WGZ-Bank Westdeutsche v. Xuhui, Dai-Wn-Bgag

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WGZ-Bank Westdeutsche Genossenschafts-Zentralbank eG. v. Xuhui,

Dai-Wn-Bgag

Case No. D2001-0925

1. The Parties

The complainant is WGZ-Bank Westdeutsche Genossenschafts-Zentralbank eG, of

Ludwig-Erhard-Allee 20, 40227 Düsseldorf, Germany, represented by Mr. Tobias H. Strömer

of Strömer Rechtsanwälte of Düsseldorf.

The Respondent is Xuhui, Dai-Wn-Bggd, of RM. 402, No. 49 Liuyun Street 3, Lianhenan

Rd. 1 510620 Guangzhou, Peoples Republic of China.

2. The Domain Name and Registrar

This dispute concerns the domain name <wgz-bank.com>.

The Registrar is Network Solutions, Inc., of Herndon, Virginia, United States

of America.

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute

Resolution Policy ("the Policy") adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules

for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October

24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO

Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on July 18, 2001, and in

hardcopy on July 20, 2001. The Complaint was acknowledged on July 23, 2001.

On July 25, 2001, registration details were sought from the Registrar.

On July 26, 2001, the Registrar confirmed that the disputed domain name is registered

in the name of the Respondent, whose address is as set out above. The Registrar’s

Service Agreement Version 4 is in effect.

On July 26, 2001, the Center satisfied itself that the Complainant had complied

with all formal requirements (including payment of the prescribed fee) and formally

dispatched a copy of the Complaint to the Respondent by post/courier and facsimile

(with enclosures) and by email (Complaint without attachments) together with

a letter to notify the Respondent of the commencement of this administrative

proceeding. The Center sent copies to the Complainant, the Registrar and ICANN.

In conformity with Rule 5(a), the last day specified by the Center for a Response

was August 15, 2001. No Response was received. On August 16, 2001, the Center

notified the Respondent of its default.

On August 27, 2001, the Center notified the parties of the appointment of Alan L. Limbury

to serve as panelist, Mr. Limbury having submitted a Statement of Acceptance

and Declaration of Impartiality and Independence. On that day, the Center transmitted

the case file to the Panel and notified the parties of the projected decision

date of September 10, 2001.

The language of the proceeding was English.

The Panel is satisfied that the Complaint was filed in accordance with the

requirements of the Rules and Supplemental Rules; payment was properly made;

the Panel agrees with the Center’s assessment concerning the Complaint’s compliance

with the formal requirements; the Center discharged its responsibility under

paragraph 2(a) of the Rules to employ reasonably available means calculated

to achieve actual notice to the Respondent of the Complaint; no Response was

filed and the administrative panel was properly constituted.

4. Factual Background (Uncontested Facts)

The Complainant is one of Germany’s largest banking institutions. It was established

in 1970 and has since been trading and offering all its products and services

under or by reference to its trademark and business name "WGZ-Bank".

The trademark is well known and enjoys a high reputation all over the world.

The Complainant has subsidiaries in Amsterdam, Luxembourg and Dublin; representative

offices in Brussels and Singapore and foreign branches and representative offices

of the GENO Group in many other places.

The disputed domain name was registered on February 16,1999. It has not been

used either as a website or email address.

On November 23, 2000, the Complainant applied to register the trademark and

service mark WGZ-BANK with the German Patent and Trademark Office in international

classes 35 (consultation concerning organization and management of enterprises)

and 36 (banking, credit and insurance services; real estate administration;

property management by trustees). On February 28, 2001, that mark was registered

(Reg. No. 300 86 314).

The Complainant informed the Respondent by letter dated February 14, 2000,

and e-mail dated April 17, 2001, that it was the owner of the business name

"WGZ-Bank" and that the registration of the domain name <wgz-bank.com>

by the Respondent was an infringement of its rights. With the same e-mail, the

Complainant requested the Respondent to delete the domain name <wgz-bank.com>

and to cease using the domain name for its own purposes. The Complainant’s e-mails

received no response.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar Domain Name

The relevant part of the disputed domain name, namely <wgz-bank> is identical

with the trade- and service mark registration of the word "WGZ-BANK" held by

Complainant.

