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Tatra banka, akciová spoločnosť v. US WARE INC. [2004] GENDND 1374 (6 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tatra banka, akciová spoločnosť v. US WARE INC.

Case No. D2004-0643

1. The Parties

The Complainant is Tatra banka, akciová spoločnosť, Hod˙ovo nám. 3, Bratislava, Slovakia, represented by Law & Trademark Office Bianchi, Malach, Tomanova, Slovakia.

The Respondent is US WARE INC., Belize City, Belize, represented by Paul M. Stephner, Esq., LLM, US WARE INC, Canada.

2. The Domain Name and Registrar

The disputed domain name <tatrabanka.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2004. On August 17, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. Due to the fact that the disputed domain name was registered using the WhoisPrivacyProtect service provided by eNom, it was only after communication between the Center and eNom (August 18, 2004 and August 30, 2004) and from the Respondent to the Center (August 30, 2004) that it was confirmed that the Respondent is the sole registrant of the disputed domain name. On August 24, 2004, the Center requested clarification on the disputed domain name and on the same date the Complainant responded confirming that the disputed domain name is <tatrabanka.com>. The Center verified that 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 proceeding commenced on August 24, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2004. The Response was filed with the Center on September 13, 2004.

The Center appointed Zbyněk Loebl as the sole panelist in this matter on September 23, 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.

Supplemental filings.

Both the Complainant and the Respondent submitted a number of supplemental submissions and motions. After being notified by the Center, the Panel allowed such additional filings to be forwarded to the Panel. On September 23, 2004, the Respondent e-mailed one such supplemental filing directly to the Panelist, in addition to e-mailing it to the Center. The Center reminded the Respondent on September 24, 2004, that this is in breach of the Rules.

In particular, the Complainant filed on September 23, 2004, a Response to the Respondent’s Response.

The Respondent filed a number of motions, petitions and complaints, specifically:

“Motion for the exclusion of the Respondent(s) and inclusion of the new Respondent based on the incorrect information prior to the evidence discovery” (August 30, 2004); the correct information was later provided by the Registrar of the disputed domain name and as a result the named Respondent requested by the Respondent in the present proceeding was included as the Respondent;

“Motion for the declaration of inadmissibility of “Annex No. 27” including its sub-annexes No.1, No.2 and No. 3 of the Complainant’s complaint filed against the Respondent” (September 11, 2004); the Panel took due notice of this Motion but did not find the arguments contained in the Motion persuasive enough or containing substantially new facts or arguments related to the proceeding;

“Motion for the declaration of order to Complainant to disclose all filings, motions, and any other communication with the Arbitration Center by serving their respective copies to the Respondent” (September 20, 2004); this, in Panel’s view, has been addressed by the Center in accordance with the Rules;

“Motion to dismiss Complainant’s request for additional submission; Motion for declaratory relief of inadmissibility of additional submission by the Complainant” (September 23, 2004); the Panel, after careful consideration, allowed both parties to submit supplemental filings;

“Motion to include and file all motions previously filed with the Arbitration Center by the Respondent in the Case File D2004-0643” the Panel considered all supplemental filings of the parties;

“Complaint of notification of procedural errors (September 27, 2004); after careful consideration”, the Panel does not find this Motion to contain valid reasons; the Panel considers this proceeding to be processed according to the Rules;

“Petition for interpretation of customary conduct”

“Petition for recusal of the administrative panel” (September 28, 2004); in which the Respondent challenged the impartiality of the Panelist due to the fact that the Panelist is a Czech national and the Complainant is a company incorporated in the Slovak Republic. Like the Center which may be deemed to have borne in mind the specifically appropriate qualifications, including relevant language understanding, the Panel does not see this argument as justified. The Panel would like to confirm his Statement of Acceptance and Declaration of Impartiality and Independence in relation to the present proceeding; and

“Motion for declaration of mistrial or other respective voidance of administrative proceeding” (October 1, 2004); the Panel would like to confirm again that in his view the proceeding has been processed in accordance with the Rules.

The Panel considered all the supplemental filings with due care. In fact, in the view of the Panel, the supplemental filings did not provide any important information for the decision, which would not be already contained in the Complaint and the Response.

The parties were informed that after careful consideration, the Panel elected not to consider any supplemental filings made by Complainant or Respondent after September 29, 2004. The Panel understands that under the Rules supplemental filings can be considered under exceptional circumstances. The Panel does not regard the present case to be so exceptional to justify continued supplemental filings. Both the Complainant and the Respondent had enough time to prepare a comprehensive Complaint and the Response to the Complaint. The Panel then allowed substantial additional filings prior to September 29, 2004. Consequently, the Center notified both parties about the Panel’s decision not to allow further supplemental filings on September 30, 2004.

4. Factual Background

Complainant undertakes business under the corporate name “Tatra banka” which it has used since 1990. Also, Complainant is the owner of several registrations in Slovakia for trademarks containing TATRA BANKA name, including “TB TATRA BANKA” (application 1999, registration 2001), “TB TATRA BANKA Najlepší idú za nami” (application 1999, registration 2001) and “TATRA BANKA GROUP” (application 2001, registration 2001). Also, the Complainant is the owner of international trademark registration of TATRA BANKA GROUP (registration 2001). In addition, Complainant registered a domain name <tatrabanka.sk> (1997).

The disputed domain name was registered in 1999, and acquired by the Respondent in late 2000. In the beginning of 2001, the Respondent exchanged a few e-mails with the Complainant concerning clarification of services provided by the Complainant and also concerning the testing of Respondent’s application for the potential purposes of the Complainant. No joint-venture project was concluded between the Complainant and the Respondent.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar with registered trademarks, business name and domain name of the Complainant; that the Respondent has no legal rights or legitimate interests in the disputed domain name; and that the Respondent registered and is using the domain name in bad faith.

