ING Groep N.V. v. ingdesign communications c/o Jonathan Ing
Claim Number: FA1009001344862
PARTIES
Complainant is ING Groep N.V. (“Complainant”), represented by Joel D. Leviton, of Fish & Richardson P.C., P.A., Minnesota, USA. Respondent is ingdesign communications c/o Jonathan Ing (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ingmortgage.com>, registered with Easyspace Ltd.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 3, 2010.
On September 9, 2010, Easyspace Ltd confirmed by e-mail to the National Arbitration Forum that the <ingmortgage.com> domain name is registered with Easyspace Ltd and that the Respondent is the current registrant of the name. Easyspace Ltd has verified that Respondent is bound by the Easyspace Ltd 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 September 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ingmortgage.com. Also on September 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 23, 2010.
A timely Additional Submission from Complainant was received and determined to be complete on September 28, 2010.
A timely Additional Submission from Respondent was received and determined to be complete on September 29, 2010.
On October 12, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honorable Neil Anthony Brown QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain name <ingmortgage.com> should be transferred to it because it can make out each of the three criteria prescribed under paragraph 4(a)(i)-(iii) of the Policy. Complainant maintains, first, that the domain name <ingmortgage.com> is confusingly similar to Complainant’s many registered trademarks for ING and ING BANK & Design registered with the United States Patent and Trademark Office (“USPTO”) and internationally (“the ING mark”). Complainant contends that the domain name is confusingly similar to the ING mark because it consists of the mark with the addition only of a generic word that describes one of the well known businesses of Complainant.
Complainant then argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the name <ingmortgage.com>, has not used the domain name in connection with a bona fide offering of goods or services, is not making a non-commercial or fair use of the domain name, and has not used it for any legitimate purpose. Moreover, Respondent has clearly registered and used the domain name as a brazen attempt to extract money from Complainant because of the coincidence between his surname and the name of Complainant.
Thirdly, Complainant contends that the disputed domain name was registered and is being used in bad faith because it is clear on the evidence that Respondent registered the domain name with the intention of selling it for a large sum of money, registered it many years after Complainant acquired trademark rights in ING, and also, because having registered it, Respondent engaged in impermissible passive holding of the domain name.
B. Respondent
(i) The domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
ING is not known as ingmortgage, ING does not use the term ingmortgage and its main domain is <ing.com> which resolves to a website at www.ing.com.
The ING name is an abbreviation, and is always capitalized. The legal name for the parent company of the ING group is ING Groep N.V. and the ING website explains why this is so.
ING also uses “ING direct” as its consumer facing platform. Mortgages are one of the offerings on this platform. The trademark/service mark is ING direct and never “ING mortgage” or “ing mortgage”.
The Respondent then contends that <ingmortgage.com> is absolutely distinct from <ingdirect.com> and the “ING direct” mark.
The fact that ING did not seek to register <ingmortgage.com> from the outset does suggest that it was not initially considered a relevant address by ING. Nor did ING seek to prevent this registration.
(ii) The Respondent should be considered as having rights or legitimate interests in respect of the domain name that is the subject of the Complaint.
Respondent’s full name is “Jonathan Greville Ing.” Ing is the Respondent’s surname given
From birth; there is no suggestion that the Respondent changed his name. Clearly the
Respondent’s family name pre-dates, by several centuries, the decision of ING to change its
name in the early 1990s.
Respondent registered the domain name <ingmortgage.com> because it followed logically
from his current business name, ingdesign. The Respondent intends to extend the scope of his
business to include financial services. The Respondent has prepared a business plan for these
activities. The Respondent wishes to resolve the outcome of these proceedings before incurring
significant costs in the implementation of his business plan.
Respondent does not wish to disclose the business plan in these proceedings because of the
commercial sensitivities involved.
Respondent has no intention to divert traffic from ING. The Respondent intends to take active steps to make it clear that he is not connected to ING. Possible related undertakings are discussed in further detail below.
