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Finter Bank Zürich v. N/A, Charles Osabor [2005] GENDND 1783 (17 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Finter Bank Zürich v. N/A, Charles Osabor

Case No. D2005-0871

1. The Parties

The Complainant is Finter Bank Zürich, of Zurich, Switzerland, represented by CMS von Erlach Klainguti Stettler Wille, Switzerland.

The Respondent is N/A, Charles Osabor, of Nassau, BH n/a, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <finteronline.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2005. On August 16, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On August 17, 2005, Tucows 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 Complainant filed an amendment to the Complaint on August 31, 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 August 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2005.

The Center appointed José Mota Maia as the sole panelist in this matter on October 3, 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

The Finter Bank Zürich is a well-known private banking institution in Switzerland, which owns the following trademarks: Swiss trademark Nº P-418617 “FINTER BANK ZÜRICH”, registered on September 12, 1995; Swiss picture-combination trademark Nº P-418634, registered on September 12, 1995; Swiss picture-combination trademark Nº P-427141, registered on June 21, 1996; International trademark Nº 645522 “FINTER BANK ZÜRICH”, registered on September 12, 1995, for Austria, Benelux, Germany, Spain, France, Liechtenstein and Portugal.

On the Internet, Complainant can be reached under the domain names <finter.ch> and <finter.bs>.

The above mentioned registrations precede the Respondent’s registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

Complainant asserts that Respondent’s domain name <finteronline.com> is identical and confusingly similar to its registered trademarks “FINTER BANK ZÜRICH”.

Complainant also contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant, Respondent appears to be seeking to obtain the users’ names and passwords of the mistaken Complainant’s clients that have accessed the Respondent’s website.

Finally, Complainant asserts that Respondent has registered and is using the domain name <finteronline.com> in bad faith. It appears obvious to Complainant that Respondent registered the Domain Name for the sole purpose of trading on the goodwill associated with Complainant’s trademarks and misleading the public into believing that Respondent’s website at the Domain Name is affiliated with Complainant.

B. Respondent

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

6. Discussion and Findings

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

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant.

Paragraph 15(a) of the Rules addresses the principles to be used in rendering a decision:

“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.”

Consequently, failure on the part of a respondent to file a response to the complaint allows the panel to base its decision on the complainant’s supported assertions. It may also permit a panel to infer that the respondent does not deny the facts which the complainant asserts nor the conclusions, which, according to the Complainant, can be drawn from those facts. See Harrods Limited v. Harrod’s Closet, WIPO Case No. D2001-1027. See Southcorp Limited v. Frontier Direct Pty Ltd, WIPO Case No. D2004-0949, concerning <penfoldsgrange.net>; or ACCOR v. ACCOR Tours, WIPO Case No. D2004-1001, concerning <accortours.com>.

A. Identical or Confusingly Similar

In order to decide this case, Complainant must establish:

- its trademark rights,

- the identity or confusing similarity between the disputed domain name and its trademark.

As far as the trademark rights are concerned, the Panel is of the opinion that Complainant has provided sufficient evidence of its registered rights to the mark “FINTER BANK ZÜRICH” in Switzerland, Austria, Benelux States, Germany, Spain, France, Liechtenstein and Portugal, which is sufficient for the purposes of the first element of paragraph 4(a) of the Policy.

As far as the identical or confusing similarity between the domain name <finteronline.com> and the trademark is concerned, it appears that the Domain Name includes in its entirety the distinctive element of Complainant’s trademark. The disputed domain name differs from the trademark due to the addition of the generic term “online” and of the top level domain “.com”.

Regarding the addition of the term “online”, the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily permit to distinguish the domain name from a trademark. See Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. 2005-0037.

Regarding the addition of the generic top level domain “.com”, it is now well established that the gTLD “.com” is of no significance when determining whether or not a domain name is identical or confusingly similar to a trademark or service mark. Such addition is required by the characteristics of the Internet.

For these reasons, the Panel concludes that there is confusing similarity between the disputed domain name and Complainant’s trademarks.

Therefore, the condition set out in paragraph 4(a)(i) of the Policy has been met by Complainant.

B. Rights or Legitimate Interests

The Policy, paragraph 4(c)(i) provides:

“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 non-commercial 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.”

Complainant asserts that it has not authorized Respondent to use its distinctive mark “FINTER BANK ZÜRICH”, Respondent is not an authorized distributor nor has it been licensed to use the Complainant’s marks. Respondent has no connection or affiliation with Complainant.

Use or demonstrable preparation to use the domain name in connection with a bona fide offering (See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306): Respondent has not complied with this requirement.

Respondent is not known under the name “Finter” or “Finter Bank International”. Respondent’s website is likely to mislead the consumers into believing the site is operated or endorsed by or affiliated with Complainant. The site creates an impression that it is an official site of Complainant. Respondent apparently intends to attract Internet user’s to its website in order to obtain client’s access login and passwords.

Therefore, the Panel finds that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by Complainant.

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.

It should be noted that the circumstances of bad faith are not limited to the above. The Panel underlines that bad faith has to be found in both registration and use of the domain name.

As evidenced by the content of Respondent’s website and the particular interest the Respondent seems to show in Complainant’s activities, Respondent is aware of the existence of the Complainant.

Respondent appears to have no legitimate interests in the disputed domain name. The Panel is of the opinion that Respondent registered the domain name <finteronline.com> with the intention to divert Internet users and to gain access to user names and passwords of the Complainant’s clients through mistaken login to Respondent’s website.

Indeed, the Respondent appears to be using the web page for “phising”. “Phising” is sometimes described as the fraudulent acquisition, through deception, of sensitive personal information such as passwords and credit card details, by masquerading as someone trustworthy with a real need for such information. The panel in CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251 noted: “The Panel agrees with the Complainant that the Respondent’s motive must be to somehow cash in on the personal data thus obtained. This is a violation of the bad faith registration and use provisions of the Policy at paragraph 4(b)(iv): “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”. (See The Coryn Group, Inc. and Apple Vacations East, Inc. v. Azra Khan, WIPO Case No. D2003-0655). The Respondent’s actions may also well be a crime, but the Panel believes any possible criminal aspect of the Respondent’s conduct lies beyond the bounds of the UDRP. (For example, the panel in Halifax plc v. Sontaja Sanduci, WIPO Case No. D2004-0237 found that phishing was “not just evidence of bad faith but possibly suggestive of criminal activity.”)

Furthermore, the fact that Respondent agreed to sell the domain name <finteronline.com> by e-mail sent on August 27, 2005, is a further indication of bad faith.

Therefore, the Panel finds that the conditions set out in paragraph 4(a)(iii) of the Policy have been met by Complainant.

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 <finteronline.com> be transferred to the Complainant.

José Mota Maia
Sole Panelist

Dated: October 17, 2005