Banque Saudi Fransi v. ABCIB

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banque Saudi Fransi v. ABCIB

Case No. D2003-0656

1. The Parties

The Complainant is Banque Saudi Fransi, Riyadh, Saudi Arabia, represented by Harbottle & Lewis Solicitors, United Kingdom of Great Britain and Northern Ireland.

The Respondent is ABCIB, Punjab, Pakistan.

2. The Domain Names and Registrar

The disputed domain names <alfransi.com> and <saudifrenchbank.com> are both registered with NamesDirect.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 21, 2003. On August 22, 2003, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain names at issue. On August 28, 2003, NamesDirect.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2003. The Response was filed with the Center on September 17, 2003.

The Center appointed Simon Minahan as the Sole Panelist in this matter on September 23, 2003. 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

For the purposes of the decision the following are accepted as fact:

1. The Complainant, Banque Saudi Fransi is a Saudi Arabian Joint Stock Company established by Royal Decree No. M/23 dated June 4, 1977. It is affiliated with Crédit Agricole Indosuez (CAI) which holds an equity interest of 31.1%. It has formally traded in Saudi Arabia under its present name since December 10, 2002, having previously been known as Al Bank Al Saudi Al Fransi and having been commonly known as the Banque Saudi Fransi/ the Saudi French Bank since at least around 1977;

2. The Complainant is the registered owner of Saudi trademark registration number 142401352 for AL BANK AL SAUDI AL FRANSI in class 36 covering insurance services, financial services and banking services;

3. The Complainant is the current registrant of the domain names <alfransi.com.sa> and <saudifrenchbank.com.sa> and currently makes use of them in operating a website for the Banque Saudi Fransi;

4. The Complainant registered the domain name <alfransi.com> on June 7, 2001, with Network Solutions, Inc for a 5-year period;

5. When the Complainant owned the domain name <alfransi.com> it mistakenly listed the administrative contact for "www.alfransi.com" with the e-mail address "www.saudifrenchbank.com" rather than "www.saudifrenchbank.com.sa" which was the website it owned;

6. The Domain name <alfransi.com> was under the control of the Complainant between December 2002, and June 2003, and was utilized by the Complainant for conducting on-line banking and promotional services and enjoyed substantial traffic during that period;

7. The Complainant has reputation and common law trademark interest in the terms "Saudi French Bank" and "Al Fransi";

8. The domain names subject to the Complaint are currently not used and in August 2003, resolved to the website "www.thesimpsons.com" and now resolve to a webpage which simply states:

"This site is currently Under Construction

Please email your queries to

[email address]"

9. The Respondent registered the domain name <saudifrenchbank.com> in

November 2002, and is presently the registered holder of <alfransi.com>.

10. The change of registration of <alfransi.com> to the Respondent occurred

in or around July 2003, and has disrupted the Complainant’s on-line business

operations requiring it to register the domains under the ".sa" ccTLD.

11. Prior to filing Complaint the Complainant has unsuccessfully sought through

administrative channels to have the transfer of the <alfransi.com> domain

name reversed. It has also unsuccessfully sought to secure the transfer of that

domain name by the Respondent by offering a sum for costs and has unsuccessfully

sought to purchase the transfer of the <saudifrenchbank.com> domain name

for a substantial sum of money.

12. The Respondent has previously been a Respondent in a UDRP decision where

transfer of a domain name was ordered.

5. Parties’ Contentions

A. Complainant

The contentions of fact of the Complainant which have been accepted are set

out above under the Factual Background heading. The substance and sufficiency

of the Complainant’s evidence concerning the interests it has in trademarks

reflected in the disputed domain names are discussed below. The Complainant

contends that both disputed domain names are identical or confusingly similar

to its common law marks and/or registered trademark.

In addition the Complainant contends that the Respondent "hijacked"

the <alfransi.com> domain name upon receiving email correspondence from

Network Solutions, Inc as a result of the Complainant’s mistaken entry

of details for administrative contact leading to the Respondent, as registrant

of the <saudifrenchbank.com> domain name, receiving administrative correspondence

from the registrar of the <alfransi.com> domain name.

The contention of the Complainant is, therefore, that the Respondent registered

the <saudifrenchbank.com> domain name but improperly procured the transfer

of the domain name <alfransi.com> as opposed to registering it in bad

faith.

