BG Bank A/S v. Domain Ownership Limited
Claim Number: FA0612000877946
Complainant is BG Bank A/S (“Complainant”), represented by Per
Haakon Schmidt, of Plesner Svane Gronborg Law Firm,
Amerika Plads 37, 2100
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bginvest.com>, registered with Moniker Online Services, 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 5, 2007.
On January 9, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <bginvest.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name(s). Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 8, 2007 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@bginvest.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 14, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bginvest.com> domain name is identical to Complainant’s BG INVEST mark.
2. Respondent does not have any rights or legitimate interests in the <bginvest.com> domain name.
3. Respondent registered and used the <bginvest.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BG Bank A/S, licenses the BG INVEST mark to one
of
Complainant has registered the BG INVEST mark with the Danish Register of Trade Marks (Reg. No. VR 2000 00064 issued January 20, 2000).
Respondent’s <bginvest.com> domain name, which it registered on March 22, 2004, resolves to a web page with commercial links to other online investment services providers.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Because Complainant has registered the BG INVEST mark with
the Danish trademark authority, Complainant has sufficiently demonstrated its
rights in the mark for purposes of Policy ¶ 4(a)(i). See Thermo Electron Corp. et
al. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding
that the complainants established rights in marks because the marks were
registered with a trademark authority); see
also Miller Prods.
The only difference between the <bginvest.com> domain name and Complainant’s registered BG INVEST mark is the mere addition of the generic top-level domain (“gTLD”) “.com” and the elimination of the space between the terms of the mark. As both alterations are merely functional, the Panel finds the disputed domain name to be identical to the mark pursuant to Policy ¶ 4(a)(i). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see also W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and
legitimate interests in the <bginvest.com>
domain name. Complainant must first make
a prima facie case in support of its allegations, and then the burden
shifts to Respondent to show it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). 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 Policy ¶ 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.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <bginvest.com> domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names); see also Geocities v.
Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent
has no rights or legitimate interests in the domain name because the respondent
never submitted a response or provided the panel with evidence to suggest
otherwise). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
None of the evidence in the record points to Respondent
being commonly known by the <bginvest.com>
domain name. Hence, the Panel finds that
Respondent has not established rights or legitimate interests in the <bginvest.com> domain name pursuant
to Policy ¶ 4(c)(ii).
See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see
also Coppertown Drive-Thru Systems,
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).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s registration and use of the confusingly similar
domain name to operate a pay-per-click website demonstrates bad faith pursuant
to Policy ¶ 4(b)(iv), for Respondent likely profits
from click-through fees for each Internet user it redirects to other websites
via links on Respondent’s website. The Panel finds Respondent’s registration
and use of the <bginvest.com>
domain name for this purpose to be in bad faith under Policy ¶ 4(b)(iv). See Allianz
of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad
faith registration and use under Policy ¶ 4(b)(iv) where the respondent was
diverting Internet users searching for the complainant to its own website and
likely profiting from click-through fees); see also T-Mobile USA, Inc. v.
utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the
registration and use of a domain name confusingly similar to a complainant’s
mark to direct Internet traffic to a commercial “links page” in order to profit
from click-through fees or other revenue sources constitutes bad faith under
Policy ¶ 4(b)(iv)).
Respondent has also
registered and used the domain name for the primary purpose of disrupting
Complainant’s business, because the <bginvest.com> domain name
resolves to a website featuring links to Complainant’s competitors and to
unrelated websites. In
Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003), the panel found that the respondent
had registered and used the <euro-disney.com> domain name in bad faith
pursuant to Policy ¶ 4(b)(iii) because it resolved to a website promoting a
competing theme park. Here, then,
Respondent’s use of the disputed domain name to operate a website with links to
Complainant’s competitors provides evidence that it registered the domain name
primarily to disrupt Complainant’s business in bad faith under Policy ¶
4(b)(iii). See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bginvest.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: February 23, 2007
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