The Complainant is BBBank eG, Karlsruhe, Germany, represented by Durm & Partner, Germany.
The Respondent is BB BANK Inc., Osaka-shi, Osaka-fu Japan.
2. The Domain Name and Registrar
The disputed domain name <bbbank.net> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2007. On June 15, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 15, 2007, eNom 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 June 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2007.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on August 16, 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.
4. Factual Background
The Complainant is the owner of several registered trademarks for the mark “BBBank” and variations thereof inside and outside the European Community. The Complainant permanently uses its trademarks in connection with all registered services. Furthermore, the Complainant uses the term “BBBank” as its company name. The Complainant is also the registered owner of a series of domain names, inter alia <bbbank.de>, <bbbank.biz>, <bbbank.info>, <bbbank.org>, <bbbank.eu> and <bbbank.com>.
5. Parties’ Contentions
A. Complainant
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
I. The Complainant is the owner of numerous registered trademarks “BBBank” and variations inside and outside the European Community, inter alia of the following trademarks:
1. German Trademark 396 18 676 “BBBank”, which is protected for “Finanzwesen” (financial services) in International Class 36;
2. German Trademark 396 55 823 “BBBank” (combined mark), which is protected for “Werbung (advertisement); Geschäftsführung (business management); Unternehmensverwaltung (business organisation); Büroarbeiten (office work); Versicherungswesen (insurance); Finanzwesen (financial affairs); Geldgeschäfte (monetary affairs); Immobiliengeschäfte (real estate affairs); Telekommunikation (telecommunication); Erstellen von Programmen für die Datenverarbeitung (Computer programming)” in International Classes 35, 36, 38, 42;
3. European Community Trademark 001 930 130 “BBBank”. Versicherungswesen (insurance); Finanzwesen (financial affairs); Geldgeschäfte (monetary affairs); Immobilienwesen (real estate affairs)” in International Class 36;
4. European Community Trademark 002 104 149 “BBBank” (combined mark), which is protected for “Versicherungswesen (insurance); Finanzwesen (financial affairs); Geldgeschäfte (monetary affairs); Immobilienwesen (real estate affairs)” in International Class 36;
5. Swiss Trademark 488076 “BBBank” (combined mark), which is protected for “Versicherungswesen (insurance); Finanzwesen (financial affairs); Geldgeschäfte (monetary affairs); Immobilienwesen (real estate affairs)” in International Class 36;
6. German Trademark 396 23 419 “BBBank-Direkt”, which is protected for “Finanzwesen (financial affairs)” in International Class 36;
7. German Trademark 300 38 612 “BBBank-Select”, which is protected for “Versicherungswesen (insurance); Finanzwesen (financial affairs); Geldgeschäfte (monetary affairs); Immobilienwesen (real estate affairs)” in International Class 36;
8. German Trademark 300 38 613 “BBBank-Trust”,which is protected for “Versicherungswesen (insurance); Finanzwesen (financial affairs); Geldgeschäfte (monetary affairs); Immobilienwesen (real estate affairs)” in International Class 36;
9. German Trademark 300 38 614 “BBBank-Share”, which is protected for “Versicherungswesen (insurance); Finanzwesen (financial affairs); Geldgeschäfte (monetary affairs); Immobilienwesen (real estate affairs)” in International Class 36.
10. German Trademark 305 69 294 “BBBank BauXpress”, which is protected for “Finanzwesen (financial affairs); Bankdienstleistungen (financial services); Immobilienwesen (real estate affairs)” in International Class 36;
11. German Trademark 306 19 204 “BBBank Extra Zins”, which is protected for “Finanzwesen (financial affairs); Bankgeschäfte (banking activities)” in International Class 36.
The Complainant permanently uses cited trademarks in connection with all registered services. As evidence, the Complainant submitted registration certificates of all above cited trademarks as Annexes 4 to 14.
Furthermore the Complainant uses the term “BBBank” as its company name. Therefore “BBBank” seeks protection as mark of an undertaking according to § 5 (1) German Trademark Act.
The Complainant is also the registered owner of a series of domain names, inter alia, <bbbank.de>, <bbbank.biz>, <bbbank.info>, <bbbank.org>, <bbbank.eu> and meanwhile <bbbank.com> (BBBank eG v. Lee joohee,
WIPO Case No. D2006-1236).
