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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Bank AG v. Multigestiones Puertonorte S.L.
Case No. D2000-0559
1. The Parties
Deutsche Bank AG
Taunusanlage 12, 60325 Frankfurt am Main, Germany
Represented by Gleiss Lutz Hootz Hirsh, Rechtanwaelte of Maybachstr. 6, D-70469 Stuttgart, Germany.
Multigestiones Puertonorte S.L.
Ctra. Santa Ursula, 191, Santa Ursula, Tenerife, 34 38390 Spain.
2. The Domain Name(s) and Registrar
3. Procedural History
The Complaint was filed on June 6, 2000. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.
The Complaint was properly notified in accordance with Rules, paragraph 2(a). No Response was filed by the Respondent. The Respondent is in default. The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence. No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel's decision was August 25, 2000.
4. Factual Background
The Complainant is the owner of registered trademarks for DEUTSCHE BANK in Germany and the USA.
5. Parties' Contentions
The Complainant states that:
i) It is Germany's largest bank and one of the world's leading banking institutions. It was founded in 1870 in Berlin. The complainant uses the domain names "deutsche-bank.com", "deutschebank.com", "deutsche-bank.de" and "deutschebank.de." Its trademarks have become well-known after decades of use.
ii) The Respondent informed the Complainant with an e-mail on April 25, 2000, that he had registered the domains in question and was offering the domain names for sale. Otherwise the domains would be used for pornographic purposes.
iii) Complainant sent on May 10, 2000, a cease and desist letter to the Respondent asking him to refrain from using the Domain Names.
iv) Respondent answered with an e-mail dated May 19, 2000. A person called Albeniz informed the Complainant's Representatives that he wanted to sell the Domain Names to the buyer who made the best offer and that he had already received a very attractive offer by a company which intended to use the domain names for pornographic websites. He set a deadline for taking the offer of May 17, 2000, and asked for a serious offer from the Complainant to buy the domain names in question.
v) The Complainant's Representatives sent to Mr. Albeniz and to the Respondent a further cease and desist letter dated May 15, 2000. They then received a telephone call from Mr. Martinez, listed in the Whois database of Network Solutions Inc. as Administrative Contact, offering the domain names again. The Complainant's Representatives asked Mr. Martinez once again to delete the domain names in question.
vi) Later, the Complainant's Representatives received a letter from the Respondent, dated May 16, 2000, in which the Respondent purported to enter into an agreement to refrain from using the Domain Names. However, in item 6 the Respondent pointed out that the contract would not be valid unless the Complainant had paid an amount of DM500,000.00 before May 19, 2000.
vii) The Complainant's Representatives then sent a further cease and desist letter to the Respondent dated May 18, 2000. The Respondent promptly answered with an e-mail one day later on May 19, 2000. A further fax demanded a price of DM750,000.00 for the Domain Names.
viii) The Respondent is not a licensee of Complainant, and has not received any permission or consent to use the trademark "Deutsche Bank" or "Deutsche Bank AG".
ix) At the time of the Complaint the Respondent maintained at the site attached to the Domain Names a temporary homepage "Great Domains.com" offering them for sale.
x) The Domain Names are identical to the Complainant's famous name and trademark "Deutsche Bank AG". Furthermore, they are at least confusingly similar to the trademark "Deutsche Bank". The abbreviation "AG" prevents no confusion since this abbreviation is normally used by Complainant simply to indicate its legal form. The wording "group" in one of the Domain Names is just descriptive.
xi) Respondent has no rights or legitimate interest in respect of the Domain Names. The Respondent is not a licensee of Complainant and has not received any permission or consent to use the trademark "Deutsche Bank" or "Deutsche Bank AG". The Complainant's use of the trademark "Deutsche Bank" as a business designation precedes by several decades the registration date of the Domain Names. The Respondent has not used the Domain Names in connection with a bona fide offering of goods or services, nor has he been commonly known by the Domain Names, nor has made a legitimate non-commercial or fair use of the Domain Names.
xii) The Domain Names have been registered and are being used in bad faith. The Domain Names violate paragraph 4(a)(iii) of the policy. It is obvious that the Respondent has registered the Domain Names in order to improperly sell them (paragraph 4(b)(i) of the policy) or to make use in bad faith in the way described in paragraphs 4(b)(iii) and (iv).
xiii) There can be no doubt that the Domain Names were registered to sell them to the Complainant. The offer in the e-mail of the Respondent of April 25, 2000, and the further letters explicitly state that the Domain Names could be bought from the Respondent. The Respondent must have known that "Deutsche Bank AG" is one of the best known trademarks in the world. It is unconceivable that the Respondent was not aware of this fact. For this reason there can be no doubt that the registration was in bad faith concerning paragraphs 4(b)(iii) and (iv).
xiv) The Domain Names were not only registered in bad faith but also used in bad faith. The Respondent has not only registered the Domain Names, but also has already attached a provisional homepage to them. There is a potential danger that the Respondent will offer any kind of goods or services, especially pornographic and related things on this website (as threatened) to disrupt the business of the Complainant (see paragraph 4(b)(iii) of the policy). Furthermore, there is a potential danger that the Respondent will intentionally attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's mark (see paragraph 4(b)(iv) of the policy).
xv) Furthermore, the offering of the Domain Names for sale was a use of the Domain Names in bad faith as defined in the policy (see paragraph 4(b)(i) of the policy). Reference is made to paragraph 6 of the decision of the panelist in the matter of World Wrestling Federation Entertainment, Inc. vs. Michael Bosman ("worldwrestlingfederation.com"/D99-0001 and the decision of Harrods Ltd. vs. Robert Boyd ("dodialfayed.com"/D2000-0060).
xvi) The panelist in the decision of Cellular One Group vs. Paul Brien ("cellularonechina.com"/D2000,-0028) decided that the subparagraphs of paragraph 4(b) are not intended to be the exclusive criterion of bad faith use. The bad faith use can also exist in situations where the Domain Name contains in its entirety, and is for all essential purposes, Complainant's trademark which has been in use for a substantial time prior to the registration of the domain name and is a well-known mark; and respondent has alleged no good faith basis for use by him of the domain name. Under these circumstances there can be no doubt that the Domain Name was used in bad faith. The Complainant asserts that this also applies in this case.
The Respondent has not filed a Response and is in default.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or confusing similarity
Given the circumstances the Domain Names are confusingly similar to the Complainant's DEUTSCHE BANK mark.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Names.
C. Bad Faith
Paragraph 4(b) of the Rules sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including "the Respondent has registered or has 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" and "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 the Respondent has engaged in a pattern of such conduct".
In the absence of a Response from the Respondent, there appears to be no explanation of the facts other than that the Respondent registered the Complainant's trademark as Domain Names with an intent to use the Domain Names to demand unwarranted profit in bad faith and that the Respondent has so used the Domain Names in question. The registration of six names containing the Respondent's trademark would also suggest a pattern of such conduct. Accordingly, the Domain Names have been registered and used in bad faith.
In the light of the foregoing, the panelist decides that the Domain Names are confusingly similar to the Complainant's trademark and the Respondent has no rights or legitimate interests relating to the Domain Names which were registered and used in bad faith.
Accordingly, in the light of the above, the panelist requires that the registration of the Domain Names DEUTSCHEBANKAG.NET, DEUTSCHEBANKAG.ORG, DEUTSCHEBANK-AG.COM, DEUTSCHEBANK-AG.ORG, DEUTSCHEBANK-AG.NET, DEUTSCHEBANK-GROUP.COM be transferred to the Complainant.
Dated: August 9, 2000,