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eQ Pankki Oy v. Eqbank. Emotional Quotient Development System [2004] GENDND 681 (28 June 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

eQ Pankki Oy v. Eqbank. Emotional Quotient Development System

Case No. D2004-0337

1. The Parties

The Complainant is eQ Pankki Oy, Helsinki, Finland, represented by Benjon Oy, Finland.

The Respondent is Eqbank. Emotional Quotient Development System, Seoul, Republic of Korea, represented by Jin Hwan Lee, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <eqbank.com> (the “Domain name”) is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2004. On May 7, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the Domain name. On May 7, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain name and providing the 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 May 12, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2004. The Response was filed with the Center on June 8, 2004.

The Center appointed Madeleine De Cock Buning as the sole panelist in this matter on June 21, 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

Complainant is a Finnish deposit bank licensed to provide banking and investment services in the EU. The activities of Complainant are to provide brokerage services, asset management and banking via the Internet.

Complainant owns the Community trade marks “eQ” (wordmark), filed on October 26, 1999, under 1360726, for the classes 9, 36 and 38 as well as “eQ” (figurative), filed on 20 April, 2000, under 1623651, for the classes 9, 36 and 42 (the ”Mark(s)”). Complainant also owns the U.S. trade mark “eQ” (service mark), filed on April 8, 2003, under 2703460, for the classes 100, 101 and 102.

The disputed Domain name was registered on December 27, 2001.

The Domain name currently does not resolve to an active Internet site.

5. Parties’ Contentions

A. Complainant

Identical / similarity trade mark

The Complainant contends that the Domain name is confusingly similar to the Marks.

The Marks are distinctive for the services of Complainant.

The Domain name incorporates the entire Mark, whilst adding the word “bank” to it. This addition however does not stop the Domain name from being confusingly similar to the Mark, since it (a) directly refers to the business activity conducted by Complainant, (b) forms the English word for “pankki”, meaning “bank”, as incorporated in Complainant’s trade name, and (c) leads Internet users to believe that the services offered under the Domain name are those of Complainant, a bank mainly operating on the Internet.

Moreover, given the fact that usage of the word “bank” in Finland is restricted to licensed companies offering banking services, the Domain name leads Finnish Internet users to believe they are directed to the Internet site of Complainant.

Lastly, Complainant argues that by virtue of its ownership of domain names equal to the Domain name but with different extensions, such as <eqbank.org>, <eqbank.net> etc., Internet users will assume that the Domain name will direct them to an Internet site operated by Complainant.

Absence of rights or legitimate interest of Respondent

Complainant contends that Respondent has no rights to or legitimate interest in the Domain name.

Complainant neither has a relationship with Respondent, nor authorised Respondent to use the Marks. Respondent has not registered the Domain name as a trademark, service mark or trade name; it has not used the Domain name for offering goods or services; and is not commonly known by the name EQBANK or EQ.

Research conducted on behalf of Complainant found neither evidence of the registration of Respondent in commercial or trademark registers in Korea, nor its location at the address stated in the registration details. Internet based research into Respondent’s name yielded no results. Moreover, Respondent has “parked” the Domain name under the Internet site of the Korean Internet Service Provider LikeHost.com, as well as offered to sell the Domain name. Complainant asserts that the foregoing evidences the absence of bona fide commercial or legitimate non-commercial activity or preparation thereof.

Registration and use in bad faith

Relying on paragraph 4(b)(i) of the Policy, Complainant argues that by offering the Domain name for sale for the amount of EUR 15,000, which is considerably in excess of its out-of-pocket costs, Respondent has acted in bad faith.

Relying on previous Panel decisions, Complainant contends that by providing false contact details, as well as making up its name, Respondent attempted to hide its real identity from Complainant as well as the Panel.

From the fact that it owns and operates Internet sites under the domain names <eqbank.org>, <eqbank.net>, <eqbank.biz> and <eqbank.info>, Complainant argues that Respondent knew or ought to have known of the existence of the Marks and the trade name eQ Bank.

The previous holder of the Domain name, Mr. Lim, publicly offered the Domain name for sale for USD 20,000. Within a week of having been contacted by Complainant, Mr. Lim transferred the Domain name to Respondent, conveniently bearing a trade name identical to the Domain name. According to Complainant, this pattern of conduct suggests that Mr. Lim and Respondent amount to the same person, or that they are at least somehow affiliated or connected.

Relying on previous Panel decisions, Complainant contends that the bad faith registration of Mr. Lim extends to the subsequent acquisition of the Domain name by Respondent.

