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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vontobel Holding Ltd. v. Vontobell LLC
Case No. D2008-1559
1 The Parties
The Complainant is Vontobel Holding Ltd., of Zurich, Switzerland, represented by Wild Schnyder AG, of Switzerland.
The Respondent is Vontobell LLC, of Lagos, Nigeria, represented by Harry Harts Law Firm, of Nigeria.
2 The Domain Name and Registrar
The disputed domain name <vontobe1.com> is registered with Melbourne IT Ltd.
3 Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the вЂњCenterвЂќ) on October 14, 2008. On October 14, 2008, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the domain name. On October 20, 2008, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вЂњPolicyвЂќ or вЂњUDRPвЂќ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњRulesвЂќ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњSupplemental RulesвЂќ).
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 October 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2008. Respondent did not submit any response. Accordingly, the Center notified RespondentвЂ™s default on November 12, 2008.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 18, 2008. 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.
On October 20, 2008, subsequent to ComplainantвЂ™s filing of the Complaint, Respondent (through its counsel) transmitted to the Center by email a query whether Complainant, in exchange for transfer of the disputed domain name, would be willing to compensate Respondent for expenses alleged to be associated with the disputed domain name. That correspondence was transmitted by the Center to the Panel as part of the file in this matter. By email dated November 25, 2008, Complainant (through its counsel) transmitted by e-mail to the Center copies of e-mail correspondence subsequently exchanged between Complainant and Respondent. This includes an email from Respondent to Complainant dated November 9, 2008 setting forth the terms for transfer offered by Respondent. The Panel accepts the correspondence transmitted by Complainant on November 25, 2008, as evidence in this proceeding because it (a) is the direct result of correspondence initiated by Respondent in connection with this proceeding and (b) could not have been provided by Complainant when it filed its Complaint.
On December 1, 2008, the Center received and forwarded to the Panel an email communication from RespondentвЂ™s counsel who advised that he was representing the Respondent, and that Respondent had decided to settle this matter for USD 900. RespondentвЂ™s counsel said that Complainant was refusing to communicate. The Panel notes that Complainant was neither under an obligation to correspond with RespondentвЂ™s counsel nor to pursue this offer of settlement.
4 Factual Background
Complainant is the owner of registrations for the trademark and service mark VONTOBEL in a substantial number of countries. Complainant has provided evidence of ownership of registrations through furnishing of copies of certificates of registration and/or computer printouts from trademark authorities evidencing subsisting registrations (Complaint, Exhibit 6). These include registration at the Swiss Federal Institute of Intellectual Property, registration number 406720, dated July 22, 1993 in International Classes (ICs) 9, 16, 36 and 38, covering, inter alia, banking and finance services; at the United States Patent and Trademark Office, registration number 2,261,778, dated July 20, 1999, in ICs 16 and 36, covering, inter alia, investment consulting services, and; registrations through the Madrid Agreement and Protocol designating approximately 35 countries, with registration date of November 12, 1993 (based upon the aforesaid Swiss registration), publication number 1993/12 LMi (Feb. 22, 1994), in ICs 9, 16, 35, 36, 38 and 41.
Complainant is active internationally in the field of finance and banking, with operations in a substantial number of countries. Complainant uses the VONTOBEL mark to promote its products and services. It maintains an active commercial Internet website at вЂњwww.vontobel.comвЂќ (in German and English versions).
According to the RegistrarвЂ™s verification report, Respondent is registrant of the disputed domain name, <vontobe1.com>. According to a Melbourne IT WHOIS database report submitted by Complainant, the record of the disputed domain name was created on August 22, 2008.
The disputed domain name resolves to a webpage stating вЂњThis domain is a registered site of vontobe1 LLCвЂќ. There is no evidence on the record of this proceeding of more active use by Respondent of the disputed domain name.
As noted in the Procedural History, subsequent to ComplainantвЂ™s filing of its Complaint, Respondent offered to sell and transfer the disputed domain name to Complainant. An email dated October 18, 2008, from Respondent (through its counsel) to Complainant (through its counsel) states:
вЂњI have received all your info sent to my clients whom happens to be a group of honest international businessmen that have never heard the name vontobel LLc.
It happens to be a coincident that there was a mixup in these names.
My clients hired a Nigerian based Web Designer to work on a site for them and he chose this name on their behalf.
However, since this names are too close, i have advised them to carry on a name change and adopt a new domain.
But they are very sad because they have already put some money into registration process.
Thus i will like to know if your client will be willing to compensate them so they can transfer the вЂњwww.vontobe1.comвЂќ to your client.
I will try my utmost best to resolve it issue as soon as possible.вЂќ [terminology as in original]
An email dated November 9, 2008, from Respondent (through its counsel) to Complainant (through its counsel) states:
вЂњSorry for the delay in replying you, i took some time off to defend a high profile client based in Sao Tome & Principe. However, i am now fully back to the case of <vontobe1.com>.
