Deutsche Bank AG v. Diego-Arturo Bruckner

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Bank AG v. Diego-Arturo Bruckner

Case No. D-2000-0277

1. The Parties

Complainant is Deutsche Bank AG, Taununsangle 12, 60325 Frankfurt am Main, Germany.

Respondent is Diego-Arturo Bruckner, 7841 Enola Street, Suite 208, McLean, VA 22102, U.S.A.

2. The Domain Name and Registrar

The domain name at issue (the Domain Name) is "deutsche-bank-ag.com".

The registrar Domain Name is Network Solutions, Inc., Virginia, USA.

3. Procedural History

On April 10th, 2000 the Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in a letter to the Complainant dated April 15th, 2000. In a letter dated on the same date the Center informed the registrar, Network Solutions, Inc., that the Complaint had been submitted to the Center regarding the Domain Name.

The Center then proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on April 18th, 2000.

The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Center’s assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.

In a letter dated April 18th, 2000 the Center informed the Respondent of the commencement of the proceedings as of April 18th, 2000 and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.

In a letter May 9th, 2000 the Center informed the Respondent that he was in default pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.

The Panel from either party since its formation has received no further submissions.

The Panel is obliged to issue a decision on or Prior to May 30th,

2000, in the English language and is unaware of any other proceedings, which

may have been undertaken by the parties or others in the present matter.

4. Factual Background

The Complainant is a legal person incorporated under the laws of the Federal Republic of Germany. The Complainant is engaged in businesses related to the banking sector since the 1870s, the date of its foundation.

No information has been provided which indicates the nature of the activities of the Respondent.

Copies of the trademark registrations supplied by the Complainant at Annex D of the Complaint supports the finding that the trademarks "Deutsche-Bank" and "Deutsche-Bank AG" and "Deutsche-Bank Aktiengesellschaft" have all been duly registered by the Complainant, said registration having been granted prior to the awarding of the Domain Name to Respondent and remaining valid at the present time.

It appears from the correspondence filed with the Complaint that the Respondent registered the Domain Name with the Registrar, Network Solutions, Inc., on October 6th, 1999.

Documentary evidence supplied by the Complainant at Annex E to the Complaint supports the finding that on November 11th, 1999 the Respondent informed the Complainant of his registration of the Domain Name. The Respondent also stated that the Domain Name was for sale for an undisclosed price and that if the Complainant was interested in the Domain Name he should contact the Respondent.

In a letter to the Respondent dated November 4th, 1999, supplied by the Complainant at Annex F to the Complaint, the Complainant placed the Respondent in demand to cancel the Domain Name, to cease and desist in using the Domain Name and threatened legal action in the event that the Respondent failed to comply with the demand.

In a series of facsimiles supplied by the Complainant at Annex H, I and J to the Complaint the Respondent agreed to the demands of the Complainant and insists that he has undertaken the steps necessary to have the Domain Name registration cancelled and states that he has no further interest in the Domain Name, offering it free of charge to the Complainant.

In an E-mail dated February 9th, 2000 supplied by the Complainant at Annex K of the Complaint the Complainant again requested the Respondent to delete the Domain Name.

In a facsimile dated April 16th, 2000 to the Complainant supplied by the Center as an enclosure in the Complainants correspondence to the Center dated April 17th, 2000, the Respondent has expressed his intent to cede any legal rights he may have in the Domain Name to the Complainant and provides, at pages 3, 4 and 5 of said fax some evidence that the Respondent had attempted to have the Domain Name deleted.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the Domain Name is identical to a registered trademark

held by the Complainant as well as being confusingly similar to other trademarks

held by the Complainant. The Complainant also alleges that the trademark is

famous.

The Complainant states that the trademarks "Deutsche Bank" and "Deutsche

Bank AG" are used as a business designation for its banking services and

alleges that the Respondent does not or has not conducted any bona fide trade

or business utilizing the Domain Name or similar mark and has no rights or legitimate

interest in the Domain Name.

At subparagraph 12(4) the Complainant alleges that the Respondent is neither

commonly known by the Domain Name nor has he a legitimate non-commercial or

fair-use of the Domain Name.

Complainant further alleges at subparagraph 12(5) that the Respondent's registration

of the Domain Name is in bad faith as the Respondent registered the Domain Name

to sell it. The Complainant also alleges that it is inconceivable that the Respondent

could not have been unaware that the Domain Name would be associated with the

Claimant. The Claimant supports this by alleging that "… Deutsche Bank

AG is one of the best known trademarks in the world."

The Complainant continues at subparagraph 12(5) line 16 that the Domain Name

was also used in bad faith given the continued existence of a temporary homepage

indicating a web-site under construction at the Domain Name. The Complainant

subsequently alleges that there is a continued risk that the Respondent will

intentionally attempt to offer goods or services at the web-site corresponding

to the Domain Name, or alternatively attempt to attract customers for commercial

gain by creating confusion with the Complainants trademarks.

B. Respondent

The Respondent failed to file a response with the Center within the foreseen

delays and has failed to file a response since.

6. Discussion and Findings

In accordance with paragraph 14 of the ICANN Rules, in the absence of a response

to the Complainant's claims by the Respondent, the Panel considers those claims

in the light of the unchallenged evidence submitted by the Complainant. However,

the Panel cannot decide in the Complainant's favor solely given the Respondent's

default but is entitled to draw, and does, such inferences as it feels just

from the Respondent's failure to respond.

