The Bank of the Pacific v Digi Real Estate Foundation
Case No. D2006-1112
1. The Parties
The Complainant is The Bank of The Pacific of Aberdeen, Washington, United States of America, represented by Miller Nash, LLP, United States of America.
The Respondent is Digi Real Estate Foundation, of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <bankofthepacific.com> is registered with Submit.ca Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2006. On September 1, 2006, the Center transmitted by email to Submit.ca Inc. a request for registrar verification in connection with the domain name at issue. On September 1, 2006, Submit.ca Inc. transmitted by email to the Center its verification response stating that the Respondent named in the Complaint did not hold the domain name at issue. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 15, 2006, via email and on September 19, 2006, in hardcopies.
The Center verified that the Complaint together with the amendment to 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 September 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2006.
The Center appointed Mr. John Katz as the sole panelist in this matter on October 30, 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 which, as its name suggests, is a Bank headquartered in the State of Washington, United States, which borders the Pacific Ocean.
The Complainant has a website <thebankofthepacific.com> which gives a fairly detailed indication of the Complainant's history, operations, locations and services. The website suggests it operates and offers a full range of banking services as would be expected of any commercial trading bank.
It has apparently been operating for over two decades and has used the trading name “Bank of The Pacific” for some time including from as early as 1978 that name as a trade or service mark. The evidence discloses that the Complainant has operated since 2003 in interstate (US) commerce and has used and continues to use the mark BANK OF THE PACIFIC in connection with its services.
Since 1999 the mark has had the definite article “the” attached to it so it is now more commonly deployed and used as THE BANK OF THE PACIFIC with a reputation in that mark accordingly. The mark would qualify as both a trade and service mark in accordance with most national trademark laws.
It is to be noted that the Complainant operates a website which indicates services such as electronic banking are available.
5. The Parties’ Contentions
A. The Complainant
In September 2005 the Complainant discovered that the disputed domain name had come in to existence and was registered to a company domains Ventures, Fujian Province, China. The Registrar at the time was Moniker Services Inc.
The Complainant alleges that company is a notorious trafficker in domain names and refers to its website which links to other websites involving competing banking services.
On September 16, 2005 the Complainant sent a cease and desist letter to domains Ventures. The disputed domain name was on or about October 26, 2005 transferred to the present Respondent with the Registrar becoming namescout.com.
On March 1, 2006 the Complainant sent a like cease and desist letter to the present Respondent. No response was received to that letter.
The Complainant contends that it is the owner of the trade and service marks BANK OF THE PACIFIC and THE BANK OF THE PACIFIC, whether these are used with or without the definite article preceding the name of the Complainant. It contends that the disputed domain name <bankofthepacific.com> is practically identical to these trade and service marks.
The Complainant argues that the addition of the gTLD suffix is irrelevant and does not reduce or diminish the likelihood of confusion.
B. The Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the Complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The Respondent, in the Policy and Rules, is given full opportunity to respond. In this instance, the Respondent has defaulted. In such circumstances it can be assumed that the Respondent takes no issue with the factual allegations in the Complaint (Graco Childrens Products Inc v. Domains Ventures, Case No. D2006-0598).
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The Respondent’s domain name is identical or confusingly similar to a trade mark 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 Respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by a complainant to warrant relief.
A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trademarks or service marks.
No evidence is put forward of any registration of trade or service marks with the US Patent and Trademark Office. Nevertheless, use of the mark whether with or without the definite article as a prefix since the late 1970s would give to the Complainant an ability to enforce its goodwill in the common law trademark.
The Complainant clearly has its common law rights to the trademarks BANK OF THE PACIFIC and THE BANK OF THE PACIFIC. Business established in the area of banking over a number of years in the State of Washington and latterly Interstate would clearly suffice to make out such rights.
There is therefore no question but that the Complainant has made out that it has rights to the mark BANK OF THE PACIFIC and THE BANK OF THE PACIFIC.
It is of no relevance that the Respondent does not deploy the definite article. Whilst the Complainant has now for some 6 or 7 years adopted the definite article as part of its trading style it would still have and retain rights to the trade mark BANK OF THE PACIFIC and for the current purposes the definite article can properly and safely be disregarded.
Thus the disputed domain name is both identical to the Complainant's trade mark BANK OF THE PACIFIC and confusingly similar to the Complainant's trade mark THE BANK OF THE PACIFIC.
Paragraph 4(a)(i) of the Policy is accordingly made out.
B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to any of the trade marks in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) a Respondent can justify its registration of the disputed domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate non commercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests or can claim none.
Indeed the contention is that the previous owner of the disputed domain name was a trafficer in domain names. However there is no evidence before the Panel of this fact. The Panel is however aware of other Panels’ decisions which have involved Domains Ventures with the same address in Fujian Province, China. There are also similar decisions of Panels of the National Arbitration Forum. A cease and desist letter was sent to that then owner of the disputed domain name on September 16, 2005. The evidence discloses that the disputed domain name was transferred to the present Respondent and registered with another registrar just six weeks later. That would permit of the inference that the transfer was probably in an attempt in part at least to head off any action by the Complainant to prevent use of or blocking by the disputed domain name. Inferentially at least this is a reasonable conclusion to draw given somewhat similar actions by domains Ventures as set out in other decisions (see Case No. D2005-0964, Case No. D2006-0263).
