Deutsche Bank Ag. v. Diego-Arturo Bruckner
[Indexed as: Deutsche Bank v. Bruckner]
[Indexed as: deutche-bank-ag.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO D2000-0277
Commenced: 18 April 2000
Judgment: 30 May 2000
Presiding Panelist: Jacques A. Léger, Q.C.
Domain name - Domain name dispute resolution policy - Federal Republic of Germany Trademark - Banking services - Business designation - Offer of sale of domain name - Cease and desist - Identical - Confusingly similar - No response from Respondent - Panel drawing inferences.
Complainant was registrant of Federal Republic of Germany Trademarks "Deutsche-Bank", "Deutsche-Bank AG" and "Deutsche-Bank Aktiengesellschaft" in relation to banking services. Respondent registered domain name "deutsche-bank-ag.com."
Evidence showed that Respondent contacted Complainant soon after registering domain name and stated that Complainant could contact Respondent about purchasing domain name. Complainant sent "cease and desist" letter and asked that Respondent cancel domain name.
Respondent agreed to cancel domain name registration and expressed intent to cede any legal rights Respondent has in domain name.
Respondent did not file a response.
Held, Name transferred to Complainant.
The panel can draw inferences from the Respondent's default.
For all intents and purposes, the domain name is identical to the registered trademark.
Respondent's attempts to cede and have the domain name deleted along with Respondent's lack of response lead the panel to the conclusion that the Respondent had no rights or legitimate interests in respect of the domain name.
Complainant has not shown evidence to suggest that the Respondent was going to offer the domain name for more than its out-of-pocket expenses. The Panel, however, concluded 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. The prime basis for this finding is the relatively short period of time which expired between Respondent's registration of the domain name and the unsolicited offer of sale of the same to Complainant.
The domain name is so obviously connected with Complainant and its services that its very use by someone with no connection with the Complainant suggests opportunistic bad faith. Respondent admitted in its correspondence that it knew of Complainant's mark.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel Decision referred to
Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, Case No. D2000-0266
Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., Case No. D2000-0163
Expedia, Inc. v. Eurpoean Travel Network, Case No. D2000-0137
Léger, Panelist: --
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
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.
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
(ii) 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.
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.
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.
Dated: May 30th, 2000
Domain Name Transferred