Lastly, Complainant contends that the absence of an independent Internet site operating under the Domain name evidences inactivity and therefore usage of the Domain name in bad faith.

B. Respondent

Identical / similarity trademark

Respondent contests the distinctiveness of the Marks, by arguing that both “EQ” as well as “Bank” feature in encyclopaedia, thereby depriving these words of their identification purposes.

Respondent also claims that acknowledgement of distinctiveness of the Marks would have the “absurd” consequence of rendering any domain name incorporating “EQ” incompatible with the trademark rights of Complainant.

Respondent puts to the fore several arguments, essentially claiming that the Marks, business and Internet site operated by Complainant are hardly known world wide but are instead, if at all, limited to Finland.

Furthermore, Respondent asserts that in order to enjoy protection from infringing domain names in Korea, the Marks ought to have been registered in that country.

Presence of rights or legitimate interest of Respondent

Respondent asserts it intends to launch an Internet site under the Domain name, for the benefit of activities of a different company by the name of Salt Language Institute, which one of the alleged directors of Respondent co-owns.

Registration and use in bad faith

Respondent states that the previous owner, Mr. Lim, made a business out of registering domain names containing words with a monetary value, followed by subsequent transfer to his customers. Mr. Lim thereby reputedly chose the word “EQ” by reference to its educational meaning and “bank” by virtue of it “practically meaning accumulation of information and experience”.

Respondent asserts that the parent company of Complainant, “eQonline”, did not start its banking service via the Internet until May 2002, implying an absence of knowledge of the Marks on the part of Mr. Lim at the time of registration of the Domain name.

At the same time, Respondent states that in addition to the Domain name, Mr. Lim tried to register two other domain names, namely <eqbank.net> as well as <eqbank.org>, but decided to only register <eqbank.com>, inter alia "since '.com' was mostly recognised as a major domain in Internet".

Respondent acknowledges that Mr. Lim publicly offered the Domain name for sale for USD20,000 and further states that Mr. Lim transferred the Domain name to Respondent for approximately USD8,547.

In response to Complainant’s assertion of false contact information, Respondent admits to not having an office at the address indicated in the WHOIS database, but merely wishing to rent one. Respondent evokes a close bond with the church vested at the address to explain its listing in the WHOIS database.

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and to obtain the transfer of the Domain name, Complainant must prove that each of the three following elements are satisfied:

1. The Domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights (see below, section 6.A); and

2. Respondent has no rights or legitimate interests in respect of the Domain name (see below, section 6.B); and

3. The Domain name has been registered and is being used in bad faith (see below, section 6.C).

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The disputed domain name is <eqbank.com>.

The Policy requires the Domain name to be “identical or confusingly similar” to Complainant’s Marks.

Complainant has provided sufficient evidence of its rights to the EQ trademark, registered as a Community trade mark in 1999, and used as a trade name of Complainant since as early as October 1997. The Marks are clearly distinctive for the services of Complainant.

The Policy places no limitation on the operative extent the Mark, which Complainant must show the Domain name to be identical of confusingly similar to. (Funskool (India) Ltd. v. funschool.com Corporation, WIPO Case No. D2000-0796.)

The Domain name is a combination of the EQ Mark and the generic term “bank”. In this combination, the Mark is the distinctive element, therefore creating a likelihood of confusion as regards the origin of the Domain name and the possible affiliations between Respondent and Complainant. The fact that Complainant actually offers on line banking services under the domain names <eqbank.org>, <eqbank.net>, <eqbank.biz> and <eqbank.info>, further adds to this likelihood of confusion.

For the reasons mentioned above, the Panel finds that the Complainant has trademark rights in EQ and that the domain name <eqbank.com> is confusingly similar to the Marks.

B. Rights or Legitimate Interests

While the overall burden of proof rests with Complainant, the element of possible rights or legitimate interests of Respondent in the Domain name involves Complainant proving matters that are peculiarly within the knowledge of Respondent. It involves charging Complainant with the often impossible task of proving the negative. This should, as indicated correctly in Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121, be approached as follows: Complainant makes the allegation and puts forward what he can in support thereof (e.g. he has rights to the name, Respondent has no rights to the name of which he is aware, he has not given any permission to Respondent). Unless the allegation is manifestly misconceived, under paragraph 4(c) of the Policy, Respondent has to demonstrate his rights to or legitimate interests in the Domain name.

Respondent has neither provided any evidence or circumstances of the type specified in paragraph 4(c) of the Policy, nor any other circumstances giving rise to a right to or legitimate interest in the Domain name. Complainant has not licensed or otherwise permitted Respondent to use the Mark or to apply for usage of any domain name incorporating the Mark.