It is also difficult to contemplate what rights or legitimate interests in the disputed domain the Respondent might claim. Its corporate name or style Digi Real Estate Foundation would not suggest any link or involvement with banking. The choice of the particular domain name and circumstances of its acquisition cannot be regarded as merely fortuitous.
It can therefore be assumed that the Respondent lacks rights or legitimate interests in respect to the domain name.
Paragraph 4(a)(ii) of the Policy is accordingly made out.
C. Registered and Used in Bad Faith
As to the third ground, this requires that the name be registered and used in bad faith. As has previously been said in other Panels' decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
Any person looking for the Complainant and wanting to find out about the Complainant's business and products, and upon finding the disputed domain name would assume there was some connection between the Complainant and the Respondent, contrary to the fact.
In accordance with traditional trade mark principles and fair trading laws extant in most jurisdictions that would be objectionable and injurious to the interests of the trade mark proprietor, the present Complainant.
Nothing has been put forward by the Respondent to justify either the registration or the use of the disputed domain name.
The original registration by the previous owner of the disputed domain name can therefore be regarded as being in bad faith. So also would its use at least to the extent that "use" can include in the passive sense registration of a domain name for blocking or pre-emptive purposes. (Telstra Corporation v Nuclear Marshmallows, WIPO Case No. D2000-0003).
The passing of the domain name from the previous owner to the current owner, the present Respondent, must also be looked at in a similar context. It can be regarded as little more than a device or mechanism by the previous registrant to remain a step ahead of a complaint.
The disputed domain name is presently active as a portal website. The site has pop ups that allow a visitor to click on other sites as disparate as airline tickets, dating and car insurance. It includes a site "thebankofthepacific" which links to other sites but not the site of the Complainant.
Such uses of domain names which involve the trade mark of an established corporate entity are not unusual but are wrongful and cause generally harm to the established entity in the measure which is often difficult if not impossible to quantify. Moreover links that include, as here, sex dating sites can cause further harm to established entities such as Banks simply by virtue of a perceived but false association assumed to exist due to the link.
The registration and use of an electronic web address for a bank that is identical or virtually identical to the trading style of a complainant trading bank can be particularly dangerous. Customers of the Complainant may be deceived into thinking there is a link or association with the Complainant and be lulled into a false sense of security in accessing the disputed domain name or even seeking to send via any of the links from the disputed domain address confidential information. Such risks in the case of an established commercial trading bank are very real (see Global Projects Management Ltd v Citigroup Inc [2006] FSR 721, High Court, England).
The evidence is incomplete with respect to the circumstances surrounding the transfer by the previous owner and registrant of the disputed domain name to the present registrant and Respondent. As no reply to the cease and desist letter was received and as the Respondent has defaulted, there is simply no evidence at all before the Panel.
Accessing the website ”www.bankofthepacific.com” shows clearly that it is a portal website. One of the so called popular links is stated to be ”thebankofthepacific”. Clicking on this link then takes the viewer to another screen which, as previously indicated, has a number of disparate links. Included amongst these are what are stated to be "top sites" including ”thebankofthepacific”. Clicking on this however does not take the viewer to the Complainant's website. Similarly, there is a top site stated to be ”Findthebankofthepacific”. Again, clicking on this does not take one to the Complainant's website.
It could perhaps be assumed that this portal website is intended to be for information purposes listing various banks operating or offering services in the Pacific rim or Pacific region. However none of the links or top sites available for accessing fall within this category. A number of others including the top sites ”thebankofthepacific” and ”Findthebankofthepacific” are blocked and do not in fact permit a visit to the site.
Based on the foregoing, the Panel finds that the disputed domain name was probably acquired by the present Respondent for the purposes of using it as a portal website and to take advantage in some way of the commercial revenue stream that can be generated by such portal websites when visitors access it and click on any of the top sites or other links.
The device of using a portal website in this manner and acquiring a domain name which has an association with an established business to achieve this can therefore amount to registration and use in bad faith.
It is also relevant to note that the present Respondent has been the Respondent in a number of other domain name disputes as follows:
(f) Morgan Stanley & Novus Credit Services Inc v Digi Real Estate Foundation (National Arbitration Forum Decision 767185).
Moreover, in one case the Respondent transferred the disputed domain name to a third party between preparation of the complaint and the Center’s request for registrar verification apparently after becoming aware of the complaint (see the discussion of these factors in the decision of the learned panelist in EasyGroup IP Licensing Ltd v Mobiel Group (MG) (WIPO Case No. D2005-0671).
These factors cumulatively make it much easier to draw the inference that the present Respondent makes a practice of such activity and that the Respondent registered and is uisng the disputed domain name in bad faith.
Paragraph 4(a)(iii) is accordingly made out under both limbs.
7. Decision
Accordingly, pursuant to paragraph 5(i) of the Policy and 15 of the Rules, the Panel orders that the registration of the disputed domain name <bankofthepacific.com> be transferred to the Complainant.
John Katz QC Sole Panelist
Dated: November 20, 2006
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