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Swiss Bankers Association (SwissBanking) v. Patrik Piran aka Parviz Piran [2005] GENDND 1483 (2 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swiss Bankers Association (SwissBanking) v. Patrik Piran aka Parviz Piran

Case No. D2005-0561

1. The Parties

The Complainant is Swiss Bankers Association (SwissBanking), Basel, Switzerland, (the “Complainant”), represented by Fuhrer Marbach & Partner, Switzerland.

The Respondent is Patrik Piran aka Parviz Piran, Jalisco, Mexico; PVNet S.A. de C.V., Jalisco, Mexico; PVNet, Jalisco, Mexico (the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <swiss-bankers.org> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was submitted by e-mail to the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2005. On May 27, 2005, the Center sent an Acknowledgement of Receipt of Complaint to the Parties. The communication was made to the Respondent by e-mail.

At the Center’s request for registrar verification of May 27, 2005, concerning the disputed domain name, Network Solutions, LLC transmitted its verification response to the Center by e-mail on May 31, 2005, confirming that the Respondent is listed as the Registrant of the disputed domain name and providing the contact details for the Registrant and the administrative and technical contact.

On May 31, 2005, the Complaint was received in hard copy.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, 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 sent the Complaint and a formal Notification of Complaint and Commencement of Administrative Proceeding to the Respondent on June 1, 2005, by courier and e-mail, using the contact details listed in the Registrar’s WHOIS database. The courier package was undeliverable. In accordance with the Rules, Paragraph 5(a), the due date for response was June 21, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2005, by e-mail.

Although the Center’s courier package with the Complaint was not deliverable at the Respondent’s address listed in the WHOIS, the Panel finds that the Center has discharged its responsibilities to make reasonable efforts to try to notify the Complaint to the Respondent pursuant to the Rules, Paragraph 2(a), and that the Notification of Respondent Default was also properly notified.

The Center appointed Ms. Foteini Papiri as the Sole Panelist in this matter on July 19, 2005. 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. Thus, the Panel finds that it was properly constituted.

The Panel finds that the Complaint was filed in accordance with the requirements of the Policy, the Rules and the Supplemental Rules, and that payment of the fees was properly made.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent’s default in responding to the Complaint).

4. Factual Background

Since the Complaint is formally in compliance with the Policy, the Rules and the Supplemental Rules, and because Complainant’s allegations and documents enclosed with the Complaint have not been contested, the Panel finds the following facts as having been sufficiently established:

Swiss Bankers Association (SwissBanking) is a Swiss association registered in the Register of the canton Basel-City (Complaint, Annex 1) and is the leading professional organization of the Swiss financial center. Its members are Swiss Banks as well as non-banks. Its main purpose is to maintain and promote the best possible framework conditions for the Swiss financial center both at home and abroad. Complainant especially promotes Switzerland’s image as a financial center throughout the world.

Complainant owns a trademark and service mark registration for the mark “SWISS BANKERS’ CLUB” in Switzerland for international classes 16 and 42 (Complaint, Annex 5 and 6).

Complainant also owns trademark and service mark registrations for the mark “THE WORLD OF SWISSBANKING” in Switzerland and various countries in connection with printed matter, bookbinding material, photographs, teaching materials (Nice classification Class 16), advertising (Nice classification Class 35), insurance and financial operations (Nice classification Class 36) (Complaint, Annex 5).

Complainant has provided the Panel with a detailed list of trademark and service mark registrations, including, but not limited to, the marks “SWISS BANKERS’ CLUB”, “THE WORLD OF SWISSBANKING” and “SWISS PLUS FINANCIAL EXCELLENCE”, held in different countries (Complaint, Annex 5).

Complainant is the owner of the domain name registration <swissbanking.org>, where Complainant has on-line presence and Complainant’s background is set out and services and activities are presented.

According to WHOIS database records furnished by the Complainant, the record for the disputed domain name <swiss-bankers.org> was created on September 10, 2002, (Complaint, Annex 3).

5. Parties’ Contentions

A. Complainant

The Complainant contends that: (1) the domain name <swiss-bankers.org> is identical or confusingly similar to the mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and has not made submissions whatsoever. Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. Under paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, in the absence of exceptional circumstances, the Panel is entitled to “draw such inferences therefrom as it considers appropriate”. No exceptional circumstances have been brought to the Panel’s attention. Accordingly, the Panel makes the findings below on the basis of the material contained in the Complaint.

6. Discussion and Findings

This dispute is properly within the scope of the Policy, and the Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the domain name that is the subject of this Complaint was registered, incorporates the Policy.