Respondent notes the English Court of Appeal case, Asprey & Garrard Ltd v WRA (Guns) Ltd and Anor. (A.C. 2001), which although is not binding in these proceedings has some relevance, because the judgment identifies elements that are considered in the use of an “own-name defence”. Respondent maintains that he should be able to use his own name, and identifies three key points from the judgement. The key points in that case can be distinguished because:
a) Respondent has not, and will not be trading in a confusingly similar location;
b) Respondent will not be trying to capitalize on any accumulated goodwill in the brand ING and is willing to give undertakings to prevent this (see below);
c) These proceedings do not arise subsequent to any contract or agreement entered into between Respondent and ING. ING has neither offered for, nor completed an acquisition of, Respondent’s business and there is absolutely no history of any course of dealing between the parties.
All of these points reinforce the position that prima facie the Respondent has the right to trade under his own name, and therefore to use a domain name based upon his own name.
(iii) The domain name was not registered and used in bad faith.
Respondent registered the name because he identified it had the potential to be useful to him; it contained the element of his given surname. Respondent’s given surname is already used in analogous fashion for an existing business and its domain name.
ING did not oppose the registration of the domain by Respondent. Respondent has in no way used the trademarks ING or ING direct, the ING Lion or any other intellectual property of ING. Respondent has received unsolicited approaches for the domain, from ING and possibly their agents. Respondent has not made unsolicited approaches to sell the domain to third parties. These points strongly suggest that Respondent registered the name for his own use. Respondent registered the domain completely unopposed.
The quotations supplied by Complainant are perhaps misleading when taken out of context of the discussions that accompanied these negotiations. Prima facie Respondent is not willing to sell this domain that has value to him and will constitute an important element of the Respondent’s further business activities. Respondent would have been willing to consider an offer for this domain, and was indicating that it was unlikely to be considered if for a small amount. Respondent has paid for, and maintained the domain for ten years, originally registered 27th July 2000. The Respondent is reluctant to part with the domain which would jeopardize his business plan.
In any event Respondent respectfully considers that the statements, whether taken out of context or not, form part of the conduct of “without prejudice” negotiations with a view to reaching a settlement without the need to issue proceedings; they should not be considered for the purposes of these proceedings.
Respondent notes that these comments, such as they were, were not made to Complainant directly. They were made to third parties who are not party to these proceedings. To adduce the comments in these proceedings may be considered hearsay. Complainant may contend that these third parties were acting on its instructions as agents. These third parties did not disclose the identity of their agency. Respondent respectfully suggests that the use of undisclosed agency represents a clear attempt to obtain the domain for a fraction of its worth, and that it is inadmissible to quote from any negotiations on the basis of an agency that was not disclosed. In any event, the adoption of such practices by the Complainant could be seen as characteristic of acting in bad faith.
Because ING has now disclosed the existence of such negotiations, Respondent respectfully contends that ING may simply be using the proceedings as a possible alternative to obtain the domain name more cheaply. Complainant may have opted for this strategy thinking Respondent may be unwilling to contest proceedings. Respondent will strongly contest any such attempt.
The disclosure of the failed attempts to buy the domain does not suggest that Respondent registered the domain to “turn a quick profit”. Respondent has incurred costs maintaining the domain for an entire decade and yet has rebuffed all attempts to sell the domain. These are not the actions characteristic of someone acquiring a domain for the purposes of selling.
Respondent notes that previous approaches, made both directly and/or via third parties, confirm that ING believed Respondent to be the valid legal owner of this domain.
Respondent maintains categorically that it has not 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 and that Respondent has not engaged in a pattern of such conduct. This is not factually possible because ING does not trade under the name “ingmortgage”; ING sells mortgages under the name “ING direct” and <ingdirect.com> or national equivalents. Respondent has in no way impeded ING.
The Respondent maintains categorically that he has not registered the domain name primarily for the purpose of disrupting the business of a competitor. Respondent has registered the domain for the purposes of developing his own business. The domain name incorporates, as other existing trading names of Respondent’s businesses currently do, the distinctive element of his given surname, Ing.
The Respondent maintains categorically that by registering and maintaining the domain name, the Respondent has in no way attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s web site or location or of a product or service on Respondent’s web site or location.
The Respondent is willing to give undertakings to give re-assurance on this point and as a demonstration of good faith.
The Respondent would consider giving the following undertakings, or a combination of the following undertakings, concerning its use of the domain, on the relevant website or websites as appropriate, in order to resolve this dispute:
1) An undertaking to maintain a statement that the site is in no way connected to ING;
2) An undertaking to maintain a statement that the site is in no way connected to the ING direct business;
3) An undertaking to maintain a statement that Jonathan Greville Ing and companies that he owns, controls, or is connected to are not affiliated with ING Groep N.V. or any associated legal entities; and
4) An undertaking to maintain a link to the ING web site and/or or ING direct if so requested by ING;
or such other undertakings as the Administrative Panel may in its absolute discretion see fit.