II. Identity or Confusing Similarity
The domain name <bbbank.net> of the Respondent is identical with the trademarks “BBBank” as well as with the firm name “BBBank” of the Complainant. The domain name is also identical with the integral part “BBBank” of the combined trademarks containing “BBBank”.
The domain name is also confusingly similar to the trademarks “BBBank-Direkt”, “BBBank-Select”, “BBBank-Trust”, “BBBank Extra Zins” and “BBBank-Share”. On the fact that the components “Direkt”, “Select”, “Trust”, “Share” and “Extra Zins” are descriptive, the danger of confusion depends on the identical component “BBBank”.
Identity is grounded in the fact that the word “bbbank” in the domain name is identical with the word “BBBank” in the above mentioned trademarks, simply because its appearance, spelling and pronounciation is the same in each case.
The Respondent has no rights or legitimate interests in respect of the domain name;
The Respondent has no legitimate interests in respect of the domain name that is the subject of the Complaint.
The Respondent alleges to be an undertaking called “BB BANK Inc.”. According to an inquiry in Japan it seems that there exists no undertaking with this company name. As evidence the Complainant encloses an e-mail from its Japanese colleagues on June 5, 2007 as Annex 15.
The Respondent cannot be found in any official databases, e.g. in the search engine Google. As evidence the Complainant encloses copies of Google with the search term “BB Bank Inc. Osaka Japan” as Annex 16.
Furthermore, there is no evidence of the Respondent’s use of the domain name. The domain name <bbbank.net> does not resolve to a website or other online presence. There is no evidence that a website or other online presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. The Respondent does not use the term “bbbank” for identifying goods or services.
The Complainant further submits that the Complainant has tried to acquire the domain name. As evidence the Complainant encloses a letter of January 24, 2007 to the former owner of the domain name, “paperboy and co.”, in Japan as Annex 17 as well as an excerpt from the WHOIS database of January 22, 2007 as Annex 18. Upon receiving no answer from “paperboy and co.” the Complainant had to find out in the WHOIS database that the domain name was transmitted to the Respondent.
All these facts show that Respondent’s legitimate interest in the domain <bbbank.net> is missing.
The domain name was registered and is being used in bad faith.
Moreover the domain name <bbbank.net> has been registered and is being used by the Respondent in bad faith.
In light of the fact that the domain name <bbbank.net> was directly transmitted to the Respondent after contacting the former owner, “paperboy and co.”, it has to be assumed that the Respondent has registered the domain name primarily in order to prevent the Complainant from reflecting the mark in a corresponding domain name. It has to be assumed that the Respondent’s next step will be offering the domain name for sale.
Additionally Respondent’s identity cannot be found out.
Furthermore, in the Complainant’s view, it has to be adopted that the Respondent registered the domain name with at least constructive knowledge of the Complainant’s rights. The domain name correlates to a widely known mark. At the time of registration of the domain name Complainant already was the owner of the domain names <bbbank.biz>, <bbbank.de>, <bbbank.info>, <bbbank.org>, <bbbank.eu> and <bbbank.com>. Considering the registration of the term “bbbank” in the top-level domain “net” and the fact that the Respondent must have reviewed the research protocol for the term, the Complainant contends that the Respondent had actual knowledge of the prior use of said term as a firm name. The Complainant submits it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration.
The Complainant submits that these facts suggest that the domain name <bbbank.net> has been registered by the Respondent in bad faith.
Additionally the domain name is being used in bad faith by the Respondent.
As mentioned above the domain name <bbbank.net> does not resolve to a website or other online presence. Currently there is no evidence that the Respondent has offered the domain name for selling, renting or otherwise transferring to the Complainant or a competitor of the Complainant. So there is no positive action being undertaken by the Respondent in relation to the domain name.
Anyhow, following UDRP precedent (Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003) 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. So the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration. Although additional facts are required paragraph 4(b) recognizes that inaction – passive holding – in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith – all other circumstances identified in paragraph 4(b) are without limitation. The question, if a domain name in the case of passive holding is being used in bad faith depends on the particular facts of the specific case.
In the instant case, the Complainant submits that passive holding of the domain name by the Respondent amounts to acting in bad faith.
