International Bank for Recontruction and Development d/b/a The World Bank v. Yoo Jin Sohn

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Bank For Reconstruction and Development d/b/a The World Bank v. Yoo Jin Sohn

Case No. D2002-0222

1. The Parties

The Complainant is the International Bank For Reconstruction and Development

d/b/a The World Bank, an agency of the United Nations, whose address is

1818 H Street, N.W., Washington, D.C, 20433, United States of

America. The Complainant is represented in this proceeding by Peter J. Riebling,

Esq., Arter & Hadden LLP, 1801 K Street, Suite 4000K,

Washington, D.C. 20006-1301, United States of America.

The Respondent in this proceeding is Yoo Jin Sohn, an individual whose

address is P.O. Box 5503 CHRB, Saipan, MP96950, MP (Northern Mariana Islands),

United States of America.

2. The Domain Name and Registrar

The domain name in dispute is <worldbank.net>.

The registrar for the disputed domain name is Network Solutions, Inc.

, 21355 Ridge Top Circle, Lakeside 3, Dulles, Virginia 20166,

United States of America.

3. Procedural History

This dispute is to be resolved in accordance with the Uniform Policy for

Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved

by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999,

and the World Intellectual Property Organization Arbitration and Mediation

Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution (the

Center, the Supplemental Rules).

The Complaint was filed on March 6, 2002. On March 8, 2002

the Center sent a Request for registrar verification to Register.com, the

registrar of the disputed domain name referred to in the Complaint. On March 18, 2002,

the Center received a registrar verification response which indicated that

the correct registrar for the disputed domain name is Network Solutions,

Inc.

On March 19, 2002 the Center wrote to the Complainant and requested that

the Complaint be amended to reflect the correct registrar of the disputed

domain name. On March 22, 2002 the Complainant submitted an amended

Complaint changing the name of the registrar to Network Solutions, Inc.

On March 20, 2002 the Center forwarded a copy of the Complaint to the Respondent

by registered mail and by e-mail and this proceeding officially began. On

April 5, 2002 the Respondent submitted a Response by fax, and

on the same day the Center sent a Response Deficiency Notification to Respondent

requesting an amended Response with a certification per Rule 5(b)(viii).

The Respondent later submitted the amended Response by email and in hard

copy.

The Administrative Panel submitted a Declaration of Impartiality and Independence

on April 22, 2002, and the Center proceeded to appoint the Panel

on April 23, 2002. The Panel finds the Center has adhered to the

Policy and the Rules in administering this Case.

The due date of this Decision is May 7, 2002.

4. Factual Background

In 1944, Complainant was founded as an agency of the United Nations to

provide various goods and services on an international scale, including,

most prominently, economic development financing to national governments.

Complainant is well known to anyone engaging in international banking or

finance.

Complainant owns registered United States and international trademarks

(for example Canada, Pakistan and Venezuela) in "The World Bank" and "World

Bank" (collectively referred to hereinafter as the "Complainant Trademarks").

In addition, Complainant has registered and uses the domain name <worldbank.org>

in promoting its services and activities on a country-by-country basis in

a global manner.

According to the registration verification response received by the Center

dated March 18, 2002, Respondent is listed as the Registrant of

the disputed domain name. The record of registration was created on January 28, 1999.

In a letter sent via airmail dated January 9, 2002, Complainant

attempted to contact Respondent and to demand that Respondent transfer ownership

of the domain name to the Complainant (the Complaint Exhibit 7). The Respondent

did not reply.

5. The Parties’ Contentions (Summarized)

Complainant’s Contentions

- Complainant has provided international financial services under

the Complainant Trademarks for decades, accruing a certain amount of goodwill,

reputation and monetary value.

- Respondent’s domain name is identical or confusingly similar to

the Complainant Trademarks. The disputed domain name is visually the same

as Complaint's trademark, "World Bank", and Complainant would be mistaken

as the trademark source by internet users. Complainant's Trademarks were

registered 35 years before Respondent registered the disputed domain name.

- Respondent has no right or legitimate interest in respect of the

domain name. Respondent is not a licensee of Complainant, nor is he otherwise

authorized to use Complainant’s marks.

- The Respondent registered the <worldbank.net> domain name

in bad faith. As evidence of Respondent’s bad faith registration, Complainant

submits that it contacted Respondent regarding potential trademark violations

and that Respondent had constructive knowledge of Complainant's prior

rights in the Complainant Trademarks due to their international fame.

- The Respondent registered the disputed domain name primarily for

the purpose of selling, renting, or otherwise transferring the domain

name registration to Complainant, who is the owner of the trademark or

service mark, or to a competitor of Complainant, for valuable consideration

in excess of the Respondent’s out-of-pocket costs directly related to

the domain name.

- It would be impossible for Respondent to use the disputed domain

name because it would infringe the Complainant Trademarks.

- The Respondent has not developed any web site using the disputed

domain name as the Uniform Resource Locator ("URL").

- The Respondent has never been commonly known by the disputed domain

name.

- The Respondent deliberately designed to trade on and misappropriate

the monetary value, reputation, notoriety, fame and good will of Complainant's

Trademarks. Evidence of this is Respondent's use of Complainant's entire

trademark in the disputed domain name.