C. Additional Submissions
Complainant
In its Additional Submission, the Complainant:
(a) re-iterates its argument that the disputed domain name is confusingly similar to the ING marks;
(b) adduces evidence that it also has a trade name and common law or unregistered trademark rights in ING MORTGAGE which provides mortgage facilities on behalf of Complainant and that accordingly the disputed domain name is identical to this trademark;
(c) reiterates its argument that Respondent has no right or legitimate interest in the domain name and argues that the admissions in the Response further establish that proposition. In particular, Complainant submits that Respondent’s argument that he has merely registered a domain name in his own name is misconceived, as his name is not “Ing Mortgage” or <ingmortgage.com> but “Jonathan Greville Ing”. In any event, even if he had registered a domain name in his own name that does not give him a right or legitimate interest in the domain name if he did so to compete properly with Complainant, confuse the viwing public, or to extort money from Complainant, which he did.
Respondent
In his Additional Submission, Respondent contended as follows:
In response, the points previously made by the Respondent still stand. The Complainant's position will be protected fully by the undertakings set out. The Respondent is not willing to disclose the business plan for the reasons already set out. To be clear, ING sells mortgages using the platform ING direct. The Respondent owns the domain and should not be prevented from pursuing his business plan in this case. Finally, the Complainant's Additional Submission does not respond to the following:
1) approaches were made by "agents" whose agency was not disclosed but whom the Complainant now relies upon as "agents".
2) the reports and quotations from the said "agents" are hearsay and, because of this, should not be relied upon.
The Respondent notes that the Complainant makes no comment on the undertakings offered. The undertakings represent a straightforward resolution to this dispute.
FINDINGS
(i) Complainant is the registered proprietor of the ING mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,804,417 issued November 16, 1993). Complainant also has rights in the ING mark through its registrations with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 1,489,878 issued February 5, 1993) and numerous other international registrations.
(ii) Complainant also has and had at all material times a common law or unregistered trademark in ING MORTGAGE.
(iii) Respondent registered the domain name <ingmortgage.com> on July 27, 2000.
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 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 is a large and well-known Dutch-based international financial institution that offers banking, investment, and insurance services as well as mortgage and related financial services. Complainant claims rights in the ING mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,804,417 registered November 16, 1993). Complainant also claims rights in the ING mark through its registrations with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 1,489,878 registered February 5, 1993) and numerous other international registrations of which evidence has been adduced and which the panel accepts.
The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the ING mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also The Royal Bank of Scot. Group plc, Direct Line Ins. plc, & Privilege Ins. Co. Ltd. v. Demand Domains, c/o C.S.C., FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that registration of the PRIVILEGE mark with the United Kingdom trademark authority sufficiently established the complainant’s rights in the mark under the Policy).
Complainant argues that the <ingmortgage.com> domain name is confusingly similar to its ING mark as it wholly incorporates the ING mark in the disputed domain name and then had added to it the descriptive term “mortgage,” which refers to Complainant’s well-known mortgage services. Complainant also contends that the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to the Policy ¶ 4(a)(i) analysis.
The Panel accepts those submissions and finds that the addition of the descriptive term “mortgage” and the gTLD “.com” do not sufficiently distinguish the disputed domain name from the ING mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Accordingly, the Panel concludes Respondent’s <ingmortgage.com> domain name is confusingly similar to Complainant’s ING mark under Policy ¶ 4(a)(i).
In view of the fact that Complainant made an Additional Submission to which the panel has had regard, it should add that it accepts that Complainant also has a common law or unregistered trademark right in ING MORTGAGE and that accordingly the disputed domain name is identical to that trademark.
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect to the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial 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.
Thus, if a respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
However, it is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Accordingly, the first question is whether Complainant has made out a prima facie case.
The panel finds that Complainant has made out such a case and that it is based on the following considerations:
(i) Complainant is an internationally known banking establishment and its name and trademarks are widely known and respected.
(ii) Respondent has chosen to take that name and add to it in registering the domain name a service that most people would know is a service usually provided by all banks, thus suggesting, without more, that the disputed domain name was an official domain name of Complainant leading to a website devoted to the mortgage services of Complainant.