As evidence that the disputed domain name is confusingly similar with registered trademarks, business name and domain name of the Complainant; the Complainant enclosed evidence of a number of trademark registrations containing the disputed domain name <tatrabanka.com>, excerpt from corporate register evidencing Complainant’s business name “Tatra banka” and a confirmation of the registration of a domain name <tatrabanka.sk>. As evidence that the Respondent has no legal rights or legitimate interests in the disputed domain name, the Complainant mentioned the following: (i) the Respondent is not affiliated with the Complainant in any way; the Respondent approached the Complainant in the beginning of 2001, regarding potential business proposals, which were nevertheless refused by the Complainant; (ii) the Respondent has no prior rights in the disputed domain name, the rights of the Complainant preceded the registration of the disputed domain name; and (iii) the Respondent is not making any legitimate non-commercial fair use of the disputed domain name. As evidence of Respondent’s registration and use of the disputed domain name in bad faith, the Complainant draws the Panel’s attention to the fact that the Respondent offered the domain name together with other related domain names to the Complainant for sale and also that the Respondent has linked the disputed domain name to a pornographic website.

B. Respondent

Respondent challenges the validity of all main arguments of the Complainant. Respondent claims primarily that it acquired the disputed domain name as a part of a joint-venture discussed with the Complainant. It also claims that it offered the domain name for sale to the Complainant to cover its substantial costs from the failure of the joint-venture, due to the reasons on the Complainant’s side. The Respondent also challenges the validity of the IP rights of the Complainant related to the “TATRA BANKA” mark.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove each of the allegations referenced below:

- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no legitimate rights or interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <tatrabanka.com> is confusingly similar to the trademarks “TATRA BANKA GROUP” and “TB TATRA BANKA” registered by the Complainant. Also, the Panel considers the disputed domain name identical to the business name “Tatra banka” of the Complainant as well as with the domain name <tatrabanka.sk> owned by the Complainant. The Panel noted arguments of the Respondent concerning the challenges to the validity of the IP rights of the Complainant. Independent of the successor argument, the Complainant presented clear evidence of its respective registrations and use of the trademark and no evidence was presented by the Respondent about existing disputes concerning these rights, despite the fact that the Complainant has been using the mark and business name “Tatra banka” for almost fifteen years.

Rights or Legitimate Interests

The Panel finds that the Respondent has no legal rights or legitimate interests in the disputed domain name. No evidence was presented by the Respondent that the current use of the domain name is legitimate. When Panel visited the website at the disputed domain name, it resulted in an on-line gambling site, which had no connection with the words “Tatra banka”, or with the business of the Complainant. The Complainant presented evidence that the disputed domain name has been recently connected to a pornographic web-site. This is sufficient for the Panel to conclude that the conditions that the Respondent has no legitimate rights or interests in respect of the domain name are satisfied.

Registered and Used in Bad Faith

The Panel considers that the decisive question to be answered in this proceeding is whether the Respondent acquired the disputed domain name in good faith, or whether the acquisition was abusive and in bad faith. Respondent argues that it acquired the disputed domain name as a part of on-going discussions concerning envisaged joint-venture with the Complainant. Nevertheless, the Respondent presented evidence confirmed by the Complainant that there were discussions related to some kind of “a potential project or at least a bank-client relationship” from the very beginning of 2001, therefore after the Respondent acquired the disputed domain name in late 2000. Respondent presented no evidence that the discussions started in 2000, nor that there was an agreement among the parties that the Respondent should have acquired the disputed domain name for the purposes of the envisaged joint-venture.

It is more likely from the evidence submitted by the Respondent that the Respondent developed a business idea involving the Complainant and before approaching the Complainant acquired the disputed domain name. The Panel finds that the Respondent was well aware of the existence of the Complainant and its business at the time it acquired the domain name. Even at that time, the Complainant had undertaken its business activity for ten years under the name Tatra Banka, it registered and had been using for three years a Slovak domain name <tatrabanka.sk> and had applied for a number of trademarks containing the “TATRA BANKA” mark. The disputed domain name <tatrabanka.com> conflicted with these prior rights of the Complainant. The Respondent did not demonstrate any other reason for the acquisition of the disputed domain name than the proposed joint-venture with the Complainant contemplated by the Respondent.

After several attempts from the Respondent to do business with the Complainant were refused by the Complainant, as follows from the correspondence between the parties, the Respondent offered the disputed domain name to the Complainant for sale, supposedly to cover its costs resulted from defaults of the Complainant. The Panel did not see any convincing evidence from the documents submitted that there were any defaults or breaches on the part of the Complainant. Even if there were such defaults or breaches, they would not justify, in the Panel’s view, Respondent’s attempt to cover such cost from the sale of an unfairly held domain name. Rather, other options are available for such attempts at cost recovery, which however, were not made by the Respondent.

The Panel sees no legitimate purpose in the Respondent’s activity. This case is different than cases where the Panels concluded that the registration of a domain name was made in good faith (e.g. Teradyne, Inc. v. 4Tel Technology, WIPO Case No. D2000-0026, or Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005). In the present case, the Respondent acquired the disputed domain name being well aware of the existing rights of the Complainant to the mark and business name “Tatra banka”, being identical with the disputed domain name, with a view to benefiting, directly or indirectly, from the Complainants rights to trademarks corresponding to the disputed domain name. In the Panel’s view, this amounts to bad faith registration and use. Therefore, the Panel concludes that the conditions that the domain name has been registered and is being used in bad faith are met.

7. 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 <tatrabanka.com> be transferred to the Complainant.

Zbyněk Loebl
Sole Panelist

Dated: October 6, 2004