The Respondent is required to submit to a mandatory administrative proceeding in accordance with paragraph 4(a) of the Policy, because the Complainant asserts, in compliance with the Rules of Procedure, that:

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

Under Rules, paragraph 10(a), the Panel is allowed inter alia to independently visit the Internet in order to obtain additional light in this default proceeding.

On July 28, 2005, the Panel attempted to visit Respondent’s web site at the URL “www.swiss-bankers.org”, using the Internet Explorer browser. The domain name <swiss-bankers.org> opened to a web page allegedly operated by the “World’s Largest Financial Conglomerate”. Respondent appeared to be offering “International Finance & Commercial and Business Loans” under the business identity of “Swiss Bankers” or “Swiss Bankers Association” (sic!).

Under Rules, paragraph 15(a), “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The Complainant has rights in the mark “SWISS BANKERS’ CLUB” registered for goods and services in classes 16 (paper goods and printed matter) and 42 (miscellaneous services) in Switzerland.

The disputed domain name incorporates the most significant portion of the mark “SWISS BANKERS’ CLUB” written in lower case, i.e. “swiss bankers” with the addition of a hyphen between the words “swiss” and “bankers” and the gTLD “.org”. The writing in lower case and the addition of the hyphen and the gTLD is of no legal significance for the comparison of the disputed domain name to Complainant’s registered mark, because they are dictated by technological factors set by the nature of the DNS. The main question, therefore, remains whether the incorporation of the principal words of Complainant’s registered mark in Respondent’s domain name constitutes confusing similarity. In WIPO Case No. D2003-0656, it was found that the omission of the words “ALBANK AL SAUDI” from the disputed domain name <alfransi.com> was not enough to escape confusing similarity with Complainant’s registered mark “ALBANK AL SAUDI AL FRANSI”.¹ In the case of abbreviation of Complainant’s mark in the disputed domain name, it needs to be examined whether confusion may still result from this practice.

In this particular case, Complainant has used the mark “SWISS BANKERS’ CLUB” in connection with a wide variety of goods and services and Complainant is well-known in the financial branch under the trade name “Swiss Bankers’ Association (Swiss Banking)”. Respondent creates a likelihood of confusion in the minds of Internet users, who expect the domain name <swiss-bankers.org> to resolve to a web site owned by, operated by or affiliated with the Complainant, since Respondent uses the most significant portion of Complainant’s registered mark to promote financial services and commercial and business loans.

Concerning the territorial effect of the trademark or service mark registration, it is important to point out that the trademark or service mark on which the Complainant relies does not need to be registered in the Respondent’s country. A series of WIPO decisions confirm this position.²

The Panel finds that the domain name is confusingly similar to Complainant’s registered mark “SWISS BANKERS’ CLUB”, in which the Complainant has proven to have rights, pursuant to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

By its default, Respondent has not contested the allegation of the Complainant that the Respondent lacks any rights or legitimate interests in the domain name.

Complainant is the leading professional organization of the Swiss financial center, and Complainant’s first use of the mark “SWISS BANKERS’ CLUB” predates the domain name registration. Since Complainant’s “SWISS BANKERS’ CLUB” trademark and service mark registration was issued before the registration of the disputed domain name that wholly incorporates the most significant portion of Complainant’s mark, the Panel finds that the Complainant has prior trademark and service mark rights and the Respondent had actual or most likely knowledge of the mark “SWISS BANKERS’ CLUB”.

Complainant never granted, tacitly or otherwise, Respondent any license, rights, permission or authorization to use the mark “SWISS BANKERS’ CLUB” or any part thereof. On the web site linked to the domain name <swiss-bankers.org> Respondent offers various financial services, including, but not limited to, commercial and business loans under the assumed identity “Swiss Bankers” and “Swiss Bankers Association” (sic!) (Complaint, Annex 9). These services are offered for commercial gain at a domain name that wholly incorporates the most significant portion of Complainant’s mark “SWISS BANKERS’ CLUB”.

Respondent appears to have no corporate, partnership or fictitious business name or business listing registration under the domain name, nor has it claimed any rights with respect to the domain name <swiss-bankers.org>. By its default, Respondent also failed to demonstrate legitimate interests or bona fide offering of goods or services in respect of the domain name <swiss-bankers.org>. Neither Respondent nor its organization are registered at the Swiss Federal Banking Commission, which is responsible for supervising the Swiss banking sector (Complaint, Annex 7 and 8). Therefore, it is concluded that Respondent is not an authorized institution in Switzerland.

