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UPIB, Inc. v. Mr. Muhammad Arshad [2004] GENDND 1137 (9 August 2004)

1. The Parties

The Complainant is UPIB, Inc., Hamilton, Bermuda, of United Kingdom of Great Britain and Northern Ireland, represented by Wyatt, Tarrant & Combs, Louisville, Kentucky, United States of America.

The Respondent is Mr. Muhammad Arshad, Karachi, Sindh of Pakistan.

2. The Domain Name and Registrar

The disputed domain name <unionplanters.info> is registered with Intercosmos Media Group, d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2004. On June 11, 2004, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On June 11, 2004, Intercosmos Media Group d/b/a directNIC.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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 17, 2004. The Center verified that the Complaint together with the amendment to 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 June 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2004. The Response was filed with the Center on July 7, 2004.

The Center appointed Ross Wilson as the sole panelist in this matter on July 27, 2004. 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

The Complainant, UPIB Inc, is among the 25 largest bank holding companies in the United States and manages approximately $US32 billion in assets. It licenses its trademark to Union Planters Corporation and its subsidiaries including Union Planters Bank, National Association (UPBNA). The latter operates more than 700 banking offices in 12 States. Since 1929, UPBNA and its predecessors and subsidiaries have been using the UNION PLANTERS common law trademark in connection with a wide variety of financial services and products. The Complainant has two US registered trademarks, namely, SOLUTION: UNION PLANTERS BANK and UNION PLANTERS BANK.

After becoming aware of the Respondent’s registration of the disputed domain name the Complainant’s representative issued a cease and desist letter on September 26, 2003. The Respondent replied on September 27, 2003, stating that it was an existing legal business and that the Complainant was trying to harass and get the domain name through reverse hijacking.

On March 2, 2004, the Complainant received an email from an e-mail address connected to the Respondent stating that the disputed domain name “is going very cheap…”. A Whois search conducted by the Complainant showed that the owner of that domain name was the Respondent. Another cease and desist letter was sent to the Respondent on March 24, 2004, referring to the email received. The Respondent replied on March 29, 2004, stating that he was not aware of the earlier email but indicated that he had no objection to transferring the domain name for the reimbursement of his domain and website expenses. Shortly afterwards in April 2004, the disputed domain name website began advertising links to competitor credit card organisations and credit reports.

On June 11, 2004, the Complainant received another email from the same address seeking $US800 for the domain name transfer. At that time the domain name from where the email originated was still registered in the name of the Respondent.

The Respondent is a sole proprietor of a computer and business consultancy since 2000. He has a pending application for the trademark “UNION PLANTERS” which was filed in Pakistan on June 22, 2001.

5. Parties’ Contentions

A. Complainant

The Complainant contents that the disputed domain name is identical to its trademark noting that the addition of the top level extension does not render the signs non-identical. Also, the Complainant claims common law rights in the UNION PLANTERS trademark extending back to 1929. Its two registered trademarks reinforce its rights.

At the time the Complainant sent its first cease and desist letter the Respondent’s web page simply advertised “Union Planters Computers. Coming soon”. Such passive use does not constitute a bona fide offering of goods and services. In fact, the Complainant contends that this action is identical to the Respondent’s action in the case of Federal Home Loan Mortgage Corporation v. Muhammad Arshad a/k/a SRS (FA 116767) where the Respondent’s one-page website simply advertised Freddie Mac Computers. In that case the Panel ordered the transfer of the domain name to the trademark owner. The subsequent use of the domain name to advertise links to other financial services again does not make a bona fide offering of goods and services when the Respondent uses the company’s trademark to advertise the services of the Complainant’s competitors.

The Complainant contends that the Respondent does not conduct business under the name Union Planters rather his businesses are known as For Sale, 10Best.Info and Ianschragerhotels.biz as shown on information derived from Whois and various email addresses used by the Respondent. Similarly, the Respondent never made legitimate non-commercial or fair use but intended commercial use to divert its customers to services offered by its competitors.

