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Credit Suisse
Group on behalf of Bank Leu AG v. Leu Enterprises Unlimited
Claim Number: FA0112000102972
PARTIES
The Complainant is Credit Suisse Group on behalf of Bank Leu AG (a member of the Credit Suisse Group) of Zürich, Switzerland (“Complainant”). The Respondent is Leu Enterprises Unlimited of Los Gatos, California, U.S.A (“Respondent”).
The domain name at issue is <leu.biz>, registered with Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Alan L. Limbury as Panelist.
Complainant filed this Start-up Trademark Opposition Policy (“STOP”) Complaint, having previously filed an Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”). The Respondent disputes the Complainant’s standing to file this STOP Complaint.
Complainant submitted the Complaint to the Forum electronically on December 14, 2001; the Forum received a hard copy of the Complaint on December 27, 2001.
On January 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 29, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on January 29, 2002.
On February 11, 2002, pursuant to STOP Rule 6(b), the Forum appointed Alan L. Limbury as the single Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
A. Complainant
Identity
“Bank Leu” and
“Banque Leu” are internationally registered trademarks of Bank Leu AG, the
oldest Bank in Switzerland, having its representative
offices and branches all
over the world. It was founded 1755. With having registered this domain name we
have the possibility to
avoid any confusion of the customers. By now very
important TLD names are registered on behalf of Bank Leu AG like
<leu.com>
and <leu.info>.
The domain name
<leu.biz> is identical or confusingly similar to the Complainant’s
trademark Bank Leu.
Legitimacy
As Bank Leu AG has already registered the crucial TLD names <leu.com> and <leu.info>, the registration by the Respondent of the TLD <leu.biz> would create serious danger of confusion and could cause considerable damage to Bank Leu’s worldwide high reputation.
Bad faith
We did intensive research on the Respondent Leu Enterprises Unlimited and we have found absolutely no information about this Company. Therefore we are left with the impression that there is no serious business interest in the "leu" brandname and the domain name <leu.biz>. Every attempt to reach this company by phone was not successful (+1.4083673062 - as stated in the whois database of NeuLevel, Inc.). An answering machine guides the calling person through the menu but the name of Leu Enterprises Unlimited was never mentioned. All the employees of Bank Leu have an e-mail address which ends with @leu.com to clearly show to the outside world who the sender is and to clearly show the commitment of Bank Leu to the "leu" brandname . The Respondents mail address (supercom@supercomputer.org) doesn’t show any relation with the name of the company.
It is very likely to cause confusion
concerning the company names especially because the domain names
<leu.com> and <leu.info>
are already registered on behalf of Bank
Leu.
The Respondent
has registered the domain name in order to prevent the Complainant from
reflecting the mark in a corresponding domain
name.
B. Respondent
The Complainant has not demonstrated that it has registered “Bank Leu” or “Banque Leu” as trademarks. It has provided no certificates. The Respondent’s U.S. and European searches have failed to reveal any such registrations.
The domain name <leu.biz> is not identical to the supposed trademarks Bank Leu or Banque Leu. Thus, under STOP paragraph 4(a)(i), there is no applicable dispute and this Complaint must be rejected.
There is no possibility of confusion between Bank Leu’s customers and Leu Enterprises Unlimited, which is in the computing business (primarily computer software), not the financial business.
This is a case of reverse domain name hijacking.
Complainant’s only submission is of likely confusion with the domain name <leu.com>, not with any trademark it claims to own.
The sole proprietor of Leu Enterprises Unlimited is Mr. Dwight Leu, who has been doing business under the name Leu Enterprises Unlimited in delivering solutions for the computer industry since November 1989, long before the Complainant’s supposed trademarks were ever filed. The disputed domain name was registered on November 19, 2001 in order to enable expansion of Respondent’s business. Before notice of this dispute was received on December 14, 2001, Leu Enterprises Unlimited Incorporated was incorporated in California on December 4, 2001 (the application having been filed on November 21, 2001).
There is no evidence of bad faith nor is there any bad faith. The phone number listed in the Whois database for <leu.biz> is no longer current but could not be changed under the STOP process. It has been corrected in this Response.
The disputed
domain name is not identical to either of the trademarks in which the
Complainant claims to have rights. Accordingly
the Complainant has no standing
to file this STOP Complaint and it must be dismissed.
Paragraph
15(a) of the STOP Rules instructs this Panel to “decide a complaint on the
basis of the statements and documents submitted
in accordance with the Policy,
these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
The requirement of STOP paragraph 4(a)(i) that “your domain name is identical to a trademark or service mark in which the Complainant has rights” is expressed in the same words as are found in the corresponding paragraph of the UDRP. [The alternative requirement of the UDRP, confusing similarity, is not a requirement of STOP]. However, the meaning of “identical” under STOP is not the same as under the UDRP. Many UDRP cases have held that it is sufficient for a Complainant to establish virtual or substantial identity: The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc., D2000‑0113 (WIPO Apr. 13, 2000), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., D2000-0802 (WIPO Sept. 9, 2000); Nokia Corporation v. Nokiagirls.com a.k.a IBCC, D2000-0102 (WIPO Apr. 18, 2000) and Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000).
Under STOP, however, a Complaint may not be filed unless the domain name in dispute
identically matches the exact alphanumeric string contained in a trademark
or
service mark in which the Complainant has rights and for which the Complainant
has registered an Intellectual Property (IP) claim
form: see STOP paragraph 1;
the IP Claim Service Terms of Use, paragraphs 1 and 4 and the definitions of
“Claimant” and “Complainant”
in paragraph 1 of the STOP Rules.
Accordingly,
every STOP proceeding, properly brought, should necessarily involve a disputed
domain name that (apart from the “.biz”
gTLD, which must be disregarded) is
strictly identical to a trademark or service mark in which a Complainant
asserts rights.
The Complainant has not asserted that it has trademark rights in the name Leu. Neither of the two trademarks in which the Complainant does claim to have rights, namely Bank Leu and Banque Leu, is identical, in the strict sense required under STOP, to the relevant part of the disputed domain name, namely <leu>. Accordingly the Complaint must be dismissed.
The Respondent, whose owner is Mr. Dwight Leu, has used the name Leu Enterprises Unlimited since at least 1994 in the business of providing computer solutions. The Panel accepts that the disputed domain name was registered in order to expand that business. The Panel finds the Respondent has demonstrated legitimate rights to the disputed domain name.
There is no evidence of registration or use in bad faith.
DECISION
The Complaint is not within the scope of paragraph 4(a) of the Policy and is dismissed.
Pursuant to paragraph 4(l)(ii)(2) of STOP, the Panel decides that, because the Respondent has demonstrated legitimate rights to the disputed domain name, no subsequent challenges under this Policy against the domain name that is the subject of this decision shall be permitted.
Because STOP is new, the Panel considers the Complaint to have been misconceived rather than brought in bad faith. Accordingly, no finding of reverse Domain Name Hijacking is made.
Alan L. Limbury, Panelist
Dated: February 23, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/277.html