The Complainant contends that bad faith registration and use of the domain

names by the Respondent are established by:

(a) the presumed knowledge of the Respondent of the Complainant’s mark at the

time of registration of the <saudifrenchbank.com> domain name;

(b) the lack of any demonstrated legitimate interest in the Respondent in either

domain name;

(c) the lack of use (beyond warehousing) of either of the domain names by the

Respondent;

(d) apparent falsification of contact details in the registration details (noting

an apparent relationship between one Imran Zafar of Domainz Unlimited who conducted

all correspondence and negotiations with the Complainant and Abcib, the nominal

registrant);

(e) a history of Mr. Zafar cybersquatting as evidenced in the UDRP decision

Virgin Enterprises Limited v. Imran Zafar, WIPO

Case No. D2002-0696; and

(f) offers to sell <saudifrenchbank.com> and the <alfransi.com>

domain name to the Complainant for significant sums of money.

B. Respondent

The Respondent, under hand of "Abcib, Domainz Unlimited" made no

submissions of fact or law, other than an oblique allegation of reverse hijacking

and an appeal to the Panel to act in an unbiased fashion.

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, the Complainant must prove

that:

(i) The 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 Domain Name has been registered in bad faith and is being used in

bad faith.

As preliminary issue therefore the Panel must be satisfied under paragraph 4(a)(i)

that the Complainant has relevant trademark interests.

The UDRP accepts both trademarks, registered or unregistered, to the extent

that they are legally recognisable (e.g. Kay Smyth and Galway Walking Club

v. Yuen Wei, WIPO Case No. D2003-0100).

In the present case both registered and unregistered marks are asserted by

the Complainant in support of the Complaint in respect of the disputed domain

names. In particular the Complainant effectively asserts common law marks by

reason of it being widely known as "Al Fransi" and "The Saudi

French Bank" but proffers no direct evidence in support of this assertion

nor any evidence of the use such as advertising or other promotional activities

it has made of these expressions, beyond those noted below. The Panel notes

however that no evidence rebutting these claims is proffered by the Respondent.

Taking each disputed name in turn the Panel makes initial findings concerning

the Complainant’s relevant trademarks as follows:

<alfransi.com>

Apart from claiming it is known, among other things, as "Al Fransi,"

Complainant has proffered evidence of a registered mark AL BANK AL SAUDI AL

FRANSI which includes in its last two words the entirety (excluding "www"

prefix and ".com" suffix) of the disputed domain name. Panel decisions

have held that registration of a mark is prima facie evidence of

validity of an asserted trademark which creates a rebuttable presumption that

the mark is inherently distinctive. Respondent has the burden of refuting this

assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu

Yea Enterprises, Inc., WIPO Case No. D2000-0047

(March 24, 2001). Respondent here has offered no rebuttal evidence

concerning the validity of the registration or its distinctiveness.

The Panel notes that further to the asserted reputation in the abbreviated

phrase "Al Fransi," the Complainant itself registered and operated

<alfransi.com> in conjunction with its business as conducted on-line and

continues to operate it in conjunction with <alfransi.com.sa>. It takes

account of the evidence of the traffic enjoyed by that site in the last year

as provided in the exhibits to the Complaint. The Panel finds that this uncontroverted

evidence is sufficient to establish a common law trademark interest in the expression

"al fransi" and "alfransi" in addition to the interest in

the registered trademark containing that phrase.

<saudifrenchbank.com>

Apart from the assertion that it is known by the name "The Saudi French

Bank," the Complainant provides as an exhibit its undated articles of incorporation

which note this as the English language equivalent of Banque Saudi Fransi. Further

it appears from the uncontested evidence that the Complainant has traded under

the Banque Saudi Fransi informally for some years and formally since 2002. In

addition, from the Complainant’s exhibits it appears the website which the Complainant

maintains in conjunction with the "www.saudifrenchbank.com.sa" carries

the BANQUE SAUDI FRANSI mark. The Panel accepts that "Saudi French Bank"

is the English equivalent of BANQUE SAUDI FRANSI, under which name

it is incorporated and it presently trades. It further notes the evidence that

the Complainant trades in the international sphere.

