Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Panasia Bank, Fort Lee, NJ, USA ("Complainant"). The Respondent is Kang E Lee, Union , NJ, USA ("Respondent").

The domain name at issue is panasiabank.com, registered with Network Solutions.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Tyrus R. Atkinson, Jr.,Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 2, 2000; The Forum received a hard copy of the Complaint on October 6, 2000.

On October 9, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name panasiabank.com is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On October 17, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 5, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts, and to postmaster@panasiabank.com by e-mail.

On November 8, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Tyrus R. Atkinson, Jr. as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant contends that the domain name, PANASIABANK.COM is identical to Complainantís name, PANASIA BANK.

Panasia Bank opened in 1993, long before Respondent filed for the domain name in 1999.

Complainant was the registered owner of PANASIABANK.COM from at least late 1995 until January 1999, when the domain name was no longer registered to Complainant through billing error thus allowing Respondent to obtain the domain name.

Respondent does not operate a bank.

There is no site at PANASIABANK.COM that would indicate the domain name is being used for any legitimate purpose.

Prior to filing this dispute, Complainant made several requests to have Respondent transfer the domain name to Complainant. Respondent offered to sell the domain name to Complainant for the sum of $25,000.00

B. Respondent

Respondent contends that the domain name PANASIABANK.COM is not confusingly similar to Complainantís business name, PANASIA BANK.

Respondentís company is not a bank in the financial sense of the word, it is a data-bank in which information regarding Asian affairs is to be shared by those visiting the site.

PANASIABANK is linguistically descriptive of a databank doing business throughout all of Asia.

Panasia Bank has domain names such as PANASIABANK.ORG and PANASIA-BANK.COM that are not active web sites.

Respondent contends that he made preparations to use the domain name by contacting a web site hosting service.

Respondent denies offering to sell the domain name to Complainant for $25,000.00. Respondent states that there were two contacts between Complainant and Respondent during which the selling of the domain name was discussed. Both of these were initiated by Complainant. Respondent states that he told Complainant that the domain name was worth between $15,000.00 and $25,000.00. At the next meeting Complainant offered $1,000.00 to Respondent for the domain name. Respondent stated that he did not want to sell the domain name at all.

Respondent registered the domain name PANASIABANK.COM with Network Solutions, Inc., on January 29, 1999.

A company named Panasia Bank was opened in 1993.

The business in which Panasia Bank engages itself is not disclosed in the pleadings. Panasia Bank is a subsidiary of National Penn Bankshares, Inc. as is National Penn Bank which provides administrative and information systems in support of Panasia Bank.

Panasia Bank was registered owner of the domain name PANASIABANK.COM from 1995 until 1999. This allegation of Complainant is not supported by any documents but the allegation is not refuted by Respondent and thus is taken as true.

Complainant holds registrations for the domain names PANASIA-BANK.COM and PANASIABANK.ORG.

In discussions initiated by Complainant concerning transfer of the domain name PANASIABANK.COM from Respondent to Complainant, Respondent stated that the domain name was worth between $15,000.00 and $25,000.00.

Respondent refused Complainantís offer to purchase the domain name for the sum of $1,000.00

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Complainant clearly has rights in the company name Panasia Bank which has been in operation since 1993. The domain name PANASIABANK.COM is identical to Complainants name, Panasia Bank. See Ruben L. Lopez v. Irish Realty Corporation, FA 94906 (Nat. Arb. Forum Aug. 8, 2000). This element does not require, as Respondent contends, that the domain name be confusingly similar, when used by Respondent in linguistic sense, to Complainantís name. Respondentís argument, that the domain name PANASIABANK.COM is not confusingly similar to Complainantís name, Panasia Bank, because Respondent intends ëbankí to mean ëdata bankí and not ëfinancial bankí, is an incorrect interpretation of what is required. The inquiry regarding this element seeks to determine whether the domain name, is identical or confusingly similar to a complainantís mark, regardless of how the domain names are actually used. See Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, D2000-0477 (WIPO July 20, 2000).

Complainant maintains that Respondent does not operate a bank and that there is no web site to indicate that Respondent is using the domain name for any legitimate purpose. Respondent may show that he does have such rights by showing that he has been commonly known by the domain name, even if he has acquired no trademark or service mark rights. ICAAN Uniform Domain Name Dispute Resolution Policy, Sec. (4)(c)(ii). Not only has Respondent failed to make such a showing, but it is clear from the pleadings that Respondent has not been commonly known by the domain name. Respondent may show that "before any notice"Öhis "use or, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or servicesÖ" ICAAN Uniform Domain Name Dispute Resolution Policy, Sec. (4)(c)(i). Respondentís showing regarding his rights or legitimate interests consists of his own assertion that he contacted someone about making and hosting a web site, and that he is currently preparing, researching and collecting content. Respondentís mere assertions, when not supported with some documentation on the existence of a purported company that might show what the companyís business is, or how the companyís years of existence, if it ever existed, might show some legitimacy for the claim are insufficient to prove rights and legitimate interests in the domain name here in issue. See AT&T Corp. v. Domains by Brian Evans, D2000-0004 (WIPO Feb. 16, 2000). To acquire rights and legitimate interests, it requires more than mere registration of a domain name. See Sampatti.com Ltd. V. Chetan Rana, AF-0249 (eResolution July31, 2000. A bona fide intent to use a domain name requires some proof of a demonstrable preparation to use the name in a legitimate manner. See Mondrich and Amer. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000). No such showing is evident in the pleadings. Complainant must prevail on this issue.

In one registers a 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 Ödocumented out-of-pocket costs directly related to the domain name" such registration is evidence of bad faith. ICAAN Uniform Domain Name Dispute Resolution Policy, Sec. (4)(b)(i).

Complainant alleges that "several requests" were made to Respondent to transfer the domain name and that Respondent offered to sell the domain name to Complainant for the sum of $25,000.00. Respondent denies making this statement but states that he had two meetings with Complainant to discuss transfer of the domain name. At the first meeting Respondent opined that the domain name was worth between $15,000.00 and $25,000.00 but when prompted by Complainant to submit a written statement of what Respondent would take in money to transfer the domain name, Respondent did not send any such offer to Complainant. At a second meeting, Complainant offered the sum of $1,000.00 to Respondent to transfer the domain name. Respondent refused the offer. It is uncontested that Complainant initiated contact and arranged both meetings with Respondent. Under some circumstances, the fact that complainant, and not respondent, initiated contact for the purpose of inquiring about purchasing the domain name tends to weigh against a finding of bad faith on part of the respondent. See General Machine Products Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Jan. 26, 2000). And, had Respondent simply considered but then refused an offer, Respondentís participation in such a meeting might not be taken against him. But in this case, Respondent concedes that he is the one who first suggested the monetary value of the domain name PANASIA.COM at between $15,000.00 and $25,000.00. The inference can be drawn from this statement that had Complainant agreed to pay such a sum, Respondent was prepared to sell the domain name to Complainant. The fact that Respondent failed to accept an offer made by Complainant at the second meeting to sell the domain name for $1,000.00 in no way changes the inference that Respondent was prepared to sell the domain name for a greater sum of money. Based upon all of the facts and circumstances of this case and the inferences which may legitimately be drawn therefrom, Respondent is found to have acted in bad faith in the registration of the domain name PANASIA.COM.