the Complainant has exclusive rights.

(e) The Respondent has also no right or legitimate interest in the domain name.

(f) The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or business names and has not permitted the Respondent to apply for or use any domain name incorporating the trademark.

(g) There is no evidence of its use, 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.

(h) The combination of words “Dz BANK” is obviously connected with the Complainant’s trademark and is not a word a trader would legitimately choose unless seeking to create an impression of an association with the Complainant.

(i) The Respondent uses the domain name to divert Internet users to a website in German and English language which contains various links to websites of third parties offering banking services.

(j) The website at “www.dzbank.com” is part of the Domain Name Parking Programm of SEDO GmbH, Im Mediapark 6, 50670 Kцln, a German Internet Service Provider, which enables domain name holders to earn click through fees for redirecting Internet users to competing websites and thus capitalizing on the Complainant’s mark. Such use is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.

(k) There is nothing to suggest that the Respondent trades under the domain name or the name DZ BANK, or is commonly known by said domain name or the name DZ BANK, or is making a legitimate non-commercial or fair use of the domain name.

(l) The Respondent has no rights or legitimate interests in the domain name.

(m) The Respondent does not conduct any legitimate commercial or non-commercial business activity.

(n) Screen shots of the Respondent’s web page at “www.dzbank.com” show that use of the domain name redirects users to a website that provides links to other banking service providers which compete with the Complainant’s services.

(o) The Respondent registered a domain name identical to Complainant’s trademark. That and the nature of the website the Respondent maintains makes it clear that his purpose is to divert traffic intended for the Complainant’s site to his own, with the intent to earn click-through revenues from the diverted traffic.

(p) This qualifies as bad faith under paragraph 4(b)(iv) of the Policy as the Respondent’s use of the domain name attempts to attract for commercial gain Internet users to the Respondent’s website 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 of a product or service on the Respondent’s website.

(q) Furthermore, the Respondent’s bad faith is also established by the fact that the Respondent offered to sell the domain name <dzbank.com> for “Ј $ 10.000” which is in excess of the Respondent’s out of pocket costs directly related to the domain name.

(r) The Respondent’s bad faith is further evidenced by the attempt to hide its true identity behind a false registration name (in all likelihood the name “Bentz” is not the true name of a Korean individual or business) and by providing to the Registrar non-existing telephone and fax numbers (+82-00-000-0000 telephone and +82-00-000-0000 fax).

(s) Finally, the language of the Registration Agreement is Korean. However, taking into account the special circumstances of the case, namely the fact that the website at <dzbank.com> is in German and English, it is requested that the proceedings be conducted in English.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Language of Proceedings

Paragraph 11 of the Rules provides inter alia that the language of the administrative proceedings shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. Having regard to the circumstances of the proceedings, including the Complainant's request that the language of the proceedings be English, the fact that the website at the disputed domain name is in English and German, and that the Respondent submitted no response or objection to the Complainant's request, the Panel determines that the language of the administrative proceedings shall be English.

B. Substantive Elements of the Policy

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as the Panel considers appropriate (see paragraph 14(b) of the Rules; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) the domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

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

C. Identical or Confusingly Similar

The Complainant’s mark DZ BANK is registered in numerous jurisdictions throughout the world. The domain name wholly incorporates the Complainant’s distinctive mark with the addition of the generic top-level domain “.com”. It is well established that the addition of the generic top level domain “.com” is without legal significance when comparing the domain name at issue to the Complainant’s registered trademark.

Therefore, the Panel finds that the domain name is identical to the Complainant’s mark pursuant to paragraph 4(a)(i) of the Policy.

D. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several past UDRP decisions have held that “once a Complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its mark; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that the Respondent has not, and has never been, commonly known by the domain name. The Panel’s view is that in the circumstances the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests.

The Respondent has not submitted a response. Therefore, the Respondent has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under paragraph 4(c) of the Policy. Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name.

E. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the domain name in bad faith in violation of the Policy paragraph 4(a)(iii). Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names. One such criteria which indicates bad faith, listed under paragraph 4(b)(i), includes “circumstances indicating that you have registered or you 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 trademark 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”. As set forth above, the Complainant contends that the Respondent has violated paragraph 4(b)(i) of the Policy, thus establishing bad faith.

It has been established in previous WIPO decisions that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith. Adidas-Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372 (May 14, 2001). The Panel finds that the Complainant has provided adequate evidence to support a conclusion that the Respondent’s actions satisfy the “intent to sell” requirement of Paragraph 4(b)(i). The Respondent asked the Complainant for “Ј $ 10.000” as compensation for selling or transferring the disputed domain name, which is an amount greater than the out-of pocket costs of registering and establishing the domain name.

In view of the fame of the Complainant’s mark, the Panel infers that the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto. This further suggests bad faith.

Accordingly the Panel concludes that the Respondent registered and used the domain name 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, <dzbank.com> be transferred to the Complainant.

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Thomas P. Pinansky
Sole Panelist

Dated: July 5, 2006