(iii) This use of Complainant’s name and trademark was without permission from Complainant.
On the basis of these considerations and the evidence is support of them, the Panel concludes that Complainant has made out a prima facie case against Respondent and the burden therefore shifts to Respondent to provide evidence of its right or legitimate interests under Policy ¶ 4(c). See Cassava Enters. Ltd., Cassava Enters. (Gibraltar)Ltd. v. Victor Chandler Int’l Ltd., D2004-0753 (WIPO Nov. 11, 2004).
That being so, the second question is whether Respondent has rebutted the prima facie case. Respondent endeavours to rebut the prima facie case essentially by advancing two arguments that it is necessary to look in turn.
First, Respondent says that all that he has done is to register a domain name that is his own name and that such a registration is protected by Policy ¶ 4(c)(ii) which gives rise to a right or legitimate interest if Respondent is “commonly known by the domain name…”.
The panel does not accept that this argument has been made out on the evidence. The WHOIS information on the disputed domain name lists the registrant as “ingdesign communications c/o Jonathan Ing.” Although the registrant information contains the term “Ing,” it is clear that it is so recorded because first, “Ing” is Respondent’s surname and, secondly, because he conducts business under the name “ingdesign”. It is not evidence that Respondent is commonly known as “Ing Mortgage” or <ingmortgage.com>. It is evidence that he is known as “Jonathan Ing,” for that is his name and as the Jonathan Ing who runs a business called “Ing Design” for that is the fact. It is simply fanciful to contend that anyone, either his family, friends, business associates or government instrumentalities would know him as “Ing Mortgage” or <ingmortgage.com> or address him in that manner.
Accordingly, “ingdesign communications c/o Jonathan Ing” is not similar to the <ingmortgage.com> domain name and Respondent is therefore not commonly known by the <ingmortgage.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Put somewhat differently, there is not the remotest similarity between the present case and the case of the fortunate Mr. A. R. Mani who was able legitimately to register the domain name <armani.com> and be vindicated by a UDRP panel in so doing in G. A. Modefine S.A. v. A.R.Mani, D2001-0537 (WIPO July 20, 2001). But in that case, the letters of Mr. Mani’s name, when run together, were an exact match with those of the domain name; in the present case, they are not the same or even similar, for the domain name contains far more than the Respondent’s surname and clearly does not reflect Respondent’s name.
Respondent’s first argument therefore fails.
Respondent’s second argument is expressed in the following way: Respondent registered the
domain name <ingmortgage.com> because it followed logically from his current business name,
ingdesign. The Respondent intends to extend the scope of his business to include financial
services. The Respondent has prepared a business plan for these activities. The Respondent
wishes to resolve the outcome of these proceedings before incurring significant costs in the
implementation of his business plan. Respondent does not wish to disclose the business plan in
these proceedings because of the commercial sensitivities involved.
It is clear from this extract that Respondent is seeking to make the argument that he was using or
had made “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 that he was
“making a legitimate noncommercial 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” within the meaning of paragraphs 4(c)(i) or (iii) of the Policy.
Clearly, Respondent has not used the domain name other than by directing it to a parking page,
so the only issue on the first leg of the argument is whether he made “demonstrable preparations”
to use it for a bona fide offering of goods or services. Complainant argues that Respondent has
provided no evidence supporting Respondent’s claim that it intends to offer financial services.
In particular, Complainant states that Respondent has not provided its purported business plan
nor has it produced any other “concrete evidence” that it has made or is making “demonstrable
preparations” to use the domain name for a bona fide offering of goods or services. Complainant
argues that it is significant that Respondent has owned the disputed domain name for ten years
and has yet to make use of the domain name.
The panel accepts this analysis of the evidence by Complainant and accordingly finds Respondent has failed to make active use of the disputed domain name and failed to provide evidence that he has made demonstrable preparations to use the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the respondent’s failure to use the disputed domain name for several years was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Such questions can only be answered by the use of evidence and it is a matter of regret that Respondent has chosen not to take the Panel into its confidence with respect to its business plan. UDRP panels have on many occasions been obliged to reject such arguments by respondents because of the lack of evidence. As an example of the difficulty that this approach causes for panels, the Panel as presently constituted was faced with exactly the same problem in DigiPoll Ltd. v. Raj Kumar, D2004-0939 (WIPO Feb. 3, 2005), where it said:
“The question then is whether there are other steps that were taken by the Respondent that amount to ‘demonstrable preparations’. The Respondent’s case on this issue falls down because there is no evidence of what, if any, preparations he has made. There is no evidence of a business plan or partners, the proposed technology or how it would function, how the business would be financed, a timetable or, indeed, evidence of a single fact about the business other than the intention to develop it at some indeterminate time in the future.