Finally, the Complainant contends that bad faith registration and use is evidenced by the Respondent using the Complainant’s UNION PLANTERS mark, the fact that the domain name was being used to advertise services that are competitive and the view that the Respondent is in the business of acquiring domain names primarily for the purpose of selling them. With respect to the last point the Complainant provided the examples <freddiemac.biz> and <centralpacificbank.biz> domain names with which the Respondent was associated and which were the subject of domain name disputes.

B. Respondent

The Respondent contends that the words “union” and “planters” are nouns and that the registration of a domain name consisting of a noun does not constitute any infringement on the trademark rights of other persons. Also, he contends that the Complainant’s trademark is not registered all over the world, in fact the Complainant’s trademark and name are unknown in Pakistan and its company has no legal business or affiliation in Pakistan.

The Respondent states that the dispute domain name has not been illegally used by the Respondent nor has it ever caused confusion with or misunderstanding with the Complainant or its trademark. The Respondent states that it has never interfered with the business of the Complainant.

It is the Respondent’s view that the Complainant is attempting reverse domain name hijacking.

6. Discussion and Findings

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the policy, as follows:-

(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 and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant claims rights to the common law trademark UNION PLANTERS. The Complainant has shown that the name UNION PLANTERS has been used in association with its financial services provided for 75 years and that the name has achieved association with the Complainant. These common law rights have been acknowledged in two other proceedings involving the Complainant, namely, UPIB, Inc. v.Texas Internet, WIPO Case No. D2004-0073 and UPIB, Inc. v. Domains Asia Ventures, WIPO Case No. D2004-0020. The Complainant also has rights in two other trademarks - a United Stated registered trademark UNION PLANTERS BANK claiming first use in 1929, which was filed on June 24, 2002, and SOLUTIONS: UNION PLANTERS BANK claiming first use in 1997, and filed on June 1, 1998.

The Respondent argues that the Complainant’s trademark is made up of two nouns and that a domain name made up of nouns does not infringe a trademark. He also points out that the trademark is not registered all over the world nor is it known in Pakistan. These arguments, however, are not issues to consider under the Policy. Infringement is a matter for the courts rather than the Policy. Similarly, global trademark registrations are not a requirement for the purposes of the Policy. In Funskool (India) Ltd. v. funschool.com Corporation, WIPO Case No. D2000-0796 the Panel summarized the situation as follows “If the intention had been that the Complainant’s right to complain … had to be limited to a trademark recognized by the law of the Respondent’s country of incorporation or residence, the Policy would have said so expressly”.

The Complainant asserts that, aside from the top level extension, the disputed domain name <unionplanters.info> is identical to its common law trademark UNION PLANTERS and is confusingly similar to its registered trademarks. This is indisputable.

The Panel therefore finds that the Complainant has clearly established its rights in the trademark UNION PLANTERS and that the disputed domain name is identical to the Complainant’s common law mark and confusingly similar to its registered trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out how a Respondent can demonstrate rights to and legitimate interest in the disputed domain name. The ways include, but are not limited to:

(i) “before any notice to you of the dispute, your use of, 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 services; or,

(ii) you (as an individual, business, or an organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or,

(iii) you are making a legitimate non-commercial 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 failed to address any of these three elements. Instead, he relies simply on his statement that his rights and legitimate interest in the domain name are based on his claims that his computer business has been operating since 2000, and that he had applied for a trademark in June 2001. Unfortunately, he provides no evidence that he is operating a business called Union Planters Computers and while he did provide evidence that he had applied for a trademark no evidence was provided to show that he had rights in it through a trademark registration. The Panel does not consider the Respondent’s reliance on a trademark application alone proves the necessary right or legitimate interest in the domain name – see Yahoo! Inc. v. David Ashby, WIPO Case No. D2000-0241, Pioneer Hi-Bred International, Inc v. Ingescom and Samuel Duran, WIPO Case No. D2001-0202 and Biogen, Inc. v. SRI Tech Consulting, Inc., WIPO Case No. D2001-0444.

With respect to the three elements above, the Respondent has not demonstrated that his use of the domain name was offering bona fide goods and services, that he was commonly known by the domain name or that he was making legitimate non-commercial or fair use of the domain name.

