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Generic Top Level Domain Name (gTLD) Decisions |
COMBINED
RESTRICTIONS DISPUTE RESOLUTION POLICY
UNIFORM DOMAIN NAME DISPUTE RESOLUTION
POLICY
DECISION
Central
Pacific Bank v. Muhammad Aman a/k/a CPB
Claim Number: FA0304000155901
The
Complainant is Central Pacific Bank, Honolulu, HI, USA (“Complainant”)
represented by Stanley L. Ching of Devens, Nakano, Saito, Lee, Wong
& Ching. The Respondent is Muhammad Aman a/k/a CPB, Karachi,
Sindh, PAKISTAN (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <centralpacificbank.biz> registered with Intercosmos
Media Group, Inc. d/b/a Directnic.com.
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
Panelist in this proceeding.
Richard
Hill as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on April 28, 2003; the Forum received
a hard copy of the
Complaint on April 28, 2003.
On
April 29, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by
e-mail to the Forum that the domain name <centralpacificbank.biz>
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
the Respondent is the current registrant of the name.
Intercosmos Media Group,
Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a
Directnic.com registration agreement and has thereby
agreed to resolve domain name disputes brought by third parties in accordance
with the Restrictions Dispute Resolution Policy (the “RDRP Policy”) and the
Uniform Domain Name Dispute Resolution Policy (the “UDRP
Policy”).
On
May 6, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 26,
2003 by which Respondent could file a
Response to the Complaint, was transmitted to Respondent pursuant to paragraph
2(a) of the Rules
for the Uniform Dispute Resolution Policy as supplemented by
the Supplemental Restrictions Dispute Resolution Policy (the “Rules”).
A
timely Response was received and determined to be complete on May 26, 2003.
Complainant
submitted a timely and complete Additional Submission on May 30, 2003.
Respondent’s
timely Additional Submission was received and determined to be complete on June
4, 2003.
Respondent
submitted an Additional Submission on June 4, 2003. Respondent’s Additional
Submission was timely and complete.
On
June 10, 2003, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Richard
Hill as Panelist.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant
Concerning RDRP, Complainant states:
"The manner in which the domain name is identical or confusingly similar
to a trademark or service mark in which the Complainant has
rights
is that the main portion of the domain name <centralpacificbank.biz>
is virtually identical so as to be
confusingly similar to the marks registered to Complainant – 'Central
Pacific Bank'”.
"Respondent’s domain is not being or will not be used
primarily for a bona fide business or commercial purpose. RDRP Policy ¶ 4(a). The domain name was registered on December
2, 2001 – 18 months ago. Up until this
month (April 2003), there was no web page associated with the domain name. It was only after we contacted the
registrant about him voluntarily surrendering the name that a temporary
web page was published using tools obtained from the registrar. There has been no use of the name for bona
fide business or commercial purposes and there being no evidence of any
business operating
under the same name in Pakistan or elsewhere (other that
Complainant’s business), there does not appear to be any intention on the
part
of Respondent of doing so."
Complainant further alleges that an
exchange of E-Mails between February 2003 and April 2003 provides evidence of
bad faith behavior
by the Respondent, because the Respondent offered to sell
the disputed domain name for a sum in excess of out of pocket costs.
Concerning UDRP, Complainant states that
it has a registered service mark “Central Pacific Bank”, that the disputed
domain name is
confusingly similar to this mark, that the disputed domain name
was not used prior to April 2003 and goes on to state that "…
the
Respondent, located in Pakistan, appears to have no relationship whatsoever
with a bank or anything located in the central Pacific
Ocean. The fact that the domain name was registered
in December 2001 and has not been utilized in over a year—more than half of the
term
of the registration period—is evidence that the Respondent does not intend
to use the name for any legitimate business purpose, or
any bona fide offering
of goods or services, related to the name itself".
B. Respondent
Respondent
states that it was not aware of the existence of the Complainant or of its
service mark and that it has been doing business
in Pakistan since 2000 under the
name Central Pacific Bank. The
Respondent is in the fishery business and for him the word "bank"
refers to the edge of a body of water, not to a financial
institution.
In
support of the above, Respondent provides the copy of a trademark application dated
26 April 2001.
C. Additional Submissions
Both
parties have presented additional submissions.
Complainant states: "The original
registrant should never have been allowed to register the domain because he had
no bona fide
business or commercial purpose for seeking its registration. … The
Respondent cannot now claim to have a legitimate business or commercial
purpose, when there never was one to begin with. … The transfer of the domain
on the eve of our taking action against the original
registrant must be
considered to be a fraudulent transfer, akin to the sale of stolen goods,
designed to sidestep the regulations
governing domain name registration.
" Complainant goes on to refer to
certain E-Mails as evidence to support this allegation. Complainant alleges that the transfer of the
disputed domain name to the Respondent was "fraudulent" and states
that the
trademark registration submitted by the Respondent "is not
legitimate or bona fide".