In any case, the result of the test independently conducted by the Panel did not show any evidence as to the rights or legitimate interests of the Respondent in the domain name pursuant to paragraph 4(c) under the Policy, nor could the Panel find any indication of bona fide offering of goods or services. Furthermore, there is no evidentiary support that the Respondent, as an individual, business, or other organization, has been commonly known by the domain name or that Respondent is making a legitimate non-commercial or fair use of the domain name.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name at issue, pursuant to paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

By its default, Respondent has not contested the allegation of the Complainant concerning domain name registration and use in bad faith.

According to paragraph 4(a)(iii) of the Policy, the Complainant must prove registration and use in bad faith. Paragraphs 4(b)(i)-(iv) of the Policy contain a non-exhaustive list of circumstances, which shall constitute evidence of registration and use of a domain name in bad faith, such as circumstances indicating that Respondent registered or 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 Respondent’s documented out-of-pocket costs directly related to the domain name (paragraph 4(b)(i)); or that Respondent 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 Respondent engaged in a pattern of such conduct (paragraph 4(b)(ii)); or that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor (paragraph 4(b)(iii)); or that by using the domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

Complainant contends that by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

It is reasonable to believe that the Respondent, prior to its registration and use of the domain name, which wholly incorporates the most significant portion of Complainant’s registered mark “SWISS BANKERS’ CLUB”, was aware of the fact that Complainant was the owner of the mark “SWISS BANKERS’ CLUB” because of the Complainant’s role as the leading professional organization of the Swiss financial center. As a result, the Panel finds that the disputed domain name <swiss-bankers.org> was registered in bad faith.

Complainant used the mark “SWISS BANKERS’ CLUB” in connection with a wide variety of activities. As a consequence, the public has come to perceive goods and services that are offered under the mark “SWISS BANKERS’ CLUB” or a variation of the same as emanating from or being endorsed by or affiliated with Complainant. The use of the term “swiss-bankers” is a variation of the Complainant’s mark, which the average Internet user would expect the Complainant or its affiliates to use in order to identify its goods or services, especially since Complainant is primarily using its “SWISS BANKERS’ CLUB” mark in connection with goods and services in the financial industry.

Complainant furnished the Panel with evidence that upon registration of the domain name, without any license, permission or authorization from the legitimate owner of the rights in the mark “SWISS BANKERS’ CLUB”, Respondent developed a web site connected with the domain name <swiss-bankers.org> to advertise and offer financial services, commercial and business loans (Complaint, Annex 9). In doing so, Respondent holds out to be the “World’s Largest Financial Conglomerate” (Complaint, Annex 9) and makes unauthorized use of the most significant portion of the mark “SWISS BANKERS’ CLUB” on the web site. In its web site, Respondent seeks to trade off on Complainant’s substantial goodwill and to intentionally deceive Internet users since there is no real connection to Switzerland nor any business or legal ties between Complainant and Respondent that would warrant the ample use of the terms “Swiss Bankers” or “Swiss Bankers Association”(sic!) in Respondent’s web site. In so doing, Respondent harms the goodwill associated with Complainant’s mark.

The domain name <swiss-bankers.org> was registered and used by Respondent solely with the purpose of intentionally attracting for commercial gain Internet users who were seeking information on Complainant’s activities and services or who believed that the web site linked to the domain name <swiss-bankers.org> was an additional service offered by the Complainant, due to the similarity of the domain name to the mark “SWISS BANKERS’ CLUB” and the similarity of the services offered by Respondent to those offered by Complainant. It was Respondent’s clear intent to profit at Complainant’s expense by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or of a product or service on its web site. Internet users expect the domain name <swiss-bankers.org> to resolve to a web site owned by, operated by or affiliated with the Complainant.

The Panel is satisfied that Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

The circumstances surrounding Respondent’s conduct so far are indicative of registration and use of the domain name in bad faith. Respondent failed to file a Response, bringing evidence of any legitimate commercial or non-commercial activity to the Panel’s attention.

For all the aforementioned reasons, the Panel finds that the Complainant has proven paragraph 4(a)(iii) under 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 <swiss-bankers.org> be transferred to the Complainant.

Foteini Papiri
Sole Panelist

Dated: August 2, 2005

² See, among others, Administrative Panel Decision in WIPO Case No. D2001-0154, Administrative Panel Decision in WIPO Case No. D2001-1051, Administrative Panel Decision in WIPO Case No. D2001-1092, Administrative Panel Decision in WIPO Case No. D2003-0668 and Administrative Panel Decision in WIPO Case No. D2003-0920. Administrative Panel Decision in WIPO Case No. D2003-0963 under 6A states: “It is sufficient that a Complainant establish that, at the time of filing the Complaint, it has some rights in a trademark anywhere in the world.”