Respondent’s Rights or Legitimate Interests in the Domain Name

The Respondent has not provided evidence of circumstances within paragraph

4(c) of the Policy, nor any other circumstances giving rise to a right or legitimate

interest in the disputed domain name. The Complainant has not licensed or otherwise

permitted the Respondent to use any of its trademark or business name and has

not permitted to apply for or use any domain name incorporating the trademark.

The word "WGZ-Bank" is a self created word (abbreviation derived from "Westdeutsche

Genossenschaftsbank"), and as such is not a word a trader would legitimately

choose unless seeking to create an impression of an association with the Complainant

or intending to sell, rent or otherwise transfer the name to Complainant.

Although Paragraph 4(a) of the Policy requires the Complainant to prove the

presence of this element, WIPO and the other approved Dispute-Resolution Service

Providers found in a number of cases that once a Complainant makes out a prima

facie showing, the burden of proof on this factor shifts to the Respondent

to rebut the showing by providing concrete evidence that it has rights to, or

legitimate interests in the domain name. This "burden shifting" is appropriate

given that Paragraph 4(c) of the Policy, which is entitled "How to Demonstrate

Your Rights to and Legitimate Interests in the Domain Name in Responding to

a Complaint," and discusses the kind of evidence a Respondent should provide

to show that it has rights to or legitimate interests in the domain name [1].

The elements set forth in Art. 4(c) UDRP are not present. In

particular the Respondent is not holder of a trademark WGZ-BANK or a similar

trademark, nor is this his name.

Before any notice to the Respondent of the dispute, there is no evidence of

its use of, or demonstrable preparations to use, the domain name or a name corresponding

to the disputed domain name in connection with a bona fide offering of goods

or services. The disputed domain name is not used to address a website, nor

has it ever been used as an e-mail-address. There have been no preparations

for a future use either.

Once Complainant makes a prima facie showing, Respondent must submit

concrete evidence of at least demonstrable preparations in order to rebut Complainant’s

showing [2].

The Respondent has not been commonly known by the domain name.

That results already from the fact that it never has been used by Respondent.

The Respondent is making no legitimate non-commercial or fair use of the disputed

domain name, without intent for commercial gain misleadingly to divert consumers

or to tarnish the trademark or service mark at issue. The Respondent has not

used the disputed domain name at all.

Domain Name Registered and Used in Bad Faith

There are certain circumstances indicating that the disputed domain name was

registered or acquired primarily for the purpose of selling, renting, or otherwise

transferring the registration to the owner of the trademark or service mark

(the Complainant), for valuable consideration in excess of the domain name registrant’s

out-of-pocket costs directly related to the domain name. The Respondent didn’t

try to sell the domain to the Complainant. On the contrary, he didn’t answer

to Complainant’s mails. However, without contrary evidence, it is possible to

infer that the domain name was registered and used for the purpose of selling

it. That inference is supported by the respondent’s failure for a substantial

period of time to make good faith use of the domain name for its business

[3].

The domain <wgz-bank.com> is so obviously connected with a well-known

trademark that its very use by someone with no connection with the WGZ-Bank

suggests opportunistic bad faith.

The word "bank" connotes a connection with a financial institution. The Respondent

is not a financial institution, nor does it have any connection with Germany.

It appears that the Respondent has registered and used the domain name <wgz-bank.com>

in order to create an association with the Complainant and as a means of attracting

users to his future website, if any. This will create a likelihood of confusion

with the Complainant’s mark as to source, affiliation or endorsement of the

website.

Respondent had registered a number of domain names comprising the names of

well-known businesses – including <bankofnewzealand.com>, <ansettaustralia.com>

and <berliner_bank.com> [4].

Respondent is deemed to be known to the Panel from a lot of other proceedings,

within which the domains of concern got canceled or transferred by the ICANN.

He preferably got domain names registered which contained the names of well-known

bank institutions in order to sell them later to those institutions. By that

he violated other people’s trademark rights.

The activities of the Respondent in registering these other well-known trademarks

as domain names without any apparent authority or trademark rights is strong

evidence of bad faith.

B. Respondent

No Response was filed.

6. Discussion and Findings

The Panel draws two inferences where a Respondent has failed to submit a Response:

(a) the Respondent does not deny the facts which the Complainant asserts; and

(b) the Respondent does not deny the conclusions which the Complainant asserts

can be drawn from those facts [5].

To qualify for cancellation or transfer, a Complainant must prove each element

of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the

domain name; and

(iii) the disputed domain name has been registered and is being used in bad

faith.