Respondent
alleges that some of the cited E-Mails are fabricated and requests that Reverse
Domain Name Hijacking be found.
The
Complainant has a service mark CENTRAL PACIFIC BANK, since at least July 2001.
The
disputed domain name was first registered in December 2, 2001, by Muhammad
Arshad, Karachi, Pakistan.
The
disputed domain name was not used until April, 2003.
The
disputed domain name was transferred no later than April 12, 2003, to Muhammad
Aman, Karachi, Pakistan.
The
Respondent, Muhammad Aman has presented evidence that he has a mark CENTRAL PACIFIC
BANK for his fishery business, since April
2001.
Of
the several E-Mails presented by the Complainant, the only ones that the Panel
finds relevant for this case are:
On April
9, 2003, from Muhammad Arshad, the original registrant. This E-Mail is addressed to the
Complainant's attorney, and appears to be a response to the request made for
transfer of the disputed
domain name .
This E-Mail states: "I want to reimbursed my $1200 & defiantly
your client don't mind in paying our expenses held on that
domain." (sic)
On
May 3, 2003, also from Muhammad Arshad, the original registrant, also addressed
to the Complainant's attorney, "Pay me just $1200 for my charges &
get the domain its take only 1 day." (sic)
On May 5, 2003, from Muhammand Aman, the
Respondent, also addressed to the Complainant's attorney, and stating:
"Will you please
consider of what Mr. Arshad said." (sic)
Paragraph
15(a) of the 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 UDRP 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 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.
Paragraph
4(b) of the RDRP Policy defines “bona fide business or commercial use” as the
bona fide use or bona fide intent to use the
domain name or any content software,
materials, graphics or other information thereon, to permit Internet users to
access one or
more host computers through the DNS:
(1) to exchange goods, services, or property
of any kind; or
(2) in the ordinary course of trade or
business; or
(3) to facilitate the exchange of goods,
services, information, or property of any kind or the ordinary course of trade
or business.
The
Complainant alleges that the original registrant did not have a bona fide
business or commercial use (as defined by the RDRP)
for the disputed domain
name. But this is not relevant for the
present case, which involves the Respondent, not the original registrant.
This
procedure was initiated after the transfer of the disputed domain name, and
paragraph 1 of the RDRP states that the purpose of
the RDRP is to set out:
"…
the terms and conditions that will apply in the event of a dispute between you
(as the registrant) and a third party other
than us (as the registrar) or the
registry administrator for the .BIZ top-level domain over the registration or
use of your domain
name in violation of the .BIZ Registration Restrictions
…"
That
is, the RDRP applies only to the registrant, that is the Respondent, and not to
any other parties.
Whether
or not the original registrant had a bona fide business or commercial use is
therefore not relevant for this procedure.
The
Respondent has presented convincing evidence to the effect that it operates a
fishery business under the name CENTRAL PACIFIC
BANK and therefore the Panel
finds that the Respondent has a bona fide business or commercial use for the
disputed domain name.
The
Complainant's request under the RDRP is therefore dismissed.
Complainant
argues that the disputed domain name is confusingly similar to its mark CENTRAL
PACIFIC BANK.
The
panel agrees with this argument.
Complainant
argues that the initial registrant had no rights or legitimate interests in the
disputed domain name because it does not
conduct a business with a name related
to the disputed domain name and because the domain name was not used for over
18 months.
But
this is not relevant to the present case, which is directed against the
Respondent, not against the initial registrant. The UDRP Rules define the Respondent: "Respondent
means the holder of a domain-name registration against which a complaint is
initiated." And paragraph 1 of the
UDRP makes it clear that the party to a dispute is the current registrant, not
somebody else: "[This Policy]
… sets forth the terms and conditions in
connection with a dispute between you and any party other than us (the
registrar) over the
registration and use of an Internet domain name registered
by you."
Concerning
the Respondent, Complainant states: "Complainant has not been able to
ascertain whether Respondent, an individual,
has any business commonly known by
the domain name, centralpacificbank.biz".
This indicates doubts regarding the Respondent's rights, but such an
assertion does not satisfy the Complainant's burden to prove that the
Respondent has no rights or legitimate interests, the burden of proof arising
from paragraph 4(a) of the UDRP.
Although
the point is not material in the present case, it is worth noting that the
Complainant also fails to provide any evidence
to prove that the initial
registrant had no rights or legitimate interests under the UDRP.
From
the evidence presented, the Panel concludes that the Respondent operates a
fishery business under the name CENTRAL PACIFIC BANK
and that he therefore has
a legitimate interest in the disputed domain name. Complainant alleges that the trademark registration submitted by
the Respondent "is not legitimate or bona fide", but does
not provide
any evidence to support this allegation.
The Panel has no basis on which to doubt the legitimacy of the documents
submitted by either party.
The Panel repeats that the Complainant's
allegations concerning the behavior of the original registrant are not relevant
for the present
procedure, which is directed against the Respondent.
