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E-Committee Comitato di Coordinamento delle Infrastrutture per l’E-Banking v. Ivan Vogel [2005] GENDND 304 (19 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

E-Committee Comitato di Coordinamento delle Infrastrutture per l’E-Banking v. Ivan Vogel

Case No. D2005-0136

1. The Parties

The Complainant is E-Committee Comitato di Coordinamento delle Infrastrutture per l’E-Banking, Roma, Italy, represented by Studio Legale Bird & Bird Solicitors, Italy.

The Respondent is Ivan Vogel, Moskow, Russian Federation.

2. The Domain Names and Registrar

The disputed domain names <bankpassmobile.com>, <bankpassmobile.net>, <bankpassweb.com> and <bankpassweb.net> are registered with NameSecure.com (a VeriSign Co.)

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2005. On February 8, 2005, the Center transmitted by email to NameSecure.com a request for registrar verification in connection with the domain names at issue. On February 22, 2005, NameSecure.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. 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 February 25, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2005.

The Center appointed Christiane Féral-Schuhl as the Sole Panelist in this matter on April 5, 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 Complainant asserts, and provides evidence in support of, the following facts, which the Panel finds well established.

The Complainant is an Italian association created in 2000 by the Italian Banks Association, and counts for the time being more than 240 associated members among banks and credit institutes.

Since 2000, the Complainant promotes and offers to on-line sellers and consumers,

e-commerce and e-payment services through three different systems which allow secure transfer of money on the Internet, named as follows:

- BANKPASS WEB;

- BANKPASS MOBILE;

- BANKPASS BOLLETTE.

The Complainant is the holder of the following Community trademark registrations in connection with e-commerce and e-payment services:

- “BANKPASS”, Community trademark registration No. 002297697, filed on July 12, 2001,

- “BANKPASS WEB”, Community trademark registration No. 002690915, filed on May 9, 2002,

- “BANKPASS MOBILE”, Community trademark registration No. 002690899, filed on May 9, 2002.

The Complainant is also the owner of the domain name <bankpass.it> since April 6, 2001.

On November 14, 2001, a company named Paymake registered the four disputed domain names with NameSecure.com. The administrative contact was Mr. Felice Nicola Covelli.

On November 28, 2001, and December 4, 2001, the domain names <bankpassweb.it> and <bankpassmobile.it> were respectively registered by Mrs. Savina Emma Nugnes and Mr. Francesco Covelli.

On February 27, 2003, the Complainant sued Mrs. Savina Emma Nugnes and Mr. Francesco Covelli before the Court of Trani in order to declare that the registration and use of the domain names <bankpassweb.it> and <bankpassmobile.it> constitute an infringement of the Complainant’s exclusive rights.

On May 26, 2003, the Complainant sued Paymake before the Court of Trani in order to declare that the registration and use of the four disputed domain names constitute an infringement of the Complainant’s exclusive rights.

On June 17, 2003, the Complainant concluded two settlement agreements with Paymake and Mr. Felice Nicola Covelli on one hand, and with Mr. Felice Nicola Covelli on the other hand who acted on behalf of Mrs. Savina Emma Nugnes and Mr. Francesco Covelli on the other hand, the object of both agreements being the transfer for free of all the domain names to the Complainant.

The domain names <bankpassweb.it> and <bankpassmobile.it> have been duly transferred to the Complainant.

The four disputed domain names were never transferred to the Complainant and are now held by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are without doubt identical and/or confusingly similar to the numerous national and Community registered and common law marks owned by the Complainant since early 2001.

The Complainant further alleges that the Respondent has no rights to, or legitimate interests in the disputed domain names on the following grounds:

- the express association by the Respondent of the terms bank, pass, with the term web and/or with the term mobile in the disputed domain names certainly shows that the Respondent perfectly knew the Complainants trademarks and services;

- the Complainant never granted any license to the Respondent to use the Complainants trademarks;

- the Respondent is not commonly known by the disputed domain names;

- the Respondent does not make a legitimate non-commercial use of the disputed domain names since all these domain names redirect to pornographic websites selling pornographic products and services.

The Complainant finally asserts that the disputed domain names have been registered and are used in bad faith on the following grounds:

- either the disputed domain names have been registered by the Respondent after the conclusion of the settlement agreement with Mr. Covelli in violation of Mr. Covellis undertakings, or, since the Whois records indicate that all the disputed domain names have been registered on November 14, 2001, which was the date of registration by Paymake, the real registrant of the disputed domain names is still M. Covelli;

- the contact information given by the Respondent in the Whois record is inaccurate;

- the fact of using the fanciful word bankpass in association with the terms web and mobile primarily designed for innovative services strictly connected to e-commerce and e-payment, in a pornographic context cannot be considered as a good faith use of the disputed domain names,

- such registration and use of the disputed domain names prevent the Complainant from reflecting its trademarks in corresponding domain names and tarnish the Complainants existing trademarks and business.

