The Isle of Man Bank Limited v. GlobalUrls.com c/o Domain Director
Claim Number: FA0501000397692
PARTIES
Complainant
is The Isle of Man Bank Limited (“Complainant”),
42 St. Andrew Square, Edinburgh, EH2 2YE, United Kingdom. Respondent is GlobalUrls.com c/o Domain Director (“Respondent”), 44
Passeig De Gracia, Suite Ocho-C, Barcelona, EU 08007 ES.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <isleofmanbank.com>,
registered with 1 Enameco.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Paul
M. DeCicco as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 11, 2005.
On
January 17, 2005, 1 Enameco confirmed by e-mail to the National Arbitration
Forum that the domain name <isleofmanbank.com>
is registered with 1 Enameco and that the Respondent is the current registrant
of the name. 1 Enameco has verified
that Respondent is bound by the 1 Enameco registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
January 21, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 10, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@isleofmanbank.com by
e-mail.
A
timely Response was received and determined to be complete on February 10, 2005.
On February 23, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Paul M. DeCicco as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
contends as follows:
The
domain name is identical to the ISLE OF MAN BANK mark. Complainant has legitimate unregistered
trademark rights in the mark under the laws of passing off. Currently, the trademark is used for a vast
array of business and financial services, including the provision of electronic
communication systems for the purposes of conducting financial
transactions. These unregistered rights
are based upon the substantial reputation Complainant has generated in the ISLE
OF MAN BANK trademark. As Complainant’s
registered company name, the trademark has been in constant use by Complainant
since 1865.
Currently
Complainant trades under the “Isle of Man” name and employs over 350 staff
members. Complainant is the official
bank for the Isle of Man Government, and as such, has exclusive rights to the
ISLE OF MAN BANK trademark.
Additionally,
Complainant uses the trademark as its trade name for offering financial
services to the offshore banking sector, which extends its services to the
international banking community. Accordingly,
Complainant’s trademark has not only developed a substantial local reputation,
but also a respected and instantly recognizable reputation on an international
level.
Since
Complainant’s main service is its online banking service, it is highly likely
that customers will be misled to believe that Respondent’s registered domain
name is connected to Complainant’s business, as the domain name is wholly
comprised of Complainant’s trademark.
The use and registration of the confusingly similar domain name,
<isleofmanbank.co.uk>, by Complainant further increases this risk of
misrepresentation.
Accordingly,
the existence of such reputation and likelihood of misrepresentation will
result in dilution of Complainant’s trademark and damage to Complainant’s business. It is therefore evident that the
registration of Respondent’s domain name is clearly an act of passing off.
Respondent
has no legitimate interests in respect to the domain name. Respondent neither is currently a financial
institution, nor maintains commercial undertakings with the Isle of Man. Respondent is not in any way associated with
the Isle of Man Bank. This use and
reputation is evident in Complainant’s other domain name registrations
incorporating the ISLE OF MAN BANK trademark, namely, <iombank.com>,
<iombank.co.uk> and <isleofmanbank.co.uk>. Respondent’s interest in the domain name
could only be to divert or falsely mislead customers in order to tarnish the
reputation of the aforementioned trademark.
Since
registering the domain name in 2000, Respondent has made no attempt to use the
domain name. As a company which
operates to purchase and resell domain names, it can only be assumed that
Respondent has procured the domain name in bad faith primarily for the purpose
of selling, renting or otherwise transferring the domain name registration to
Complainant, who is the owner of the trademark, for valuable consideration in
excess of the Respondent’s documented out-of-pocket costs directly related to
the domain name.
B.
Respondent
Respondent
contends as follows:
The
<isleofmanbank.com> domain name is registered to GlobalUrls.com,
an entity located in Barcelona, Spain that has been located there for over four
years. The URL is managed and hosted
out of Miami, Florida in the United States.
