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Halifax plc v. Sontaja Sunducl [2004] GENDND 825 (3 June 2004)

1. The Parties

The Complainant is Halifax plc, Halifax, United Kingdom of Great Britain and Northern Ireland, represented by Scott Greenwood, in-house counsel for the Complainant.

The Respondent is Sontaja Sunducl, London, United Kingdom of Great Britain and Northern Ireland, of United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <paramount-bank.net> is registered with Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2004. On March 26, 2004, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the domain name(s) at issue. On April 16, 2004, Bizcn.com, 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”). Bizcn.com confirmed that under its Registration Agreement with the Respondent registrant, the Policy applies to the domain name.

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 April 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2004.

The Center appointed Joseph Dalby as the sole panelist in this matter on May 28, 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 an incorporated company, established in England, which is authorized to operate as a financial institution within the United Kingdom. It trades in its own name and as “Paramount Bank,” although it declares that the latter brand name is no longer being actively marketed. In any event, the Complainant is the registered proprietor of the Community Trademark, PARAMOUNT BANK, and a UK domain name, <paramountbank.co.uk>, which now re-directs to the Complainant’s main eponymous website. The Complainant, both through its branch network and its website, offers financial products (including credit cards, loans insurance and investments) to consumers and businesses.

No details have been provided about the Respondent’s background. But the registrar has confirmed that the Respondent is the incumbent registrant.

5. Parties’ Contentions

A. Complainant

The Complainant observes that the domain name in question contains its exact trademark, PARAMOUNT BANK, and contends that the latter is identical or confusingly similar.

It has provided printed screen shots of its own site and those of the site to which the domain name in question resolves, and asserts that all the text and graphics on the Respondent’s site is a copy its own website, as it appeared in January 2004; the only difference being the replacement of all references to “Halifax”, with “Paramount.” It also points out that the various trading names on the Respondent’s site are referenced by UK Financial Services Authority registration numbers that can be shown to be fictitious or wrong. It produces this evidence in support of its contention that the Respondent has no rights or legitimate interests in respect of the domain name.

The “mirroring” of its own site - as the Complainant describes it - is, it asserts, evidence of registration and use in bad faith, particularly the copying of online registration pages, on which customers might input security and personal details in an attempt to access the online transactional site.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The domain name is governed by the Policy, by virtue of the contract between the Registrar and Registrant/Respondent.

In this matter, I find as follows:

A. Identical or Confusingly Similar

The Complainant has proven rights to an established and valid trademark. Other than the insertion of a hyphen (“-”), the trademark is identical to the trademark relied upon. Moreover, given that hyphens within domain names are customarily used to mark a space in text, this only serves to reinforce the contention that the trademark and domain name are identical.

B. Rights or Legitimate Interests

Taking the Complaint in its entirety, the Complainant has satisfactorily demonstrated a prima facie case that the Respondent has no rights to or legitimate interests in the domain name. In default of the Respondent adducing any evidence to rebut this contention, the Complainant has adequately proved this element.

C. Registered and Used in Bad Faith

It is noted that none of the scenarios in paragraph 4(b) of the Policy are made out or relied upon.

Given that the Respondent has failed to adduce any evidence of rights or legitimate interests in the disputed domain name is suggestive of bad faith. Further, evidence of duplication in the Complainant’s trading get-up, branding and imagery is direct evidence of the domain name in being used in bad faith. In particular, the availability of the online registration pages, and the apparent potential for “phishing” and obtaining information by deception, is not just evidence of bad faith but possibly suggestive of criminal activity. It is accepted that on this basis there is no other possibility than the site being registered in bad faith.

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, in respect of the domain name, <paramount-bank.net>:

(i) The domain name is identical or confusingly similar to a trademark in which Complainant has rights;

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

(iii) The domain name has been registered and is being used in bad faith;

(iv) The domain name be transferred to Complainant.

Joseph Dalby
Sole Panelist

Date: June 3, 2004