It is difficult enough to reach conclusions on facts when mere assertions are made and previous UDRP Panels in cases such as Societe General and Firmat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760 and Wild West Domains, Inc. v. Byrnne Heaton, WIPO Case No. D2004-0789 have drawn attention to this problem and the need for evidentiary material to resolve it. So there must be evidence, it must be evaluated and it must prove the particular element contended for. In the instant case, the Respondent has not presented any such evidence; there is no evidence to evaluate and nothing going to prove the particular element that the Respondent relies on.
The Panel, therefore, finds on the evidence that there were no demonstrable preparations by the Respondent to use the domain name in connection with his proposed business or any other bona fide offering of goods or services.”
Those remarks are equally applicable to the present case and show why the conclusion must be that Respondent has not proven the defences it relies on and accordingly has not shown that it has a right or legitimate interest in the domain name.
Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith. See Telstra Corp. Limited v. Nuclear Marshmallows, D2000‑0003 (WIPO Feb. 18, 2000).
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out‑of‑pocket costs directly related to the domain name; or
(ii) the respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
Complainant’s argument is that the disputed domain name was registered and is being used in bad faith because Respondent must be taken to have registered the domain name with the intention of selling it for a large sum of money, registered it many years after Complainant acquired trademark rights in ING, and also because, having registered it, Respondent engaged in impermissible passive holding of the domain name. Complainant is thus relying essentially on Policy ¶ 4(b)(i) and (iv) and on the modus operand of Respondent which is also said to constitute bad faith. It is again necessary to look at each of these contentions in turn.
With respect to the claim based on Policy ¶ 4 (b)(i), Complainant argues that Respondent registered the <ingmortgage.com> domain name in order to obtain a significant profit from selling the domain name to Complainant. Complainant alleges Respondent attempted to elicit an offer from CSC, Complainant’s representative, that exceeded Respondent’s out-of-pocket costs. Specifically, Complainant alleges that Respondent said “make me an offer” to CSC and then declined CSC’s $1,000 offer to buy the disputed domain name. On one occasion Respondent apparently went as far as to say “I would sell this domain but only for a lot of money.”
On the same issue, Respondent has conceded that he was prepared to sell the domain name, but not for “a small amount” and that Complainant has been trying to obtain the domain name for less than its true value. That position, in addition to Respondent’s refusal to disclose just what plans he has made during the intervening 10 years to use the domain name for a legitimate business, suggests that his intention from the time of registration was to try to sell the domain name to Complainant for a large sum, based on the coincidence between his surname and the ING mark and the opportunity that such a coincidence gave him to extort money from Complainant.
Based on the totality of the evidence, the willingness of Respondent to sell the domain name, the lack of any rational explanation as to why he would want to register it and keep it and his refusal to disclose his alleged business plan for the use of the domain name, as well as all reasonable inferences that can be drawn from that conduct, there is no conclusion the panel can come to other than that Respondent’s behavior constitutes registration and use in bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
With respect to the claim based on Policy ¶4 (b)(iv), the panel finds that the case clearly comes within the principle of passive holding laid down in Telstra Corporation Limited v. Nuclear Marshmallows, supra. In that decision, a number of circumstances were identified that would go to support a finding of passive holding and hence of bad faith for the purposes of paragraph 4(a)(iii) of the Policy. Some of those circumstances were that:
“ ...the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries..., the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,(and)... taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
Additional indicia were mentioned in the Telstra case and circumstances will, of course, differ from case to case, but the above elements are certainly present in this proceeding and the totality of the evidence leads the panel to the conclusion that Respondent has engaged in passive holding of the domain name for many years and that such conduct shows bad faith in the use of the domain name.
The panel must therefore find that this ground has also been made out.
Accordingly, the panel finds that Respondent registered and used the domain name in bad faith.
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 <ingmortgage.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: 12 October 2010
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