WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ASN Bank N.V. v. Richard Spades

Case No. DNL2015-0053

1. The Parties

Complainant is ASN Bank N.V. of The Hague, the Netherlands, represented by NLO Shieldmark B.V., the Netherlands.

Respondent is Richard Spades of Kincheloe, Michigan, United States of America.

2. The Domain Name and Registrar

The disputed domain name <asnfinancial.nl> (the “Domain Name”) is registered with SIDN through GoDaddy.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2015. On September 30, 2015, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On September 30, 2015, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 1, 2015. In accordance with the Regulations, article 7.1, the due date for Response was October 21, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 22, 2015.

The Center appointed Gregor Vos as the panelist in this matter on October 29, 2015. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

Complainant is ASN Bank N.V., established in The Hague, the Netherlands. Complainant is the owner of, inter alia, the following trademark registrations:

1. Benelux trademark ASN (no. 577072), registered on June 1, 1996;

2. Benelux trademark ASN BANK (no. 789989), registered on March 27, 2006;

both of which are registered for services in class 35, 36 & 41. In the following, Benelux trademark ASN (No. 577072) will be referred to as “the Trademark”.

Respondent is Mr. Richard Spades of Kincheloe, Michigan, United States of America. Respondent registered the Domain Name on April 19, 2015. There is no active website connected to the Domain Name.

5. Parties’ Contentions

A. Complainant

The Domain Name is identical or confusingly similar to Complainant’s Trademarks

Complainant argues that it is a well-known subsidiary bank of SNS Bank, and that it is the largest sustainability-driven bank in the Netherlands.

Complainant argues that the Domain Name is identical (or at least confusingly similar) to the Trademark, as the Domain Name is comprised of the Trademark and the word “financial”, which word is descriptive in light of the fact that Complainant, being a bank, offers financial services. In this regard, Complainant also refers to its trademark registrations, which registrations cover such services.

Respondent has no rights to or legitimate interests in the Domain Name

Complainant argues that Respondent is not commonly known by the Domain Name. Complainant contends that it has sent a letter to Respondent, in which it informed Respondent of its rights and interests and requested information regarding the intended use of the Domain Name. Despite a reminder, Complainant states that it did not receive any response from Respondent.

Complainant further argues that the Domain Name is not being used, as there is no website connected to the Domain Name.

Respondent has registered or is using the Domain Name in bad faith

Complainant argues that in light of its arguments (as summarized in the above), it must be assumed that Respondent has registered the Domain Name with no other reason than to prevent Complainant from registering the Domain Name itself.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Article 10.3 of the Regulations provides that in the event that a respondent fails to submit a response, the complaint shall be granted unless the panel considers it to be without basis in law or fact.

Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:

a. A domain name is identical or confusingly similar to a trademark, or trade name, protected under Dutch law in which the complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and

b. the respondent has no rights to or legitimate interests in the domain name; and

c. the domain name has been registered or is being used in bad faith.

Considering these conditions, the Panel rules as follows.

A. Identical or Confusingly Similar

There are two requirements that a complainant must establish under the first criterion in this case, namely i) that it has rights in a trademark or trade name, and ii) that the domain name is identical or confusingly similar to such trademark or trade name. The Panel has established that the Trademark is protected under Dutch law, and that Complainant is the owner of the Trademark.

It is established case law under the Regulations that the Top-Level Domain “.nl” may be disregarded in assessing the similarity between the relevant trademark(s) on the one hand, and a disputed domain name on the other (see, inter alia, Pieter de Haan v. Orville Smith Ltd., WIPO Case No. DNL2008-0017).

The Domain Name incorporates Complainant’s wordmark ASN in its entirety. As it is established case law that the addition of purely descriptive or generic elements – the element “financial” is descriptive in light of Complainant’s activities – to a trademark is insufficient to avoid a finding of confusing similarity,¹ the Panel finds that the Domain Name is confusingly similar to the Trademark.

B. Rights or Legitimate Interests

Complainant has made out a prima facie case that Respondent lacks rights to or legitimate interests in the Domain Name. There is no evidence in the record that Respondent would be commonly known by the Domain Name. There is also no evidence that Respondent has any relevant trade name or trademark rights in “asn financial”.

It seems that Respondent has passively held the Domain Name since it was registered. There is no evidence that Respondent has made any use of the Domain Name in connection to a bona fide offering of goods and services, or in connection to noncommercial or fair use. Absent contrary evidence from Respondent, passive holding of a domain name does not constitute “legitimate non-commercial or fair use”.²

The Panel is satisfied that Respondent has no rights to or legitimate interests in the Domain Name.

C. Registered or Used in Bad Faith

Based on the documents submitted by Complainant, the Panel finds it likely that (the brand name of) Complainant is well-known in connection with its financial services. This makes it unlikely that Respondent was unaware of Complainant’s activities at the time of registration. This is further supported by the inclusion of the suffix “financial”, which directly refers to the activities of ASN.

Noting again Respondent’s failure to advance any evidence to the contrary, the Panel finds that Respondent has registered the Domain Name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <asnfinancial.nl>, be transferred to Complainant.

Gregor Vos
Panelist
Date: December 8, 2015

¹ See Microsoft Corporation v. S.L., Mediaweb, WIPO Case No. D2003-0538; Academy of Motion Picture Arts and Sciences v. Chego Nado, WIPO Case No. D2003-0541; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102; Hyves B.V. v. Private registrations co ltd., WIPO Case No. DNL2012-0058; and Kik Interactive v. Versio B.V., WIPO Case No. DNL2015-0028.

²Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483.