In the contact details of the Domain name, Respondent uses the name EQ Bank. This name apparently only appeared in the contact details around the time that Respondent was contacted by Complainant. Respondent did not submit any evidence of its (earlier) usage thereof, although – if its assertions were true - Respondent would have been in the position, and indeed had the responsibility, to submit such evidence. This especially holds true given the fact that Complainant submitted evidence that no public records demonstrating the existence of EQ Bank could be found.

Respondent contends that “BANK” in “EQBANK” stands for accumulation of information and experience and that “EQ” stands for “emotional quotient or educational quotient”. In analysing the merits of a legitimate interest claim, one has to see if this proposed combination is:

a. a natural combination of words in English; and

b. gives any particular meaning from a grammatical or conceptual point of view.

Since Respondent contends that in the future it wants to use the Domain name for its business as a publisher under the name Salt Language Institute, the choice of this Domain name is not logical from a conceptual point of view. Moreover, from a grammatical point of view, it seems to be a forced combination of words in English. This seems a far fetched attempt at demonstrating some kind of legitimate interest in the name EQBANK.

The Panel further notes that Respondent has merely claimed an “intended use” of the Domain name, without actually submitting any evidence to support this claim. The mere intention to use a domain name is however not enough to demonstrate a legitimate interest in the name concerned. See inter alia. Hero Honda Motors Limited v. Rao Tella, WIPO Case No. D2000-0365; Neuberger Berman, Inc. v. Alfred Jacobson, WIPO Case No D2000-0323.

For these reasons, the Panel finds that Respondent has no rights or legitimate interests in the Domain name.

C. Registered and Used in Bad Faith

Policy paragraph 4(a)(iii) requires Complainant to show, on the balance of probabilities, that Respondent registered and uses the Domain name in bad faith.

For the purposes of paragraph 4(a)(iii), several circumstances are listed in the Policy which could indicate evidence of registration and use of the Domain name in bad faith. These circumstances are explicitly listed without limitation. Moreover, other circumstances, or a combination of the circumstances listed, can indicate registration and use in bad faith. Such is the case in the present dispute.

The fact that the previous holder of the Domain name, Mr. Lim, publicly offered the Domain name for sale for USD20,000 as well as the subsequent transfer by Mr. Lim of the Domain name to Respondent are uncontested. From the WHOIS database it appears that this transfer took place within a week of having been contacted by Complainant. On April 22, 2004, after the transfer of the Domain name to the current owner and Respondent in this dispute, it was again offered for sale to Complainant for the amount of USD15,000.

No independent Internet site has been operated under the Domain name at any time.

Respondent is registered in the WHOIS database using a trade name identical to the Domain name. As indicated above sub B, research conducted on behalf of Complainant found neither evidence of the registration of Respondent in commercial or trademark registers in Korea, nor its location at the address stated in the registration details. Although Respondent would have been in the position, and also had the responsibility to provide proof of its actual establishment, it failed to do so. Further more, Respondent admits to not having an office at the address indicated in the WHOIS database as well as to merely wishing to rent one at that address in the future.

A finding of bad faith may be made where Respondent “knew or should have known” of the registration and use of the Mark prior to registering the Domain name; a finding of actual knowledge is not required. Having said this, the Panel is mindful of the fact that the evidence on record does not render without doubt actual knowledge thereof on the part of the previous holder of the Domain name, Mr. Lim. As to the present Respondent, the extensive evidence supplied by Complainant, coupled with the surrounding circumstances lead the Panel to infer that Respondent knew or at least should have known of the existence of the trademark rights of Complainant.

Hence in this case, the following factors lead the Panel to conclude that Respondent acquired and uses the Domain name in bad faith:

A) Both Respondent as well as his predecessor offered the Domain name for sale for valuable consideration in excess of documented out-of-pocket costs directly related to the Domain name;.

B) Respondent has provided no evidence of any actual or contemplated good faith use of the Domain name. This fact, combined with the inactivity of Respondent by virtue of its passive holding of the Domain name, amounts to the Domain name being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No D2000-0003;

C) Respondent has attempted to create some sort of legitimate interest in the name EQBANK by explaining the term in a rather unnatural manner;

D) In breach of its registration agreement, Respondent has actively provided, and failed to correct, false contact details.

The Panel therefore finds that Complainant has established that the Domain name was acquired and is being used in bad faith by Respondent.

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, <eqbank.com> be transferred to the Complainant.

Madeleine De Cock Buning
Sole Panelist

Dated: June 28, 2004