Previous Panel decisions have accepted translations of marks as being covered

by the Policy in appropriate circumstances (e.g.: Kabushiki Kaisha Toshiba

d/b/a Toshiba Corporation v. Liu Xindong, WIPO

Case No. D2003-0408).

Accordingly the Panel accepts this uncontroverted evidence of a reputation

in the phrase "the Saudi French bank" amounting to a common law unregistered

trademark.

Moreover, the Panel regards the fact that the Complainant has operated its

website in conjunction with the <saudifrenchbank.com.sa> domain name for

a significant period with substantial traffic as further establishing the expression

"Saudi French Bank" as a mark of the Complainant.

A. Identical or Confusingly Similar

<alfransi.com>

To the extent that the domain name contains a part of the Complainant’s registered

mark ALBANK AL SAUDI AL FRANSI the Panel considers that an abbreviation of a

registered mark incorporated into a domain name may constitute confusing similarity

(see e.g. Dow Jones & Company, Inc. & Dow Jones LP v. T.S.E.

Parts, WIPO Case No. D2001-0381).

However, the Panel is of the view that this cannot be an absolute rule in determining

UDRP disputes and considers the matter must turn on the facts of each case.

In the present case the Panel would not be satisfied of confusing similarity

on this basis alone were it not for the accepted evidence that the Complainant

has conducted its business on-line by use of the <alfansi.com> domain

name and continues to do so by use of the <alfransi.com.sa> domain name

in a way and to a degree which has led it to accept that the Complainant has

an interest in that word or phrase. As noted in many cases previously, the variations

arising between trademarks and domain names by reason of domain suffixes are

not prima facie distinctive for the purposes of the Policy: (see e.g.:

World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO

Case No. D1999-0001 and InfoSpace.com, Inc. v. Registrar Administrator

Lew Blank, WIPO Case No. D2000-0069).

<saudifrenchbank.com>

The Panel finds this domain name identical to the Complainant’s unregistered

trademark, being the English language equivalent of its BANQUE SAUDI FRANSI

mark. Again no account is taken of the ".com" suffix or the "www"

prefix for this analysis and to the extent necessary it is noted that it is

identical to the Complainant’s mark as used in its active domain name <saudifrenchbank.com.sa>,

once suffixes are ignored.

Further the Panel notes that the Complainant has proffered evidence of genuine

confusion arising in customers or potential users of the Complainant’s services

at the outcome of calling up the disputed domain names.

Therefore, the Panel finds that both disputed Domain Names are confusingly

similar to the Complainant’s marks pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests

in the Domain Names pursuant to the Policy, paragraph 4(a)(ii).

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

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

Once a Complainant establishes a prima facie showing that none of the

three circumstances establishing legitimate interests or rights apply, the burden

of production on this factor shifts to the Respondent to rebut the showing.

The initial burden of proof, however, remains with Complainant to prove each

of the three elements of paragraph 4(a). See, Document Technologies,

Inc. v. International Electronic Communications, Inc., WIPO

Case No. D2000-0270 (June 6, 2000).

The Complainant’s uncontested allegation is that Respondent has no relationship

with or permission from Complainant for the use of its marks. The Panel accepts

this evidence.

The Policy paragraph 4(c) nominates three nonexclusive methods for a Respondent

to show he or she has rights or a legitimate interest in the Domain Name, namely

evidence of:

(i) use of, or demonstrable preparations to use, before any notice of the dispute,

the domain name or a name corresponding to the domain name in connection with

a bona fide offering of goods or services; or

(ii) Respondent having been commonly known by the domain name, even if it has

acquired no trademark or service mark rights; or

(iii) Respondent making a legitimate noncommercial or fair use of the domain

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

to tarnish the trademark or service mark at issue.

The Respondent offers no evidence of any of these matters (or any other matter)

and further the evidence of the Complainant tends to establish there has been

no actual use of the Domain Names. Additionally, in respect of the <alfransi.com>

domain name, it seems that the registration fell into the hands of the Respondent

and out of the hands of the Complainant by accident, which itself suggests there

was no prior legitimate interest in the Respondent.

The Complainant has therefore established that the Respondent lacks rights

to or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Notwithstanding some inconsistency concerning previous Panel findings about

the conjunctivity of requirements of registration and use in bad faith, the

Panel for present purposes accepts that the Complainant must prove both registration

and use in bad faith. See World Wrestling Federation Entertainment, Inc.

v. Michael Bossman, WIPO Case No. D1999-0001;

Robert Ellenbogen v. Mike Pearson, WIPO

Case No. D2000-0001.

