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Bayshore Bank & Trust (Barbados) Corporation v. Motschh Ivan [2005] GENDND 160 (21 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayshore Bank & Trust (Barbados) Corporation v. Motschh Ivan

Case No. D2005-0011

1. The Parties

The Complainant is Bayshore Bank & Trust (Barbados) Corporation, Bridgetown, St. Michael of Barbados, represented by Fasken Martineau DuMoulin, LLP, Canada.

The Respondent is Motschh Ivan, Cotonuo of Benin.

2. The Domain Name and Registrar

The disputed domain name <bayshoretrust.net> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2005. On January 5, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On January 6, 2005, OnlineNic, Inc. d/b/a China-Channel.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 7, 2005. The Center verified that the Complaint together with the amendment to 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 January 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2005.

The Center appointed Dan Hunter as the sole panelist in this matter on February 9, 2005. 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

A. The Complainant and its Mark

The Complainant is a Barbados-based off shore-bank. It operates an online banking website at the domain names <bayshorebank.com> and <bayshoretrust.com>. These domains were registered in November 1997 and January 2000 (respectively), and the Complainant’s web banking operation has been in operation since November 1997. It also maintains a large number of domain name registrations in numerous generic and country code top level domain namespaces.

B. The Respondent

No Response was filed. From the Complaint and the WHOIS record the Respondent appears to be the individual named above, although the WHOIS record gives the trade name or business name “Bayshore Trust Ltd” in the address field of the Contact Name. There is no other evidence that the Respondent uses the name “Bayshore Trust”.

C. The Use of the Domain Name

On or about April 19, 2004, the Respondent registered the disputed domain name. It appears that the Respondent adopted the domain name to create the false impression that it is actually the Complainant. The evidence of this includes the facts that (1) the Respondent uses the name “Bayshore Trust Ltd” in the WHOIS record; (2) the Respondent’s website uses the same logos, name, marks, fonts and other elements as the Complainant’s website; and (3) the “contact us” page of the Respondent’s website uses the Complainant’s physical address as the Respondent’s address, but with a different e-mail address for electronic communications.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Respondent’s domain name is identical or confusingly similar to the Complainant’s mark. Specifically, the Complainant asserts:

(1) Confusing similarity is apparent from a simple comparison of the BAYSHORE BANK & TRUST trade name and mark with the Respondent’s use of the disputed domain name. In this sense, the contested domain name uses the very same naming convention as the Complainant itself uses when formulating its own domain names.

(2) In circumstances similar to those at hand, in the WIPO Center’s Administrative Pane1 Decision in World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001 (dated January 14, 2000) the Panel found that it was “clear beyond question” that <worldwrestlingfederation.com> is confusingly similar to the mark WORLD WRESTLING FEDERATION, a situation where the domain name and mark differed only in spacing and the addition of “com”.

(3) It is obvious that the Respondent has registered the domain name identical or confusingly similar to the Complainant’s mark and name and domain names, for the sole purpose of trading on the goodwill associated with these and misleading the public into believing that it is the Complainant. This deception is designed to permit the Respondent to obtain user identification names and passwords from the Complainant’s customers under false pretenses and to attempt to financially defraud the Complainant’s customers by accessing the Complainant’s website using this illegally obtained information.

(4) The Respondent’s awareness that visitors to its website would obviously access the site believing it to be the Complainant’s website, is evidenced by the fact that the “www.bayshoretrust.net” site copies wholesale the moon and star design and BAYSHORE name and mark in identical style, color and font to that used on the Complainants’ website. Furthermore, the Respondent’s website and pages purport to offer identical services of offshore private banking provided by the Complainant’s website.

The Complainant asserts that the Respondent has no legitimate interest or rights in the domain name. Specifically, the Complainant asserts:

(1) The Respondent is not a licensee of Complainant, nor is the Respondent otherwise authorized to use the Complainant’s BAYSHORE BANK & TRUST trade-mark and trade name. The term “BAYSHORE TRUST BANK” is not the subject of any trademark or trade name registration belonging to the Respondent. Moreover, to the best of the Complainant’s knowledge, the domain name and the name of the business of the Respondent appears to solely have been adopted to trade on the goodwill associated with the Complainant’s business and is not a name in any other way identified with or related to a legitimate interest of the Respondent

(2) In addition, the Respondent’s lack of any legitimate interests in the domain name can be inferred from the fact the Respondent has blatantly wholesale copied the designs, logos, marks, fonts and other content from the Complainant’s website onto its own website at “www.bayshoretrust.net”.