Complainant alleges that the Respondent
acted in bad faith when it offered to sell the disputed domain name for a sum
in excess of
out of pocket costs.
But, as the Panel stated in WIPO case
D2000-0638 <manchesterairport.com>:
"… selling a domain name is not per
se prohibited by the ICANN Policy (nor is it illegal or even, in a
capitalist system, ethically reprehensible)."
The same approach is taken in the Forum’s
case FA0092531 <craftwork.com>, where the Panel stated:
"General Machines [the Complainant]
has not proven, however, that Prime Domains [the Respondent] has no legitimate
interests
in respect of the domain name craftwork.com. General Machines'
trademark is not fanciful or arbitrary, and General Machines has submitted
no
evidence to establish either fame or strong secondary meaning in its mark such
that consumers are likely to associate craftwork.com
only with General
Machines. As Prime Domains has demonstrated, the term "craftwork" is
in widespread use in a descriptive
sense. The Panel finds therefore that Prime
Domains has rebutted General Machines' arguments and has proven that it is in
the business
of selling generic and descriptive domain names such as craftwork.com.
As a result, Prime Domains does have a legitimate interest
in the domain name.
That Prime Domains has offered to sell this descriptive, non-source identifying
domain name does not make its
interest illegitimate.”
"Nor has General Machine shown that Prime
Domains acted in bad faith. The affidavit of Prime Domains' president states
that Prime
Domains was not aware of General Machines' (or any other party's)
trademark rights at the time it registered the domain name craftwork.com.
Prime
Domains chose to register this domain name because, like its other domain name
registrations, it was descriptive of a service
that could be offered under that
domain name. Prime Domains did not seek to sell the domain name to General
Machines; rather, General
Machines solicited the offer to sell using an
anonymous agent. These facts do not indicate any bad faith on the part of Prime
Domains."
Although
the facts in the present case are not the same as the facts in the
<craftwork.com> case, there are similarities. The Complainant's mark is a combination of generic terms,
Respondent asserts (and there is no reason to doubt this assertion) that
the
Complainant's mark is not well-known in Pakistan, and Respondent has a
legitimate interest in the contested domain name, since
it operates a fishery
business under that name.
The
mere offer to sell a domain name does not, in and of itself, constitute bad
faith behavior under the UDRP. Other
elements need to be present before bad faith can be found.
There
is no evidence to suggest that the Respondent acted in bad faith when it
acquired the disputed domain name from the original
registrant. Complainant does argue that the transfer of
the disputed domain name from the original registrant to the Respondent was
"a fraudulent
transfer, akin to the sale of stolen goods, designed to
sidestep the regulations governing domain name registration " but the
evidence it presents to support this allegation is not convincing. Nor is there any evidence that the
Respondent knew of the Complainant's interest in the name before or at the time
of the transfer.
Complainant
alleges that the trademark registration submitted by the Respondent "is
not legitimate or bona fide", but does
not provide any evidence to support
this allegation.
The
panel finds that the Complainant has failed to prove that the Respondent acted
in bad faith.
Paragraph 1 of the UDRP Rules defines
Reverse Domain Name Hijacking: "Reverse Domain Name Hijacking means
using the Policy in bad faith to attempt to deprive a registered domain-name
holder of a domain name."
The Respondent invokes this provision
when it requests the Panel to find that the Complainant is guilty of Reverse
Domain Name Hijacking.
To support its request, the Respondent
alleges that the Complainant has fabricated some E-Mails. But it provides no evidence to prove this
and the Panel does not accept the allegation.
The general conditions for a finding of
bad faith on the part of the Complainant are well stated in WIPO case D2000-0993
<smartdesign.com>:
"Clearly, the launching of an
unjustifiable Complaint with malice aforethought qualifies, as would the
pursuit of a Complaint
after the Complainant knew it to be insupportable."
These conditions are confirmed in WIPO
case D2000-1151 <goldline.com> and WIPO case D2000-1224
<sydneyoperahouse.net>
(where the condition is stated as “the respondent
must show knowledge on the part of the complainant of the respondent’s right or
legitimate interest in the disputed domain name and evidence of harassment or
similar conduct by the complainant in the face of such
knowledge”), which in
turn cites WIPO case D2000-0565 <planexpress.com>.
There is nothing in the record to
indicate malice on the part of the Complainant and nothing to indicate that the
Complainant knew
that its case was insupportable at the time the case was
filed.
One might argue that the Complainant
should have withdrawn the case when the Response was filed, since the Response
contains evidence
that the Respondent has a legitimate interest in the disputed
domain name. But the Panel finds that,
in the present case, there is no reason to believe that the Complainant knew
that the Complaint was insupportable,
even after it became aware of the Response.
The Panel finds that the Complainant has
not engaged in Reverse Domain Name Hijacking.
The
complaint is dismissed. The
counter-claim of reverse domain name hijacking is also dismissed.
Richard Hill, Panelist
Dated: June 23, 2003
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