However, paragraph 4(b) of the Policy states a number of circumstances

that shall be evidence of the registration and use of a domain name in bad faith,

including:

"(i) Circumstances indicating that [the Registrant has] registered or

acquired the domain name primarily for the purpose of selling, renting or otherwise

transferring the domain name registration to the Complainant who is the owner

of the trademark or service mark or to a competitor of that Complainant, for

valuable consideration in excess of documented out-of-pocket costs directly

related to the domain name…"

These circumstances are non-inclusive, and the Panel may consider other circumstances

as constituting registration and use of a domain name in bad faith.

In the present case the Respondent has offered both Domain Names in dispute

to the Complainant for sale at significant sums well above out of pocket costs.

While the Complainant has itself offered a significant amount for the transfer

of the <saudifrenchbank.com> domain name, it appears from the evidence

that this followed the Respondent putting a higher price on the Domain Names

and was not a case of "entrapment." Moreover, the offer, while perhaps

ill advised in terms of this proceeding, was made after frustrated efforts to

obtain transfer of the domains through administrative channels. Further the

Panel notes no evidence of any other purpose or use of the Domain Names by the

Respondent – other than sale to the Complainant–has been forthcoming.

Additionally the Panel notes (although in view of its finding on the primary

intention of registration being sale to the Complainant it does not rely on)

the following grounds:

(a) the effective non-use of the Domain Names in circumstances where there

is no clear legitimate use which could have been made of them (e.g.: Telstra

Corporation Limited .v. Nuclear Marshmallows, WIPO

Case No. D2000-0003);

(b) the inherent unlikeliness of the Respondent having registered (or acquired)

the Domain Names without knowledge of the Complainant’s reputation in them and

the likelihood therefore of their being registered or acquired for bad faith

purposes;

(c) the disruptive effect and diversionary consequence the Respondent’s use

of the Domain Names has had on the Complainant’s conduct of its online services;

(d) the Respondent’s prior involvement as an unsuccessful Respondent in WIPO

Case No. D2002-0696, mentioned earlier.

The Panel is satisfied therefore of the registration and use of the <saudifrenchbank.com>

domain name by the Respondent in bad faith.

The matter of the <alfransi.com> domain name is not as straight forward,

however.

In particular the Panel notes some discrepancy between the evidence that the

Complainant registered the Domain Name for 5 years in July 2001 – as evidenced

by a receipt from Network Solutions and testimony in the Complaint – and the

evidence contained in WHOIS search records which show that the Domain Name has

been registered since June 2000, and is registered until 2007 or 2008.

This discrepancy is puzzling and unexplained, but in the absence of any counter

evidence the Panel accepts the Complainant’s contentions and lack of any explanation

or assertion to the contrary either in the proceeding or in the correspondence

between the parties preceding it which is in evidence. The Panel notes especially

that upon invitation to the Respondent to state the basis on which he maintained

an entitlement to the Domain Names, the Respondent gave no response of substance.

Further the Panel notes that, on the basis of the foregoing finding, the Respondent

did not register the Domain Name at all but acquired it by transfer. However,

in this regard the Panel has regard to the wording of the Policy reproduced

above which stipulates that acquisition of the name for the primary purpose

of sale will suffice. It further has regard to previous Panel decisions which

have accepted transfer as sufficing for the purposes of this head of the Policy

– albeit not generally by way of mistake or otherwise from an unwitting Complainant

as here (e.g.: Kyobo Life Insurance Co., Ltd. v. Max, WIPO

Case No. D2003-0008; Feria Muestrario Internacional de Valencia

v. Mr. JP Bronston, WIPO Case

No. D2002-1163).

Therefore, the Panel is satisfied, that the Respondent’s actions (outlined

earlier) in offering the Domain Names for sale amount to bad faith under paragraph

4(b)(i) of the Policy.

The Panel is satisfied therefore of the registration and use of the <alfransi.com>

domain name by the Respondent in bad faith.

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 Names, <alfransi.com>

and <saudifrenchbank.com>, be transferred to the Complainant.

Simon Minahan

Sole Panelist

Dated: October 14, 2003