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Associazione Bancaria Italiana (ABI) v. Secured Assets Corporation [2005] GENDND 529 (2 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Associazione Bancaria Italiana (ABI) v. Secured Assets Corporation

Case No. D2005-0319

1. The Parties

The Complainant is Associazione Bancaria Italiana (ABI), Rome, Italy, represented by Barzanò & Zanardo Roma SpA, Italy.

The Respondent is Secured Assets Corporation, Wilmington, Delaware, United States of America.

2. The Domain Names and Registrar

The disputed domain names <bancomat.biz> and <bancomat.org> are registered with Go Daddy Software

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2005. On March 29, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On March 30, 2005, Go Daddy Software 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 April 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2005.

The Center appointed Gerd F. Kunze as the sole panelist in this matter on May 19, 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 represents, defends and promotes the interests of its member banks and financial intermediaries. In order to facilitate the development of the electronic card payment market in Italy, it formed in 1995 an associated organization “Convenzione per la Gestione del Marchio Bancomat” (Convention for the management of the trademark Bancomat), abbreviated as CO.GE.BAN.

In the context of this activity the Complainant on March 15, 1995, filed in Italy an application for registration of the trademark BANCOMAT, registered on October 24, 1997, and renewed on March 15, 2005, for services of class 36 of the international classification (including insurance, financial affairs, monetary affairs, real estate affairs). This trademark is licensed for its exclusive use to CO.GE.BAN.

Furthermore, the Complainant registered the following domain names: <bancomat.com>, <bancomat.net>, <bancomat.info>, <bancomat.it>. All these domain names are used under license by CO.GE.BAN, in order to direct users to its home page, where information about the products and services that are distinguished by the trademark BANCOMAT is given.

In the year 2004 the Respondent registered the domain names <bancomat.biz> and <bancomat.org>. These domain names lead to a website provided by the Registrar Go Daddy Software, where the Registrar’s services are advertised. The websites bear with reference to the respective domain names the statement: “coming soon”.

5. Parties’ Contentions

A. Complainant

The Complainant submits that (A) the domain names <bancomat.biz> and <bancomat.org> are identical to a trademark in which it has rights; (B) the Respondent has no rights or legitimate interests in respect of the domain name; (C) the domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain names <bancomat.biz> and <bancomat.org> are identical to the Complainant’s trademark BANCOMAT (the gTLDs .org and .biz cannot be taken into consideration when judging identity or similarity).

B. Rights or Legitimate Interests

The Complainant submits that “bancomat” is a lexical invention with no intelligible meaning in the English language. Whilst the Panelist is aware that in Switzerland the term “bancomat” is commonly used as synonym for cash dispenser machines, the Panelist agrees that in the United States it is virtually unknown and that in the English language it has no descriptive meaning (in the United States the corresponding machines are referred to as ATM cash dispensers). Consequently, the Respondent cannot have an interest in using this term in a descriptive manner in the United States, where it is located.

The Complainant and its exclusive licensee have not consented to the Respondent’s use of the domain names <bancomat.biz> and <bancomat.org>. Furthermore, there is no evidence that the Respondent has used the domain names. Apparently, it has simply parked them on the Registrar’s website with the mentioning “Coming soon”. According to the evidence submitted by the Complainant, the statement “coming soon” has been shown at least since April 2004 for the domain name <bancomat.org> and since July 2004 for the domain name <bancomat.biz>. Failing submissions and evidence to the contrary by the Respondent, this confirms the submission of the Complainant that the Respondent has no intention to use these domain names. Therefore the Panel is satisfied that none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent does not use (commercially or non-commercially) the domain names and has not demonstrated any preparations to use them, and it has not been commonly known by the domain names. In WIPO Case No. D2000-0004, Mondich v. Brown, the Panel decision held that "It is a general principle of United States law that the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts". This statement has been confirmed, amongst others, in the decisions Alcoholics Anonymous World Services Inc. v. Lauren Raymond, WIPO Case No. D2000-0007 and Metabolife International v. Robert Williams WIPO Case No. D2000-0630. Indeed, the Respondent's silence allows the interference that any evidence of the Respondent would not have been in his favor.

