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Bank for International Settlements v. Fortune Nwaiwu [2004] GENDND 1396 (1 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bank for International Settlements v. Fortune Nwaiwu

Case No. D2004-0575

1. The Parties

The Complainant is Bank for International Settlements of Basel, Switzerland, represented by Rory Macfie of Bank for International Settlements, Basel, Switzerland.

The Respondent is Fortune Nwaiwu of Brooklyn Park, Minnesota, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bfisonline.net> is registered with AAAQ.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2004. On August 2, 2004, the Center transmitted by email to AAAQ.com, Inc. a request for registrar verification in connection with the domain name at issue. On August 12, 2004, AAAQ.com, Inc. trading as Domainpeople Inc. 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. 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 proceedings commenced on August 13, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2004.

The Center appointed Luca Barbero as the Sole Panelist in this matter on September 10, 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 is the registered owner of the International Trademark Registration No. 644772 of September 12, 1995, for BIS, in classes 36, 38, 41 and 42, based on the national Swiss registration No. 418612 of March 13, 1995.

Under Article 6ter of the Paris Convention for the Protection of Industrial Property of 1883, as amended in Lisbon in 1958, the initials BIS and name Bank for International Settlements have been protected since 1965, as the English initials and name of an international intergovernmental organization, together with its translations in French and German. Such names have also been protected as marks under Swiss law since June 1, 1962.

The Complainant has provided the Panel with copies of the corresponding documents attesting the ownership of the above mentioned intellectual property rights.

The disputed domain name <bfisonline.net> was registered by the Respondent on March 6, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant states that BIS is one of the designations and marks by which Complainant is known globally in the context of international financial and monetary co-operation among central banks and other agencies, and which Complainant uses in its trading activities in the financial markets.

The Complainant underlines to the Panel that domain name <bfisonline.net> is confusingly similar to the Complainant’s trademark since it contains all three letters of the Complainant’s acronym and the only difference is the addition of the letters “f” which are merely an abbreviation of the preposition “for” and the phrase “online” which, according to the Complainant, does nothing to prevent confusing similarity, while it serves to strengthen the association between the Complainant’s mark and the disputed domain name.

Furthermore, the Complainant indicates that the domain name <bfisonline.net> is redirected to a website which substantially copies the name and logo of the Complainant and most of the content of the website. The Complainant has provided the Panel with copies of the printout of the web pages as published on the website “www.bfisonline.net” on May 19, 2004.

Addressing the issue of bad faith use, the Complainant states that the Respondent has registered <bfisonline.net> for the purpose of diverting Internet users to a website that purports to be the Complainant’s in order to perpetrate a fraudulent advance fee scam. The Complainant has provided the Panel with a copy of an email correspondence that the Respondent had addressed to a third party from an alleged email address of Mr. William R. White (who is an actual member of the Senior Management of the Complainant), from the email address wrw_bfis@yahoo.com. According to the Complainant, the misuse by the Respondent of Mr. White’s name indicates that the Respondent was fully aware of the Complainant and its initials and mark BIS when registering the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

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

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

A. Identical or Confusingly Similar

The Complainant has provided the Panel with sufficient evidence of ownership of the trademark BIS, which is confusingly similar to the domain name. As also stated in Bank for International Settlements v. James Elliott, WIPO Case No. D2003-0987, the addition of the word ‘online’ does “nothing to detract from the confusing similarity between the domain name and Complainant’s initials. The domain name suggests a website operated by Complainant.”

The panel concurs with the view that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480.

In view of the above, the Panel finds that the Complainant has proved that the domain name is confusingly similar to the trademarks of the Complainant according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) that he has made 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 prior to the dispute; or

(b) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) that he intends to make 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.

Complainant has provided evidence that the disputed domain name is being used with the intent for commercial gain by the Respondent since it is undoubtedly used to divert Internet users and tarnish the trademark. The facts and evidence to support the Complainant’s contention include the Respondent’s website at “www.bfisonline.net” which substantially reproduces Complainant’s website (Respondent changed BIS to BFIS throughout the site and adopted a similar logo) leading any Internet user to believe it is consulting the Complainant’s official website.

There is no relation, disclosed to the Panel, between the Respondent and the Complainant and the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademark and name under any circumstance.

The Panel, therefore, finds that Respondent has no rights or legitimate interests in respect of the domain name, according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

With reference to the issue of bad faith at the time of registration, notwithstanding the fact that the Bank for International Settlement is well-known worldwide amongst financial institutions, the Panel notes that the Respondent has even adopted the fictitious name “Bfisonline office” as part of the name of the Registrant, therefore hinting at an alleged affiliation with the Bank for International Settlement, but consequently attesting to its prior knowledge of the Complainant.

As to the use in bad faith, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation and endorsement of Respondent’s services. The Respondent has indeed substantially reproduced the Complainant’s website – including the logo - and published it at the online location corresponding to the disputed domain name.

Furthermore, as an additional circumstance evidencing bad faith, the Panel has considered the copy of an email correspondence that the Respondent had addressed to a third party signed as Mr. William R. White, who is an actual member of the Senior Management of the Complainant, with reference to a transfer of US$180,000.

In view of the above, the Panel finds that Respondent has registered and is using the domain name in bad faith, according to paragraph 4(a)(iii) of the Policy.

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 <bfisonline.net> be transferred to the Complainant.

Luca Barbero
Sole Panelist

Dated: October 1, 2004