B. Respondent

The Respondent did not reply to the Complainants contentions.

6. Discussion and Findings

The Panel’s findings under each heading with reference to the parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law are the following:

A. Identical or Confusingly Similar

The Complainant has proven that it owns the trademarks BANKPASS, BANKPASSWEB and BANKPASSMOBILE in respect of e-commerce and e-payment services.

The disputed domain names are undisputedly identical to the Complainant’s trademarks. The suffixes “.com” and “.net” are incidental to domain names and cannot serve to distinguish them.

The Panel therefore finds that the action brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(b)(ii), the Complainant must demonstrate that the Respondent has no rights to, or legitimate interests in the disputed domain names, being specified that paragraph 4(c) of the Policy explains how the Respondent may demonstrate its rights to and legitimate interests in the disputed domain names.

The Respondent did not submit any Response and evidence proving its rights or legitimate interests in the disputed domain names, while it had been given the opportunity to do so pursuant to paragraph 4(c) of the Policy.

The Panel notes in the Complaint and the evidence produced by the Complainant, which have not been challenged by the Respondent, that:

(i) all the disputed domain names redirect Internet users to a pornographic website named “BlackOnBlondes.com” selling pornographic products and services. The words that constitute these disputed domain names refer with no doubt to banking services and have nothing to do with pornographic products or services. As stated in the decision Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079, “[…] While […] many adult sex sites are perfectly legal and constitute bona fide offerings of goods or services, the use of somebody elses trademark as a domain name (or even as a meta-tag) clearly does not constitute a bona fide offering of goods or services when the website owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark.”;

(ii) the Complainant has never granted to the Respondent any license to use the Complainants trademarks and given the use made by the Respondent of the disputed domain names and the name of the Respondents website, there is little doubt that the Respondent has never been commonly known in the normal course of business by the trademarks or domain names bankpassweb and/or bankpassmobile;

(iii) by requiring Internet users to pay a fee, the Respondent is clearly making a commercial use of the disputed domain names. Furthermore, by redirecting Internet users to a pornographic website, there is a clear intent from the Respondent not only to misleadingly divert consumers but also to tarnish the Complainant’s trademarks.

As a result, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy are fulfilled.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Respondent has registered and is using the four disputed domain names in bad faith.

With regard to the registration in bad faith of the disputed domain names, according to the Complainant’s assertions and evidence which have not been challenged by the Respondent and which the Panel finds well established:

- the Respondent became the holder of the four disputed domain names end of 2003 in violation of a settlement agreement concluded by the Complainant with the initial registrant of the disputed domain names and the administrative contact, i.e. the company Paymake and Mr. Covelli,

- the contact information given by the Respondent is inaccurate, in violation of paragraph 2(a) of the Policy,

- at the time the Respondent became the holder of the disputed domain names, the Complainant was the owner of the trademarks “BANKPASS”, BANKPASS MOBILE and BANKPASS WEB; the association of the words bank, pass and web or mobile in a domain name is not common and enables the Panel to find that the Respondent had a knowledge of the Complainants trademarks,

- finally, given the type of website that the Respondent exploits, i.e. a pornographic website, the Panel can’t see any plausible explanation regarding the registration, by the Respondent, of domain names that expressly refer to banking services, while the Respondent’s website is names BlackOnBlondes.

With regard to the use in bad faith of the disputed domain names, the Panel finds well established that these domain names are used by the Respondent to redirect Internet users to a pornographic website. Such use by the Respondent of the Complainants trademarks as domain names creates a likelihood of confusion with Complainants trademarks, thus attracting Internet users who were not looking for a pornographic website but for the Complainants e-commerce and e-payment services, in a misleading manner and for commercial gain as Internet users must pay a fee for further navigation on the Respondents website. As held in various decisions (Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860; Bass Hotels & Resorts, Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568), the mere diversion of domain names to a pornographic website, whatever the motivation of the Respondent, is in and of itself certainly consistent with the finding that the disputed domain names were registered and are being used in bad faith.

As a result, the Panel finds that the four disputed domain names have been registered and are used in bad faith by the Respondent and that the requirements of paragraph 4(a)(iii) of the Policy are fulfilled.

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 names, <bankpassweb.com>, <bankpassweb.net>, <bankpassmobile.com> and <bankpassmobile.net> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist

Dated: April 19, 2005