- Respondent’s domain name registration causes Complainant malicious

damage and business injury.

Respondent’s Summarized Contentions

- The Complainant has the trademark The World Bank, not worldbank.

I think that worldbank is just a noun that everybody can use. If they

are right nobody can use this name anymore, what’s the difference if somebody

registers the "world trade center" as their trade mark, asking

nobody in the world should use the same name on their world trade center

which each country has. If The World Bank owns the trade mark like "girl",

could that mean they own all the girls in the world?

- I have a dream, I want to build up the network banking system in

the future.

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain name <worldbank.net>

transferred to it, the Complainant must prove the following (the Policy,

para 4(a)(i-iii)):

- the domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect

of the domain name; and

- the domain name was registered and is being used in bad faith

Identical or Confusingly Similar

The Panel finds that Complainant owns many registrations of the trade and

service mark "World Bank" in the United States and in many countries: for

example United States principal register trademark reg. No. 2,129,753

dated January 20, 1998, in int. class 16 for publications on the

development of third world nations (Complaint Exhibits 1 and 2 contain numerous

examples of Complainant’s registered marks).

Complainant's rights in that trademark date from 1944, and thus arose significantly

prior to Respondent's registration of the disputed domain name. The disputed

domain name <worldbank.net> is the same as the Complainant’s trademark

except for the absence of a space between the two words and the addition of

the gTLD ".net". The absence of spaces between words is common and to be expected

in domain names, and does not reduce confusion between them and valid trade

or service marks. The inclusion of a gTLD is without legal significance because

a gTLD is required of registrants and ".net" does not serve to identify a specific

source of goods or services (see, AT&T Corp. v. John Zuccarini d/b/a

RaveClub Berlin, WIPO Case No. D2001-1503

(April 3, 2002).

In accordance with the Policy at para 4(a)(i), the Panel finds that the

disputed domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights.

Rights or Legitimate Interests

Complainant contends that Respondent has received no license, permission

or consent from Complainant to use the Complainant Trademarks. Respondent

contends he wants to build up a "networking banking system in the future."

However, in the more than three years since the Respondent registered the

disputed domain name on January 28, 1999, the Respondent apparently

has made no use whatever of the disputed domain name, still less a use that

might qualify as a legitimate right or interest under the Policy at 4(c)(i)

.

Respondent has not contended or attempted to show that he is commonly known

by the domain name (the Policy at 4(c)(ii)), or that he has attempted to

make a non-commercial or fair use of the disputed domain name per 4(c)(iii).

In accordance with the foregoing, the Panel finds that the Respondent has

no rights or legitimate interests in respect of the disputed domain name.

Bad Faith

The Complainant contends that its World Bank trademark is so strong internationally

that Respondent’s very registration of the domain name without authorization

is indicative of bad faith. Previous panels under the Policy have been willing

to grant this status to a select group of internationally famous marks. (for

example the mark "Veuve Cliquot" in Veuve Cliquot Ponsardin, Maison

Fondee en 1772 v. The Polygenix Group Co., WIPO

Case No D2000-0163 (May 1, 2000); and Yahoo!Inc. v. M &

A Enterprises, WIPO Case No. D2000-0748

(October 23, 2000). The Panel finds this contention persuasive in

this instance. The Complainant has been using the World Bank mark for some sixty

(60) years all over the world.

The Panel also is convinced that the fact that the Respondent held the disputed

domain name comprising the Complainant’s famous trademark for over three (3)

years without making any use of the name that he could demonstrate to the Panel

is further evidence of the Respondent’s bad faith (on this point see Telstra

Corporation Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003 (February 18, 2000); and Nintendo of America,

Inc. v. Garrett N. Holland et al., WIPO

Case No. D2000-1483 (January 11, 2001).

The Panel is aware that the above two grounds for finding bad faith in

registration and use are not explicitly enumerated in the Policy, but the

Policy’s listing is by design non-exhaustive. And Rule 15(a) gives the Panel

the latitude, where appropriate, to find other grounds for bad faith. As

is apparent from the few cases the Panel cited among the many cases where

Panels have based bad faith on similar grounds, there is broad support in

previous panel decisions under the Policy for the Panel’s bad faith findings

here.

The Panel thus finds that the disputed domain name was registered and is

being used in bad faith.

7. Decision

The Panel finds the disputed domain name, <worldbank.net>, is identical

to the Complainant’s World Bank trade and service marks. The Panel also

finds the Respondent has no legitimate rights or interests in the disputed

domain name. Finally, the Panel finds the Respondent registered and is using

the disputed domain name in bad faith because the Complainant’s mark is

in a select class of internationally strong marks that make it virtually

certain the Respondent knew that his domain name registration infringed

the Complainant’s mark; and because the Respondent held the disputed domain

name for over three (3) years without attempting to make a bona fide use

of it.

In accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the

Rules, the Panel orders that the disputed domain name, <worldbank.net>,

be transferred from the Respondent, Mr. Yoo Jin Sohn, to the Complainant,

International Bank for Reconstruction and Development d/b/a The World Bank.

Dennis A. Foster

Sole Panelist

Dated: May 7, 2002