Deutsche Kreditbank AG v. DKB Data Services (USA), Inc.
Case No. D2009-1084
1. The Parties
The Complainant is Deutsche Kreditbank AG, Berlin, Germany, represented by Klinger & Kollegen, Germany.
The Respondent is DKB Data Services (USA), Inc., Jersey City, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dkb.com> is registered with Ascio Technologies Inc. - Denmark.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2009. On August 13, 2009, the Center transmitted by email to Ascio Technologies Inc. - Denmark a request for registrar verification in connection with the disputed domain name. On August 14, 2009, Ascio Technologies Inc. - Denmark 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 “Policy” or “UDRP”), 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 August 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 14, 2009.
The Center appointed John Swinson as the sole panelist in this matter on September 24, 2009. 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 a bank based in Germany with its headquarters in Berlin. It provides banking services to companies and individuals, and provides banking services via its website located at “www.dkb.de”.
A worldwide Internet search of the initials “DKB” returns various results. There are a few references to the Respondent (as a company) which appear in these search results. However, these are one-off references, and do not disclose any credible information about the Respondent's business activities. It would appear that the Respondent is no longer in business under the DKB name.
The disputed domain name was registered on July 13, 2002. When the disputed domain name is typed into a browser, an error message appears stating that the server cannot be found or that the link appears to be broken.
5. Parties' Contentions
A. Complainant
The Complainant makes the following contentions:
The Complainant was founded in 1990 and has formed part of the Bayern LB Group since 1995. The Company reported assets of over 48 million Euros in 2008 and has more than 1.6 million private customers. The bank has had significant growth in retail customer business and has been operating nationwide as an online bank.
The Complainant is the owner of several registered trade marks consisting of or including the word DKB. These include:
- German Trademark no. 39512394 for DKB (word mark)
- German Trademark no. for DKB.de (word/device mark)
- International trademark registration 943513 for DKB (word mark), with protection in Switzerland
- International trademark registration no. 950880 for DKB Deutsche Kreditbank AG (word/device mark) with protection in Switzerland
- Community trademark no. 6241202 for DKB Deutsche Kreditbank AG (word/device mark).
The disputed domain name is identical to the trademarks of the Complainant.
The disputed domain name is currently unused and inactive and has been since it was registered on July 12, 2002.
Any search for DKB.com only reveals information about the Complainant. The Respondent has never been authorized to use the Complainant's DKB trademarks.
The Respondent (as a company) was dissolved in April 2003 and the contact person for the disputed domain name cannot be found at the noted address. The Complainant hired an investigator to determine whether the Respondent was operating as a company in March 2009. The investigator's findings were that the Respondent became MHCB Data Services (USA) Inc, when The Dai-Ichi Kangyo Bank merged with other banks to become the Mizuho Corporate Bank, Ltd (MHCB), and that the Respondent was dissolved by March 2003.
It seems obvious that the Respondent registered the disputed domain name with the intent of exploiting and profiting from the Complainant's rights in the DKB trademark.
Keeping a domain name unused and inactive can be a form of bad faith. In this case, the Respondent is dissolved or has never existed, and there is no evidence indicating that the Respondent is using or is preparing to use the disputed domain name in good faith. This leads to the conclusion that the Respondent has registered the disputed domain name 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: “A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy provides that a complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proof lies with the complainant to establish that all these three elements are satisfied.
A. Identical or Confusingly Similar
The Complainant has several longstanding registered trade marks which consist of or include the term “dkb”. The most relevant for the purposes of this proceeding is German Trademark Registration no. DE39512394 for the word mark DKB, registered from July 19, 1995 and International Registration IR00943513 for the word mark DKB, registered from July 20, 2007.
The disputed domain name is identical to the Complainant's DKB registered trade mark.
Accordingly, the first element has been met.
B. Rights or Legitimate Interests
On first glance, the Respondent may be thought to have rights or legitimate interests in the disputed domain name, due to its name, DKB Data Services (USA) Inc.
However, the Respondent has failed to provide a Response, and the Panel can draw certain inferences from the Respondent's failure to do so. Combined with the evidence of the private investigator contained in the Complaint (which finds that the Respondent changed its name in 2002 and dissolved in 2003), the Panel cannot reasonably conclude that the Respondent is commonly known by the domain name as a business or other organization (as referred to in paragraph 4(c)(ii) of the Policy).
Similarly, there is no evidence provided which would satisfy paragraph 4(c)(i) or (iii) of the Policy in the Respondent's favour. That is, there is no functioning website available from the disputed domain name (and there is no legitimate non-commercial or fair use), and there is no evidence that there ever was a functioning website prior to the Complaint being filed.
As a general point, an entity that has not existed for many years and that does not respond to a complaint is unlike to have rights or a legitimate interest in a domain name. Contrast SNR Roulements v. SNR Semiconductor Inc.WIPO Case No. D2004-0100.
The Panel also notes the following from the <madonna.com> decision:
“Respondent cites examples of other parties besides Complainant who also have rights in the mark MADONNA, but that does not aid its cause. The fact that others could demonstrate a legitimate right or interest in the domain name does nothing to demonstrate that Respondent has such right or interest.”
Accordingly, on the evidence available to it, the Panel finds that the second element has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are non-inclusive, and several other indicators of bad faith have been established in previous panel decisions.
The ground of bad faith that the Complainant primarily relies upon is the Respondent's passive holding of the disputed domain name.
In Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the circumstances that indicated that passive holding amounted to use of domain name in bad faith included that:
(i) the complainant's trade mark was widely known;
(ii) the respondent had never used the domain name, provided no evidence that they intended to use it and it was not possible to conceive the respondent using the domain name in any legitimate way; and
(iii) the respondent concealed their identity and did not provide a response to the complaint.
In this case it is not clear to the Panel, on the evidence before it, whether the Complainant's reputation and DKB trade mark are widely known outside of Germany or Europe. The Respondent's address in the WHOIS records is New Jersey in the United States of America, and it would be reasonable to conclude that the Respondent was not aware of the Complainant's trade marks at the time of registering the disputed domain name (although the Complainant does own a DKB trade mark which pre-dates registration of the disputed domain name by seven years).
The Respondent has apparently held the domain name for a significant amount of time (for over seven years) without any evidence of use. The Respondent provided no evidence of intended use. Further, it does not seem conceivable that the Respondent has legitimate plans to use the disputed domain name in the future when the name has been dormant for such an extended period of time and where (as the evidence suggests) the Respondent no longer exists. The Panel also relies on the following circumstances to infer passive holding of the disputed domain name in bad faith:
- any intention to use the disputed domain name by the Respondent now would be of limited value to its operation as a business (if indeed such business still exists), considering that it has changed its name from DKB to MHCB;
- it seems very likely that the Respondent has been dissolved as a business;
- while the Respondent may not have intentionally concealed its identity, the Respondent was unable to be contacted at its business address for delivery of the Complaint, and has failed to respond to the Complaint, let alone offer any bona fide explanation for having obtained and passively retained this particular domain name.
Although the matter is not entirely free from doubt, on the available record the Panel is satisfied on balance that in light of all of the above circumstances in combination that the third element has been met.
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, <dkb.com> be transferred to the Complainant.
John Swinson Sole Panelist
Dated: September 30, 2009
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