Identity or Confusing Similarity

It has been decided in many cases under the Policy that "essential"

or "virtual" identity is sufficient for the purposes of the Policy

[6].

The disputed domain name is clearly virtually identical to the Complainant’s

trademark WZG-BANK. At the time of the registration of the disputed domain name,

the Complainant had not applied to register its trademark but had established

rights to that mark through use since 1970.

The Complainant has established this element.

Illegitimacy

The Complainant has not authorized the Respondent to use its trademark nor

to register the disputed domain name. The name of the Respondent is not and

does not include any part of the disputed domain name. The disputed domain name

is not being used in connection with a bona fide offering of goods or services

[7].

There is no evidence of any of the circumstances specified in paragraph 4(c)

of the Policy. In particular, having regard to the descriptive nature of the

word "bank" incorporated in the disputed domain name, there is no

evidence to show that the Respondent has satisfied the usual governmental regulatory

requirements that would enable him lawfully to conduct a banking business. Any

use of the disputed domain name not connected to a banking business would be

misleading [8].

Under these circumstances the panel is satisfied that the Complainant has established

that the Respondent has no right to or interest in the disputed domain name.

Bad Faith Registration and Use

The Complainant’s trademark includes the invented acronym "wgz" which,

in association with the descriptive word "bank" is distinctive of

the Complainant’s banking services. On January 30, 1999, only 17 days before

registering the disputed domain name, the Respondent had registered other domain

names incorporating the well-known trademarks of banks: <nationalaustraliabank.com>

and <bankofnewzealand.com> [9]. On or

before February 4, 1999, the Respondent had also registered as a domain name

the trademark of another German bank: <dg-bank.com> [10].

This demonstrates to the satisfaction of the panel that the Respondent knew

of the Complainant’s trademark when he registered the disputed domain name on

February 16, 1999, and enables the panel to infer that one of the Respondent’s

purposes in registering the disputed domain name was to prevent the Complainant

from reflecting its trademark in a corresponding domain name. The registration

by the Respondent of other well-known trademarks of banks demonstrates a pattern

of such conduct. These circumstances are evidence of both bad faith registration

and bad faith use under paragraph 4(b)(ii) of the Policy.

The Panel finds that the Complainant has established that the disputed domain

name was registered and is being used in bad faith.

7. Decision

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs

that the domain name <wgz-bank.com> be transferred to the Complainant.

Alan L. Limbury

Sole Panelist

Dated: August 31, 2001

Footnotes:

1. See Inter-Continental Hotels Corporation

v. Khaled Ali Soussi, (WIPO Case No. D2000-0252).

2. Document Technologies, Inc. v. International

Electronic Communications Inc. (WIPO Case

No. D2000-0270).

3. See Mary-Lynn Mondich and American

Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,

(WIPO Case No. D2000-0004).

4. See National Australia Bank Limited

v. Xuhui, Dai, (WIPO D2000-0987 (Brown)),

2000-10-16, nationalaustraliabank.com; Bank of New Zealand v. Xuhui,

Dai, (WIPO D2000-0988 (Brown)), 2000-10-16,

bankofnewzealand.com; DG Bank AG v. Xuhui, Dai, (WIPO

D2000-0750 (Meyer-Hauser)), 2000-09-04, dg-bank.com.

5. See Rule 14(b) and Reuters Limited

v. Global Net 2000, Inc. (WIPO Case No.

D2000-0441).

6. See The Stanley Works and Stanley Logistics,

Inc v. Camp Creek. Co., Inc, (WIPO Case

No. D2000-0113) and Nokia Corporation v. Nokiagirls.com (WIPO

Case No. D2000-0102).

7. See State Farm Mutual Automobile Insurance

Company v. Rocky E. Faw (NAF Case FA94971) and Leland Stanford Junior

University v. Zedlar Transcription & Translation (NAF Case FA94970).

8. Cf. Banco de Chile S.A. v. Eric S.

Bord, Esq. (WIPO Case No. D2001-0695).

9. See National Australia Bank Limited

v. Xuhui, Dai (WIPO Case No. D2000-0987)

and Bank of New Zealand v. Xuhui, Dai (WIPO

Case No. D2000-0988).

10. DG Bank AG v. Xuhui, Dai, (WIPO

Case No. D2000-0750).