Commonwealth
Bank v. Michael Rauch
Claim Number: FA0112000102729
PARTIES
The Complainant is Commonwealth Bank of Australia of Sydney, Australia (“Complainant”) represented by Sharon Pollock. The Respondent is Michael Rauch of Neuss, Germany (“Respondent”).
The domain name at issue is <cominvest.biz>, registered with Speednames, Inc.
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.
Alan L. Limbury as Panelist.
Complainant filed a Start-up Trademark Opposition Policy (“STOP”) Complaint, having filed an Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on December 5, 2001; the Forum received a hard copy of the Complaint on January 14, 2002.
On January 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 7, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on February 5, 2002.
On February 18, 2002, pursuant to STOP Rule 6(b), the Forum appointed Alan L. Limbury as the single Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
A. Complainant
Complainant carries on business as the provider of investment and financial products and services in Australia. It is the proprietor of Australian Registered Trade Mark No. 856896 COMMINVEST, registered on 13 November 2000.
Complainant intends to use the trademark COMMINVEST throughout Australia as a common law trademark to identify and promote its investment and financial products. This trademark will be launched later this year.
Respondent registered <cominvest.biz> with Speed Names Inc. on or about 19 November 2001. The domain name <cominvest.biz> was registered with NeuLevel by way of a .biz registration agreement, under which Respondent represented and warranted to Neulevel that registration of <cominvest.biz> did not and would not breach any third party rights.
The .biz gTLD domain is built “to conduct business”. The whois.biz name search indicates that Respondent is an individual and does not appear to operate under a company.
As the domain name is substantinally identical to comminvest it is phonetically the same and on a visionsal [sic] representation cominvest is confusingly similar to comminvest.
As the domain name is very similar to the domain name <comminvest.biz> it is the URL strategy of Complainant to register all domain names similar to core brand domain names as a defensive measure.
It is likely that after the launch of the new core trademark Comminvest, registration of <cominvest.biz> by Respondent will indicate to Australian consumers that the <cominvest.biz> domain name is connected with Complainant.
For these reasons, Complainant has a better right to <cominvest.biz> than Respondent. Respondent does not have any rights or legitimate interests with respect to <cominvest.biz> and Respondent has infringed and continues to infringe Complainant's registered trademark in contravention of the Trade Marks Act (Australia).
As a result of Respondent's infringement of the trademark, Complainant's rights have been adversely affected.
B. Respondent
The domain name <cominvest.biz> does not match the exact alphanumeric string contained in the trademark COMMINVEST in which Complainant has rights.
Respondent is the beneficiary of a trademark that is identical to the domain name. Respondent is a computer expert employed by CommerzLeasing und Immobilien AG, a wholly owned subsidiary of the well-known Commerzbank AG, one of the leading German banks. CommerzLeasing und Immobilien AG is owner of the German registered trademark COMINVEST identically matching the domain name string. The application was filed on December 27, 2000 and the mark was registered under number 30094184 on August 24, 2001.
CommerzLeasing und Immobilien AG, as owner of the trademark COMINVEST, authorized Respondent, as its representative and at its expense, to register the domain name <cominvest.biz> so as to introduce a new company name in respect of its European alignment and changed products and services. The registration application was filed on April 19, 2001 and the domain name was registered on November 19, 2001. At the same time other employees of CommerzLeasing und Immobilien AG were authorized to register the domain names “cominvest” and/or “com-invest” under the TLDs “ag”, “tv”, “com”, “de”, “org”, “net”, and “info”. The registration was done by employees in order to maintain secrecy for the company. In acting for his employer as principal, Respondent did not register or use the disputed domain name in bad faith.
There is no competition between the parties, nor between Complainant and CommerzLeasing und Immobilien AG since Complainant states that it intends to use the trademark COMMINVEST throughout Australia whereas CommerzLeasing und Immobilien AG primarily focuses on the European market.
The disputed
domain name is not identical to the trademark in which Complainant has rights.
Accordingly Complainant has no standing to file this STOP Complaint, which must
be dismissed.
Paragraph
15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
The requirement of STOP paragraph 4(a)(i) that “your domain name is identical to a trademark or service mark in which the Complainant has rights” is expressed in the same words as are found in the corresponding paragraph of the UDRP. [The alternative requirement of the UDRP, confusing similarity, is not a requirement of STOP]. However, the meaning of “identical” under STOP is not the same as under the UDRP. Many UDRP cases have held that it is sufficient for a Complainant to establish virtual or substantial identity: see, for example, The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc., D2000‑0113 (WIPO Apr. 13, 2000), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., D2000-0802 (WIPO Sept. 9, 2000); Nokia Corporation v. Nokiagirls.com a.k.a IBCC, D2000-0102 (WIPO Apr. 18, 2000) and Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000).
Under STOP, however, a Complaint may not be filed unless the domain name in dispute
identically matches the exact alphanumeric string contained in a trademark or
service mark in which the Complainant has rights and for which the Complainant
has registered an Intellectual Property (IP) claim form: see STOP paragraph 1;
the IP Claim Service Terms of Use, paragraphs 1 and 4 and the definitions of
“Claimant” and “Complainant” in paragraph 1 of the STOP Rules.
Accordingly,
every STOP proceeding, properly brought, should necessarily involve a disputed
domain name that (apart from the “.biz” gTLD, which must be disregarded) is
strictly identical to a trademark or service mark in which a Complainant
asserts rights.
Here, Complainant has provided evidence of rights to its COMMINVEST mark, but has submitted a claim for the <cominvest.biz> domain name. Because <cominvest.biz> does not match the exact alphanumeric string in the COMMINVEST mark to which the Complainant has rights, Complainant has failed to meet this threshold requirement of the STOP Policy. As a result, Complainant has no standing to bring this Complaint.
Complainant does not have rights in
a trademark that is identical to the disputed domain name.
Respondent has demonstrated that, as agent for his employer, the owner of the German registered trademark COMINVEST, he registered the disputed domain name to facilitate an extension of his employer’s business and in order to maintain secrecy at the time. Respondent has thus demonstrated a legitimate right to the disputed domain name.
There is no evidence of bad faith registration or use.
DECISION
The Complaint is not within the scope of paragraph 4(a) of the Policy and is dismissed.
Pursuant to paragraph 4(l)(ii)(2) of STOP, the Panel decides that, because the Respondent has demonstrated legitimate rights to the disputed domain name, no subsequent challenges under this Policy against the domain name that is the subject of this decision shall be permitted.
Alan L. Limbury, Panelist
Dated: February 23, 2002
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