Pursuant to the ICANN Policy the Complainant must convince the Panel of three

elements if it wishes to have the Domain Name transferred. It is incumbent on

the Complainant to show:

(i) that the Domain Name is identical or confusingly similar to a trademark

in which the it holds rights;

(ii) that the Respondent has no legitimate rights or interests in the Domain

Name; and

(iii) that the Domain Name was registered and is being used in bad faith.

These three elements are considered below.

Identical or Confusingly Similar to Trademark

The Panel is of the opinion that the evidence provided by the Complainant supports

a finding that the Complainant has registered the trademark "Deutsche Bank

AG". Given that the Domain Name is for all intents and purposes identical

to the registered trademark, the Panel is of the opinion that the Complainant

has readily met the burden of proof as established by paragraph 4(a)(i) of the

Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy].

No Rights or Interest

The Complainant's statement that the Respondent is not a licensee of the Complainant

and that no permission or consent had been provided to the Respondent to use

these Trademarks combined with the lack of response from Respondent in this

regard as well as the Respondent's attempts to cede and have the Domain Name

deleted lead the Panel to the conclusion that the Respondent had no rights or

legitimate interests in respect of the Domain Name.

Furthermore, the Panel finds it appropriate in this regard to draw an adverse

inference from the Respondent's failure to reply to the Complaint and detail

any legitimate rights or interests he may have in the Domain Name of the type

defined in paragraph 4(c) of the ICANN Policy.

Bad Faith

The Complainant argues that the Respondent's actions provide evidence of registration

and use in bad faith which fall into the circumstances listed at paragraphs

4(b)(i), (ii) and (iv) of the ICANN Policy. The Panel does not entirely agree

with the Complainant that the Respondent actions necessarily fall within the

above categories.

First, regarding the Complainant's allegation that the Respondent's actions

amount to bad faith use of the Domain Name, the Panel is of the opinion that

the documentary evidence provided by the Complainant through the Center does

not support a finding that the Respondent was intending to use the Domain Name

as the terminal address for hosting a web-site for his own commercial purposes.

Second, the Panel is also of the view that the documentary evidence does not

support a finding that the Respondent intended to attract, pursuant to paragraph

4(b)(iv) of the ICANN Policy, customers for commercial gain by creating confusion

with the Complainants trademarks nor that there exists a serious risk that the

Domain Name will be used by the Respondent in the future in such a manner.

In the Panel's opinion, it reasonably appears more likely that "web-site

under construction" notice provided by the Complainant and on which the

Complainant bases a part of its argument, is generated automatically as a place

holder by the Respondent's Web-site host, a practice which is standard amongst

web-hosts.

The Panel is of the view that the original registration of the Domain Name

was done primarily with the objective of at some future time offering the Complainant

the Domain Name for a price, a practice that has more recently come to be referred

to as "Cybersquatting". The prime basis for this finding is relatively

short period of time which expired between the Respondent's registration of

the Domain Name with Network Solutions, Inc. and the unsolicited offer of sale

of the same to the Complainant.

However, given the Respondent's latter attempts to cede ownership of the Domain

Name to the Complainant and have the Domain Name expunged from the InterNIC

register, the Panel is of the opinion that the Complainant has not satisfied

its burden to establish, on these grounds alone, that the Respondent was intending

to demand more than his out-of-pocket costs directly related to the registration

of the Domain Name, a necessary component of a finding of bad faith when offering

a domain name for sale pursuant to paragraph 4(b)(i) of the ICANN Policy.

The Complainant has stated that it is a corporation involved in the banking

sector with a corporate history in excess of 120 years. The Complainant has

also stated that it is Germany's largest bank. The Panel accepts these statements

and is of the opinion that the Domain Name can only refer to the Complainant.

Furthermore, the Domain Name is so obviously connected with the Complainant

and its services that its very use by someone with no connection with the Complainant

suggests opportunistic bad faith (see Parfums Christian Dior v. Javier

Garcia Quintas and Christiandior.net Case No.

D2000-0226 and Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The

Polygenix Group Co., Case No. D2000-0163).

In addition, notwithstanding that the Respondent should have known of the Complainant’s

trademark and services at the time the Respondent registered the Domain Name

given the widespread use and fame of the Complainant’s "Deutsche Bank"

mark (see e.g. Expedia, Inc. v. European Travel Network, Case

No. D2000-0137), in his communications with the Complainant, the Respondent

admits he knew of the Complainant and the Complainant's mark at the time of

registration. Moreover, letters from the Respondent provided with the Complaint

suggest that the latter is familiar with the German language.

Based on the above, the Panel is of the opinion that the only inference that

can be drawn from the above evidence is that the Respondent actions amounted

to bad faith but only with respect to paragraph 4(b)(i) of the ICANN Policy.

7. Decision

For the foregoing reasons, the Panel decides:

- that the domain name registered by the Respondent is confusingly similar

to the trademark to which the Complainant has rights;

- that the Respondent has no rights or legitimate interests in respect of the

domain name; and

- the Domain Name has been registered and is being used by the Respondent in

bad faith.

Accordingly, pursuant to paragraph 4(i) of the ICANN Policy, the Panel orders

that the registration of the domain name <deutsche-bank-ag.com>

be transferred to the Complainant.

Jacques A. Léger, Q.C.

Sole Panelist

Dated: May 30th, 2000

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