The Complainant points out that prior to sending its first cease and desist letter the domain name simple linked to a webpage proclaiming “Union Planters Computers, Coming soon” and argues that passive holding of a domain name does not constitute a bone fide offering of goods and services. Following the Complainant’s first cease and desist letter the Respondent’s website offered financial services. The Complainant claims that this in not a bona fide offering of goods and services when the Respondent uses the Complainant’s trademark to advertise the services of that company’s competitors.

The Complainant argues that the Respondent has no affiliation with UPIB or the Union Planters Corporation and he has never been given permission to use the Union Planters mark. Also, the Complainant states that Respondent’s businesses are not known as Union Planters computer but are variously known as For Sale, 10Best.Info and Ianschragerhotes.biz as shown in the Whois registration details. Finally, the Complainant believes that there has never been any legitimate or fair use of the domain name. Rather its use has been commercially to divert the Complainant’s customers to its competitors’ financial services. Other Panels agree that the use of the domain name to direct users to other unconnected websites does not constitute a legitimate interest (see UPIB, Inc. v. Domains Asia Ventures, WIPO Case No. D2004-0020 and AltaVista Company v. Andrew Krotov, WIPO Case No. D2000-1091).

In view of the above the Panel finds that the Complainant has proved paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of determining if there was bad faith the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.

The Complainant argues that the domain name was registered and used in bad faith. It argues that the Respondent was well aware of Union Planters Corporation at the time he registered the disputed domain name, that bad faith is evidenced by the fact that the Respondent is using the mark to advertise services that are competitive with UPIB’s licensees, that the Respondent is in the business of acquiring domain names primarily for the purpose of selling them to trademark owners and that, through another domain name owned by the Respondent, he asked for $US800 to transfer the domain name.

The Complainant provided evidence that after notification of the dispute the Respondent changed his web site from a passive one to one which advertises links to the Complainant’s competitors. Also, evidence was provided demonstrating that the Respondent has operated in similar ways in the past – see Federal Home Loan Mortgage Corporation v. Muhammad Arshad a/k/a SRS, FA 0207000116767 and Central Pacific Bank v. Muhammad Aman a/k/a CPB, FA 155901. In the former case the Panel ordered the domain name to be transferred. In the latter case the Panel considered that there was insufficient evidence to order the transfer. However, Mr Muhammad Arshad was implicated by sending emails demanding payment prior to transferring the domain name to the Respondent in that case, Mr. Muhammad Aman, the same person who was the Respondent’s client referred to in the former case. The similarities with the Freddie Mac case and this case are quite stark. In both cases the domain name was based on a significant American financial institution, the passive web site linked the disputed domain name and computers, a Pakistan trademark application was used as evidence that the Respondent owned a business with the same name as the disputed domain name and a third party was used to elicit payment for the domain name.

Finally, the Complainant provided evidence showing that the Respondent was the owner of the domain name <ianschragerhotels.biz> from where an email was sent stating “Still you didn’t pay fee if you like pay me just $800 via escrow.com and get domain” (sic).

In view of the above the Panel finds that the Complainant has demonstrated that the domain name was registered and used in bad faith.

7. Reverse Domain Name Hijacking

The Respondent has asked the Panel to find the Complainant guilty of reverse domain name hijacking. According to the Rules, reverse domain name hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. In other words, wrong and improper motives have to be the common factor for the Complainant’s actions or as stated in the case Amanresorts Limited v. Melissa Perlman, WIPO Case No. D2003-0383 “the real question is whether it should have been clear to the Complainant when it commenced this proceeding, that its position was wholly without merit, and that there was no prospect of the Complaint succeeding”.

The Panel considers that the Respondent has not substantiated his allegation with any evidence to prove that the complainant had wrong or improper motives or that the Complainant’s position was not without merit. The Panel finds no justification for a finding of reverse domain name hijacking.

8. 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 name, <unionplanters.info> be transferred to the Complainant. Also, the request for a finding of reverse domain name hijacking is dismissed.

Ross Wilson
Sole Panelist

Dated: August 9, 2004