The Complainant submits it’s trademarks are widely known (BBBank eG v. Lee joohee,
WIPO Case No. D2006-1236). The Complainant is also the owner of numerous domain names including the term “bbbank”.
The Complainant asserts that the identity of the Respondent could not have been found out. It seems that the Respondent tried to conceal its identity by operating under a non-registered business name.
Further indication of the Respondent’s bad faith, in the Complainant’s view, is that just after contacting the former owner of the domain name, <bbbank.net>, was transferred to the Respondent.
The Respondent’s action prevents the Complainant from using the domain name. The Complainant contends that the Respondent has registered and used the domain name <bbbank.net> in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
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:
(i) that the domain names registered by the respondent are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain names; and
(iii) that the domain names have been registered and are being used in bad faith.
Given the Respondent’s failure to file a Response, the Panel accepts as true all reasonable allegations of the Complainant. See Talk City, Inc. v. Michael Robertson,
WIPO Case No. D2000-0009. The Respondent’s default does not, however, translate into an automatic ruling for the Complainant. To the contrary, the Complainant still must establish that, under the Policy, it is entitled to transfer of the domain name.
A. Identical or Confusingly Similar
The Panel finds that the domain name at issue is identical to the registered “BBBank” trademark of the Complainant, and confusingly similar to the trademarks “BBBank-Direkt”, “BBBank-Select”, “BBBank-Trust”, “BBBank Extra Zins” and “BBBank-Share”.
The “.net” suffix denoting first-level domain status in Respondent’s domain name does not affect the fact that the domain name is confusingly similar to Complainant’s mark pursuant to Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions)
Given the Respondent’s failure to submit a Response, the Respondent has not proven that it has any prior rights or legitimate interests in the domain name. The Complainant has asserted that it has not authorized the Respondent’s activities, nor does it have any control over these activities. There is no evidence before this Panel to contradict or challenge the contentions of the Complainant. The Complainant has contended and provided supporting documents that there is no undertaking called “BB Bank Inc.” in Japan. This has not been rebutted by the Respondent.
Based on the prima facie case established by the Complainant that the Respondent has no rights or legitimate interest in the domain name, the Panel finds that the prerequisites in the Policy, paragraph 4(a)(ii) are fulfilled.
C. Registered and Used in Bad Faith
The circumstances mentioned in paragraph 4(b)(i)-(iv) of the Policy, if found by the Panel to be present, are non-exhaustive examples of facts, which constitute evidence of the registration and use of a domain name in bad faith.
“The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions)
Here the Panel finds that the domain name in question correlates to a widely known mark, which was also established in BBBank eG v. Lee joohee,
WIPO Case No. D2006-1236, and it is the Panel’s opinion that the Respondent most likely had the Complainant and its trademark in mind when the Respondent registered the domain name.
In view of the above facts, the Panel finds that the disputed domain name has been registered in bad faith.
The Panel has furthermore considered whether, in the circumstances of this particular Complaint, the passive holding of the domain name by the Respondent amounts to the domain name being used in bad faith by the Respondent. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
In this case, the Panel finds that the Complainant’s trademark is widely known, as evidenced by numerous trademark registrations inside and outside the European Community. Furthermore, the Respondent has provided no evidence of any actual or contemplated good faith use by it of the domain name. The Respondent has also taken active steps to conceal its identity, by operating under a non-registered business name. Upon being contacted by the Complainant the former registrant directly transmitted the domain name to the Respondent without answering the Complainant. Finally, the Respondent has failed to respond or participate in any way in this proceeding.
The fact that the former owner of the domain name <bbbank.net> directly transmitted the domain name to the Respondent upon being contacted by the Complainant suggests that, in the absence of any evidence from the Respondent himself, the domain name has been registered primarily in order to prevent the Complainant from reflecting the mark in a corresponding domain name.
T aking into account all of the above, the Panel finds that it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate. Therefore, the Panel concludes that the Respondent’s passive holding of the domain name in this case satisfies the requirement of paragraph 4(a)(iii).
Consequently, the Panel concludes that the contested domain name has been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
Therefore, all the prerequisites for cancellation or transfer of the domain name of paragraph 4(i) of the Policy are fulfilled.
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 <bbbank.net> be transferred to the Complainant.
Jonas Gulliksson
Sole Panelist
Dated: August 29, 2007
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