Kleinwort Benson Private Bank Limited v. Designbureau Ltd.
Case No. D2007-0158
1. The Parties
The Complainant is Kleinwort Benson Private Bank Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Designbureau Ltd., St. Petersburg, Russian Federation, represented
by Konsul Ltd., Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <kleinwortbenson.com> is registered with South America Domains
Ltd. dba Namefrog.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2007. On February 13, 2007, the Center transmitted by email to the registrar South America Domains Ltd. dba Namefrog.com a request for registrar verification in connection with the domain name at issue. The Registrant of the contested domain name was at the time of filing covered by an “indentity shield” and was thus unknown since. On February 20, 2007, South America Domains Ltd. dba Namefrog.com transmitted by email to the Center its verification response in which it identified the registrant of record as “Designbureau Ltd.” and provided contact details. In response to a notification by the Center that the Complaint was administratively deficient in a number of respects, the Complainant filed an amendment to the Complaint on February 22, 2007. 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 March 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2007. On March 6, 2007, the Respondent’s representative communicated with the Center by e-mail requesting inter alia that the Center should not accept the Complaint since it was filed against the wrong Registrant. The Center responded indicating that the initial Complaint deficiencies had been remedied, that the Complaint had been initiated against the current holder of the disputed domain name as identified by the registrar, and confirming the deadline for response as March 21, 2007. The Respondent did not submit any response as to the substance of the matter. Accordingly, the Center notified the Respondent’s default on March 27, 2007.
The Center appointed Knud Wallberg as the sole panelist in this matter on March 30, 2007. 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.
The Panel issued an order to the Complainant on April 10, 2007
requesting the Complainant to explain its entitlement to invoke the rights to
the mark Kleinwort Benson since the mark is registered in the name of another
entity. The Complainant answered the request and forwarded on April 18, 2007,
a document from the registered proprietor to this effect.
4. Factual Background
The firm “Robert Benson and Co” was established in London in 1852. “Kleinwort and Cohen” were established in London in 1855. In 1961 Kleinwort and Bensons merged to form “Kleinwort Benson Lonsdale Ltd” (a holding company) and a subsidiary firm called Kleinwort Benson Limited.
In addition, the Complainant’s parent company Dresdner Kleinwort Wasserstein Group is the registered proprietor of the UK trademark KLEINWORT BENSON, which was registered on December 13, 1991 in relation to Class 36: banking services; investment services; providing financial guarantees arranging monetary transfers; financing of investments; financing of loans; securities broking; underwriting and dealing; all relating to bullion and to foreign exchange.
As mentioned above the registered proprietor Dresdner
Kleinwort Wasserstein Group has issued an affidavit stating that the Complainant
to this proceeding is authorized and licensed to use the mark and to defend
the rights associated with the mark. The trademark will henceforth be designated
for convenience as the Complainant’s trademark.
5. Parties’ Contentions
A. Complainant
The domain name <kleinwortbenson.com> is identical to (1) the UK trademark KLEINWORT BENSON described above and (2) the “Kleinwort Benson” name which has been used in various forms by the Complainant and its antecedent companies since 1852.
As far as the Complainant is aware, the Respondent (in its capacity as an individual, business or other organization) through any of its activities has not acquired any legitimate goodwill, trademark or service mark rights in the name “Kleinwort Benson”.
The Kleinwort Benson name is associated internationally with the Complainant’s business of offering financial products and services. This association and the attendant international reputation and goodwill are as a direct result of the Complainant’s legitimate activities over the past 152 years.
The Complainant considers that the Respondent is seeking to take unfair advantage of the goodwill which is associated with the Complainant’s trademark and business.
By using the Kleinwort Benson name the Respondent is dishonestly suggesting that a connection exists with the Complainant and as to the origin of the goods and financial services being offered on the site. Users of the Respondent’s website will inevitably be confused.
Accordingly, the Complainant considers that the Respondent is not making a legitimate, non-commercial or fair use of the domain name, and has intent for commercial gain by misleading consumers.
Further, the continued use of the domain name will tarnish the Complainant’s trademark. There was no indication from the website as to why the services and products being offered are being offered under the <kleinwortbenson.com> domain name.
The Respondent has no connection with the Complainant and there is no evidence of the Respondent legitimately generating goodwill for the “Kleinwort Benson” name.
The only apparent conclusion is that the Respondent intended to: disrupt the business of the Complainant and/or 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 in relation 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.
In addition, when registering the domain name the Respondent chose to conceal its identity behind an “Identity Shield” thereby making it impossible to contact them directly regarding the registration and regarding these proceedings. The Complainant considers that the use of an Identity Shield is further evidence of the registration being in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions. The Panel has however taken account of the e-mail communication
of March 6, 2007 to the Center from the Respondent’s authorized representative.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respects of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The contested domain name contains the Complainant’s trademark KLEINWORT BENSON in full, with the addition of the “.com” designation. For the purpose of these proceedings the domain name must be considered identical to the Complainant’s trademark.
The conditions in the Policy, paragraph 4(a)(i) are therefore fulfilled.
B. Rights or Legitimate Interests
According to the Complaint the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Complainant further alleges that the Respondent has no rights or legitimate interests in the domain name. Although the Respondent has apparently sought to advance a number of preliminary arguments regarding administrative compliance with the Rules, the Respondent has not rebutted this allegation and since the Complainant’s trademark KLEINWORT BENSON is a combination of distinctive names with no specific meaning or connotation it is unlikely that any such rights or interests may exist.
Consequently the conditions in the Policy, paragraph 4(a)(ii), cf. 4(c) are also considered fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainants to prove both registration and use of the disputed domain names in bad faith. Paragraph 4(b)(i) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith
It is not credible to the Panel in this case that the Respondent registered the disputed domain name, which incorporates the distinctive trademark of the Complainant, without knowledge of the Complainant and the Complainant’s activities.
The Panel therefore finds that the contested domain name was registered in bad faith.
The website that is linked to the contested domain name is currently showing
a blank web page. As first stated in Telstra v. Nuclear Marshmallows,WIPO Case No. D2000-0003,and repeated
in many subsequent decisions under the UDRP:
“the concept of a domain name ‘’’being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”.
Showing a blank web page is in the Panel’s view somewhere between positive action and inaction. The fact that in this case customers and other users of the internet who may be looking for information on the Complainant and the Complainant’s activities under the contested domain name are faced with a blank web page may, however, lead those users to believe that the Complainant is not only not present on the Internet but perhaps even that the Complainant is not doing active business. Such use of the domain name may disrupt the business of the Complainant. It is also quite evident that the registration of the domain name prevents the Complainant from reflecting their mark in corresponding domain name under the top level domain “.com”.
Taking into account all of the above the Panel finds that the disputed domain
name was registered and is on balance being used in bad faith. The Complainant
has proved element 4(a)(iii) of the Policy.
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 <kleinwortbenson.com> be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Dated: April 19, 2007
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