My Clients will be willing to transfer the domain to your client if there exist a mutual understanding that my clients the owners of <vontobe1.com>, will be reimbursed the amount spent for legal purpose, webdesign purpose and registration purpose amounting to about USD9,000.
My clients are understanding businessmen who decided to listen to my legal advice to settle out of court, because a court case will be lengthy, expensive and time wasting.вЂќ [terminology as in original]
The Registration Agreement in effect between Respondent and Melbourne IT Ltd. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. PartiesвЂ™ Contentions
Complainant alleges that it holds rights in the trademark and service mark VONTOBEL, and that the disputed domain name is confusingly similar to its mark.
Complainant argues that the change of the final letter of VONTOBEL to the numeral вЂњ1вЂќ in the disputed domain name is deliberately calculated to direct Internet users making a typographical error in their browser to RespondentвЂ™s website. Complainant further argues that the difference between the letter вЂњlвЂќ and the numeral вЂњ1вЂќ are quite difficult to distinguish when appearing on a computer screen.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant states that although Respondent has used the name вЂњVontobell LLCвЂќ in its registration for the disputed domain name, that VONTOBEL is a distinctive term unlikely to be used by a third party without knowledge of Complainant.
Complainant initially argued that Respondent acted in bad faith because it must have been familiar with ComplainantвЂ™s well-known trademark when it registered the distinctive disputed domain name, and that Respondent did so for purposes of confusing Internet users regarding Complainant as a source, sponsor, endorser or affiliate of RespondentвЂ™s website. Complainant indicated that RespondentвЂ™s location in Nigeria raised the risk that the disputed domain name would be used for an вЂњInternet scamвЂќ. Complainant has subsequently argued that RespondentвЂ™s request for payment in excess of amount reasonably expended in connection with the disputed domain name indicates that Respondent registered the disputed domain name for purposes of selling it to Complainant.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not submit any formal Response to the ComplainantвЂ™s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Respondent received notice of the Complaint and commencement of the administrative proceeding from the Center. Although it did not file a Response, RespondentвЂ™s counsel communicated with the Center and Complainant subsequent to the initiation of the proceeding. Respondent received adequate notice of these proceedings and had reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondentвЂ™s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondentвЂ™s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has demonstrated rights in the trademark and service mark VONTOBEL based on use in commerce and as evidenced by registrations in a substantial number of countries (see Factual Background supra).
The disputed domain name <vontobe1.com> differs from ComplainantвЂ™s mark only by the substitution of the numeral вЂњ1вЂќ for the letter вЂњlвЂќ, and the addition of the generic top-level domain (gTLD) identifier вЂњ.comвЂќ. The mark VONTOBEL is distinctive in the English language. The substitution of a numeral for a letter as noted above does not significantly change the appearance of the term when used in a domain name. The disputed domain name <vontobe1.com> is confusingly similar to the VONTOBEL mark.
Complainant has demonstrated that it holds rights in a trademark and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
вЂњAny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.вЂќ (Policy, paragraph 4(c))
Complainant has alleged that Respondent lacks rights or legitimate interests in disputed domain name. Respondent was given ample opportunity to demonstrate rights in the disputed domain name, but has failed to provide evidence that would indicate such rights. The fact that Respondent listed in its registration an entity вЂњVontobell LLCвЂќ, with address in Nigeria, as owner of the disputed domain name, does not constitute substantial evidence of the existence of a legal entity with such name. The only evidence of RespondentвЂ™s use of the disputed domain name (prior to its offer for sale to Complainant) is indication on a webpage identified by that name that it is the registered site of вЂњvontobe1 LLCвЂќ, which reference does not correspond to the name of the entity listed as the registrant (i.e. вЂњVontobell LLCвЂќ).
Complainant has succeeded in demonstrating that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates that вЂњthe following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faithвЂќ (Policy, paragraph 4(b)). Among these are вЂњ(i) circumstances indicating that [the respondent] ha[s] registered or 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 [the respondentвЂ™s] documented out-of-pocket costs directly related to the domain name.
Respondent has offered to sell and transfer the disputed domain name to Complainant for a price of USD9,000. Respondent has stated the disputed domain name was mistakenly registered by its web designer. Yet, Respondent nonetheless claimed to have expended USD9,000 on web design and other services (which appear to have resulted in a single phrase posted on a webpage). Respondent did not document out-of-pocket costs directly related to the domain name in the order of magnitude of USD9,000 (nor, for that matter, did it document costs in the order of magnitude of its belated USD900 settlement offer).
The Panel concludes on the basis of the evidence presented that Respondent registered the disputed domain name for the purpose of selling it to Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
Complainant has succeeded in demonstrating that Respondent registered and has used the disputed domain name in bad faith.
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, <vontobe1.com> be transferred to the Complainant.
Frederick M. Abbott
Dated: December 1, 2008