(3) The website “www.bayshoretrust.net” is a deliberate copy or knock-off of the complainant’s “www.bayshoretrust.com” website and was recently registered by the Respondent to redirect traffic intended for the Complainant’s website.

The Complainant asserts that the Respondent registered the domain name and is using it in bad faith. Specifically, the Complainant asserts:

(1) The Respondent registered the domain name at issue in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade-marks, trade name and domain names as to the source of the Respondent’s website and services. See Policy, para. 4(b)(iv).

(2) The Respondent registered the domain name at issue in order to divert traffic intended for the Complainant’s websites, using the identical domain name of the Complainant. See Policy. para. 4(b)(ii). This can be inferred by the Respondent’s conduct, in creating a website that is a “knock-off” of the Complainant’s website. Specifically, the Respondent’s conduct is enabling it to divert traffic to the Complainant’s well-known domain names for the benefit of the Respondent’s website that does not in fact offer legitimate services, in order to obtain confidential information of the Complainant’s customers.

Accordingly, the Complainant submits that the Panel should order that the domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

The Policy, adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the <.net> namespace. Paragraph 4(a) of the Policy requires the Complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:

A. The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar (Paragraph 4(a)(i)); and

B. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4(a)(ii)); and

C. The Respondent registered and is using the domain name in bad faith (Paragraph 4(a)(iii)).

A. Identical or Confusingly Similar

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain names are identical or confusingly similar to the marks.

The Complainant has been providing offshore banking facilities under the name “Bayshore Bank and Trust” for nine years, and has established a reputation in this name from its extensive offshore banking facilities. It has therefore acquired common law rights in the mark “BAYSHORE BANK & TRUST”. The Panel concludes that the Complainant has established rights in a trademark, sufficient for the purposes of paragraph 4(a)(i).

The second requirement is that the domain name be identical or confusingly similar to the mark. The domain name is one of the typical variants of the Complainant’s mark, together with the <.net> top-level domain signifier. By now it is well established that the TLD signifier does not change the meaning of the name. Since users are likely to describe the Complainant as “Bayshore Trust”—as evidenced by multiple registrations by the Complainant in this name, and by typical linguistic usage—the Panel concludes that the domain name is, for the purposes of the Policy, confusingly similar to the Complainant’s marks. The Complainant has shown that it has rights in a trademark, and that the domain name is confusingly similar to this mark. The Panel concludes therefore that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4(a)(ii) of the Policy. It makes a number of assertions as to this point, and the Respondent has made no assertions in response.

However, I consider it both necessary and instructive to analyse whether any of the defences provided in Paragraph 4(c) of the Policy might apply. Paragraph 4(c) provides the following examples to the Respondent:

“(i) before any notice to you of the dispute, your use of, or demonstrable 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

There is no evidence that any of the scenarios of Paragraph 4.c apply here to the Respondent. Its use of the domain name appears to be calculated to attract mistaken users who type the domain name into the address bar of web browsers. The evidence is that the Respondent has adopted the same basic site design and trade dress of the Complainant (inter alia) in an effort to confuse clients of the Complainant. The Respondent appears to be engaged in “phishing” for mistaken customers of the Complainant, that is, seeking to gain access to the user names and passwords of the Complainant’s clients through mistaken logins to the Respondent’s site. Not only is this activity criminal, it is clear evidence that the Respondent has no legitimate interest in the domain name.

As a result the Panel concludes that, even having considered the possible application of Paragraph 4(c), the Respondent has no rights or legitimate interest in the domain name. The Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the UDRP.

C. Registered and Used in Bad Faith

The final issue is that of bad faith registration and use by the Respondents. For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and has used it in bad faith. The actions of the Respondent clearly fall into the bad faith exemplar scenario outlined in paragraph 4(b) (iv) of the Policy, which reads:

“For the purposes of Paragraph 4(a)(iii), 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 a domain name in bad faith:

…

iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.

The evidence is that the Respondent (1) has adopted a confusingly similar domain name, (2) it has used the trade dress of the Complainant’s website, (3) it has given the Complainant’s physical address as its physical address, and (4) it has otherwise sought to attract users to its site by creating confusion between its site and the Complainant’s. It has clearly engaged in activity which seeks to use confusion over source of its site to attract for commercial gain customers of the Complainant. Its actions fulfil the bad faith requirements of Paragraph 4.b.(iv) of the Policy. As a result the activity is deemed to fulfil the bad faith use and registration requirements of paragraph 4(a)(iii).

The Panel therefore concludes that the Complainant has satisfied 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, <bayshoretrust.net > be transferred to the Complainant.

Dan Hunter
Sole Panelist

Date: February 21, 2005