Respondent
offered to transfer the domain name registration to Complainant for its
out-of-pocket expenses; the $3000 spent purchasing the domain name registration
from “James Cook” as well as annual
registrations fees of $23.97. Complainant declined to reimburse Respondent
for all costs associated with the domain name.
Complainant,
by its own admission, does not have a registered trademark for THE ISLE OF MAN
BANK. Complainant does not operate any
entity that is registered under the name “The Isle of Man Bank” in the United
States or Spain or has registered such name as a trademark. Natwest Financial, a related group, is the
registrant of <isleofmanbank.co.uk> and has no active website associated
with that domain name. Natwest
Financial does not have a trademark for “The Isle of Man Bank” either, nor has
it operated a website under this name.
The
<isleofmanbank.com> domain name has not, and does not mislead or
misrepresent to anyone that it is associated in any way with Complainant or
Natwest Financial, nor does it offer any financial products.
Complainant
claims that it has been in business since 1865 under the name “The Royal Bank
of Scotland.”
Respondent
is not in the business of purchasing, selling or reselling domain names.
Respondent
is still willing to transfer the <isleofmanbank.com> domain name
to Complainant as previously stated in communications with Miss DH Logan. In the event Complainant decides not to
reimburse Respondent, Respondent is willing to include a disclaimer on its home
page clearly denying any relationship with Complainant.
FINDINGS
Complainant has colorable trademark
rights in the ISLE OF MAN BANK mark.
The mark is identical to Respondent’s domain name.
Respondent is not commonly known as ISLE
OF MAN BANK and does not refute that it has no legitimate rights or interests
in the mark.
The totality of the circumstances
surroundings Respondent’s registration and use of the domain name, as well as
its dealing with Complainant and this Panel, shows that the domain name was
registered and used in “bad faith.”
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be cancelled
or transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
Complainant asserts that the ISLE OF MAN
BANK mark has been used since 1865 for an array of business and financial
services, including electronic communication systems for the purposes of
conducting financial transactions.
Respondent fails to persuasively rebut the proposition that the ISLE OF
MAN BANK mark is either inherently distinctive or has acquired secondary
meaning. The Panel therefore may
conclude that Complainant has established common law rights in the mark. See Restatement
(Third) of Unfair Competition § 13, pp. 37-38, and Comment a
(Tent. Draft No. 2, Mar. 23, 1990); see
also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17,
2000).
Respondent does not attempt to refute
that its domain name is identical to Complainant’s mark. Moreover, it is well established that top-level domains, such as “.com,” are
immaterial in determining whether a domain name and mark are confusingly
similar pursuant to paragraph 4(a)(i) of the Policy. See Kioti Tractor Div. v. O’Bryan
Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003). Given the forgoing, Complainant has
sustained its burden and has established that it has rights in a mark that is
identical to Respondent’s domain name.
Respondent is
not authorized to use Complainant’s ISLE OF MAN BANK mark as a domain
name. See Telstra Corp. v.
Nuclear Marshmallow,
D2000-0003 (WIPO Feb.18, 2000). Respondent
makes no claim of right to the ISLE OF MAN BANK mark or any variant thereof and
there is no evidence in the record showing that Respondent is commonly known by
the mark.
Nor does Respondent claim that it has
taken any steps to use the domain name in commerce or otherwise. Respondent
is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the
Policy, nor a legitimate noncommercial or fair use pursuant to paragraph
4(c)(iii) of the Policy. Moreover,
Respondent’s passive holding of the domain name without any explanation of why
it is being held, additionally supports a conclusion that Respondent does not
have rights or legitimate interests in the domain name.
See Not My Kid, Inc. v. Sawchak,
FA 167978 (Nat. Arb. Forum Sept.
23, 2003).
Complainant argues that Respondent has
demonstrated bad faith registration and use of the disputed domain name by
passively holding the name for over five years. Prior Panels have found that that merely holding an infringing
domain name without active use can constitute use in bad faith. See DCI
S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000); see also Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000).