The Panel concludes in application of paragraph 14(b) of the Rules that the Respondent has failed to submit any circumstances to demonstrate rights to or legitimate interest in the domain names as requested under paragraph 4(c) of the Policy. The Panel is therefore satisfied that the Respondent has no rights or legitimate interests in respect of the domain names.

C. Registered and Used in Bad Faith

The Respondent does not actively use the domains names <bancomat.biz> and <bancomat.org> and hit never offered them to the Complainant for sale. It has therefore to be considered whether the simple registration and stockpiling of the domain names may, taking into account all circumstances of the case, be considered to be registration and use in bad faith. Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.

In that context, it has been convincingly argued in Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003, that inaction of the Respondent is within the concept of paragraph 4(a)(iii) of the Policy.

(i) Registration in bad faith

Similarly to the Telstra case, there exists a problem as to the identity of the Respondent. As evidenced by the Complainant, on May 4, 2004, it sent a cease and desist letter to the Respondent’s address, as listed in the Whois database (and as confirmed as address of the Registrant in the Registrar’s verification response to the Center). However, the letter was returned with the explanation: “Not at this address”. Failure to update its address amounts to a breach of clause 3 of the Domain Name Registration Agreement concluded by the Respondent with Go Daddy Software.

Furthermore, the Panelist is satisfied that the Respondent was aware of the Complainant’s trademark and of its use of domain names consisting of this trademark when choosing the domain names <bancomat.biz> and <bancomat.org>. This conclusion can be drawn from the fact that it chose amongst the most common gTLDs exactly those that were not already registered in the name of the Complainant (who is the registered owner of the domain names <bancomat.com>, <bancomat.net> and <bancomat.info>).

(ii) Use in bad faith

The present case distinguishes itself from the Telstra case in as much as the Respondent does not simply stockpile the domain names <bancomat.biz> and <bancomat.org>. It uses them in order to redirect users to a website offered by the Registrar Go Daddy with the apparently wrong statement “coming soon”. In that context the Complainant correctly points out that this website that is advertising services of the Registrar is also a host to a domain name reseller company.

The Complainant furthermore submits that, in addition to the original cease and desist letter that was mailed to the address indicated by the Respondent and was returned, the Complainant also sent this cease and desist letter by fax (the transmission report is attached to the Complaint). The Respondent never replied to this fax and the Complainant rightly points out that this is another element of bad faith of the Respondent.

Taking into account all circumstances of the case the Panelist is satisfied that the sum of the following elements justifies the conclusion that the Respondent registered and is using the domain names <bancomat.biz> and <bancomat.org> in bad faith:

- The address listed in the registration agreement is incorrect; the cease and desist letter that the Complainant sent by mail to this address was therefore returned;

- The Respondent never replied to the cease and desist letter that the Complainant sent to it by fax;

- The Respondent directs users who type the domain name <bancomat.biz> or the domain name <bancomat.org> to a website provided by the Registrar Go Daddy Software, where no information about “Bancomat cash dispensers” is given (as users would expect), but instead amongst others a domain names reseller company is listed; Consequently, such users are confused and deceived;

- On the websites reached by the domain names <bancomat.biz> and <bancomat.org> the statement “coming soon” has been placed for a period of time exceeding one year. Failing any submission of the Respondent this statement must be considered to be wrong. The Panelist is therefore satisfied that the Respondent has no intention to ever use these domain names;

- Absent any submission of the Respondent, it is therefore difficult to imagine any plausible future active use of the domain name by the Respondent that would not be illegitimate.

Taking into account these particular circumstances the Panel concludes that the Respondent’s passive holding of the domain name satisfies the requirements of paragraph 4(a)(ii) of the Policy that the domain name has been registered and is being used in bad faith.

The Panel is of course aware of the use of the term “bancomat” for cash dispensers in Switzerland. However, the Swiss Organization that has developed the Swiss system of cash dispensers under the name “Bancomat” is not a party to this dispute and it has apparently contented itself to use the Swiss ccTLD domain name <bancomat.ch> for its purposes of informing Swiss customers about the history of the Swiss Bancomat system and about the services that it is offering; it left it to the Complainant to register in addition to the ccTLD <bancomat.it> the term bancomat also in several gTLDs.

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 <bancomat.biz> and <bancomat.org> be transferred to the Complainant.

Gerd F. Kunze
Sole Panelist

Date: June 2, 2005