Complainant also concludes that
Respondent’s “bad faith” falls under paragraph 4(b)(i) of the Policy because
Respondent is attempting to sell the disputed domain name registration for
$3,023.97. In its defense, Respondent
claims that the domain was purchased from a third party as part of a larger
transaction for a total of $3,000. Respondent claims to have incurred an
additional three years worth of annual fees totaling $23.97. Therefore, Respondent asserts that its
out-of-pocket expenses total $3,023.97.
If true, Respondent’s offer shows that it did not act in “bad faith”
since the Policy makes an allowance for transfers where compensation does not
exceed the registrant’s costs. However,
the only evidence supplied by Respondent in support of its costs is an email
that incorporates Respondent’s own statement regarding the claimed purchase
transaction. Paragraph 4(b)(i) of the
Policy requires the expenses incurred by Respondent to be “documented.” Therefore, it is dubious that Respondent
actually paid any money for the domain name outside of required registration
fees. The Panel may thus find that
Respondent is in violation of paragraph 4(b)(i) of the Policy. See Tech. Prop., Inc v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14,
2000).
“Bad faith” under the Policy 4(a)(iii)
may constitute any of the specifically enumerated acts as well as other
non-specific indicators of “bad faith.” In the instant case, there is an obvious attempt by Respondent to
conceal or confuse its true identity as well as its purpose in acquiring and
holding the disputed domain name. Upon
reviewing the submissions by Respondent, any suggestion of the nature of
Respondent’s business is conspicuously absent.
The domain name registration record lists Respondent as being in
Barcelona, Spain, yet the physical contact information given to the Panel lists
a Florida, U.S. address. In
correspondences with Complainant, Respondent signed emails only as
“David.” “David’s” identity and
relation to the nominal Respondent is unclear.
Moreover, his email appears to have originated from a domain name other
than the nominal Respondent’s domain name.
No telephone number is given for the nominal Respondent or for
“David.” Furthermore, Respondent’s
terse one page website lacks any information whatsoever regarding the nature of
its business except for an obtuse reference to “domain name management.”
The only online contact information for
the business is via an email address: www.globalurls.com (March 3, 2005). Indeed, the Response lacks a proper signature. The document
indicates only that Respondent’s “Domain Director” submits it. That such shadowy conduct may indicate bad
faith on the part of a registrant is not a novel concept. Notably 15 U.S.C.
§1125(d)(B)(i)(VII) states that:
“the person's provision of material and
misleading false contact information when applying for the registration of the
domain name, the person's intentional failure to maintain accurate contact
information, or the person's prior conduct indicating a pattern of such
conduct; [may be considered in determining whether a defendant in an action
brought pursuant to the Anticybersquatting Consumer Protection Act, acted in
bad faith.]”
Additional evidence of Respondent’s
less-than-candid tact appears elsewhere in Respondents papers. Respondent claims it purchased the disputed
domain name for $3000 from one “James Cook”
(the fact that Respondent presents no direct evidence of the putative
transaction between Respondent and “James Cook” is discussed in detail
above). However Respondent’s admission
that it purchased the domain name, whether true or false, contradicts
Respondent’s statement that it is “not in the business of
purchasing, selling, or reselling domain names.” This “flip flop” by Respondent shows “bad faith” in dealing with
the Panel, and may be imputed to show Respondent’s bad faith registration and
use of the domain name.
With regard to Respondent’s bad faith,
each fact is suggestive in itself.
Together the facts have a cumulative force. Thus while any of the indications of bad faith discussed above
might be sufficient to lead the Panel to conclude that Respondent acted in bad
faith in registering and using the disputed domain name, in the aggregate there
can be no mistake that Respondent is violation of Policy ¶ 4(a)(iii).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <isleofmanbank.com>
domain name be TRANSFERRED from Respondent to Complainant.
Paul Michael DeCicco, Panelist
Dated: March 9, 2005
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