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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banque Cantonale de Genиve v. Primatex Group S.A.
Case No. D2001-0477
1. The Parties
The Complainant in this administrative proceeding is Banque Cantonale de Genиve ("Complainant"), a public limited company (sociйtй anonyme de droit public), incorporated under the laws of Switzerland, with its registered office at 17, Quai d’Ile, CH-1204 Geneva, Switzerland, represented by Pascal Verniory, Verniory & Picot, 8, rue des Vieux-Grenadiers, CH-1205 Geneva, Switzerland.
The Respondent is Primatex Group S.A. ("Respondent"), having its office at Edificio Orillac, Tercer Piso, Calle 54, Nuevo Urbanizacion Obarillo, Arartado 2526, Panama 5, Panama.
2. The Domain Names and Registrar
The domain names at issue are:
<banquecantonaledegeneve.net> ("Domain Name 1")
<banquecantonaledegeneve.org> ("Domain Name 2")
<bcge-connection.com> ("Domain Name 3")
(jointly referred to as the "Domain Names"), all registered with Tucows.com, Inc. ("Registrar") of 96 Mowar Ave., Toronto, Ontario, Canada.
3. Procedural History
A Complaint, pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, ("Policy") and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on April 2, 2001, and was received by the WIPO Center in hard copy on April 4, 2001.
The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the WIPO Center on April 4, 2001.
On April 4, 2001, a Request for Registrar Verification was transmitted to the Registrar. With its Verification Response of the same day, the Registrar confirmed that it had received a copy of the Complaint, that the Domain Names were registered with the Registrar, and that the Respondent was the current registrant of the Domain Names.
In addition, it confirmed that the Policy was applicable and that the registration was on hold.
The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on April 5, 2001, without recording any formal deficiencies.
A Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to Respondent on April 5, 2001, setting a deadline as of April 24, 2001, by which the Respondent could file a Response to the Complaint.
On April 24, 2001, the WIPO Center received Respondent’s Response by e-mail and confirmed the receipt with an Acknowledgement of Receipt on April 25, 2001. On April 25, 2001, the WIPO Center received the Response in hardcopy.
Complainant wished to have this administrative proceeding decided by a single-member panel while Respondent requested a three-member panel. Consequently, according to Art. 6(c) of the Rules, the WIPO Center invited Mr. Bernhard F. Meyer-Hauser, Mr. Francois Dessemontet and Mr. Kamen Troller to serve as panelists in Case No. D2001-0477 and transmitted to them a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received the Statements of Acceptance and Declarations of Impartiality and Independence from all panelists, the WIPO Center transmitted to the parties on May 14, 2001, a Notification of Appointment of Administrative Panel and Projected Decision Date. The projected decision date was May 28, 2001. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant is a Swiss limited company under public law having its field of business in the banking sector.
Complainant holds the following trademarks:
- BCGe, no. 466 233, registered with the Swiss registration office on June 4, 1999.
Complainant is a member of the Union of the Swiss Cantonal Banks ("USCB"). USCB is holding, on behalf of its respective members in the different Swiss Cantons, the following collective trademark:
- K Banque Cantonale, no. 415 198 (stylized)
5. Parties’ Contentions
Complainant contends that the Domain Names are identical and/or confusingly similar to the trademarks held by Complainant, respectively USCB on behalf of Complainant. In addition, the Domain Names 1 and 2 are identical to the company name of Complainant.
The locally well known abbreviation "bcge" of Domain Name 3 is identical to Complainant’s registered trademark "BCGE", Complainant's company name and Complainant's domain names <bcge.ch> and <bcge.com>. The second element on Domain Name 3, "connection" could be interpreted by the public as a reference to Mafia activities or to an on-line banking offer of Complainant. In both cases, there is a risk of confusion with Complainant’s trademark.
Complainant contends that Respondent has no rights or legitimate interest in respect of the Domain Names. This is established by the fact that Complainant does neither have any relationship with Respondent, nor has it granted a licence or another right or permission to Respondent with regard to the Domain Names.
Complainant contends that the Domain Names have been registered and are being used in bad faith. Respondent allegedly prevents Complainant from reflecting the trademark on the Internet, and the content of Respondent's Internet site is disrupting the business of Complainant. In addition, Respondent creates a likelihood of confusion by using the logo of Complainant and by using Meta Tag keywords from the banking sector, thereby attracting Internet users to its website.
Consequently, Complainant requires the transfer of the Domain Names to Complainant.
Respondent does not oppose Complainant’s claim relating to Domain Names 1 and 2 containing words "BANQUECANTONALEDEGENEVE".
However, with regard to Domain Name 3, Respondent states that the requirements for a transfer are not fulfilled. Domain Name 3 is neither identical nor confusingly similar to the trademark held by Complainant. The Internet site attached to the domain name has solely a satirical content and does not contain any offer or advertisement for banking products. Thus, no Internet user can seriously believe that the site is the official site of Complainant.
Respondent has a legitimate interest in running an independent information and satire site concerning the economical situation of Complainant.
Furthermore, Respondent has not registered or used the Domain Names in bad faith. It has not tried to sell the name to Complainant and it does not prevent Complainant from reflecting its trademark in corresponding domain names. Since Respondent does not offer any products or services on its site, it is not a competitor of Complainant. Therefore, Respondent can not disrupt the business of Complainant and it is making a legitimate non-commercial or fair use of the Domain Name 3.
6. Discussion and Findings
Complainant requested in the Complaint that French should be the language of the proceeding. Respondent made no explicit comments regarding this point in the Response. However, the Panel finds that by filing a submission in English, Respondent impliedly refused to apply the French language in this proceeding. Therefore, relying on Art. 11(a) of the ICANN Rules, the Panel will conduct this proceeding in English, the language of the Registration Agreement.
As already mentioned, Respondent does not oppose Complainant’s Requests with regard to the Domain Names 1 and 2. The Response explicitly states that Respondent does "not intend to keep those two domain names if the Bank wishes to recover them". The latter condition obviously is fulfilled in the present case.
The Panel considers Respondent's statement regarding Domain Names 1 and 2 <banquecantonaledegeneve.net> and <banquecantonaledegeneve.org> as a partial settlement of the dispute. Under these circumstances, the prerequisites of the ICANN Policy regarding the Domain Names 1 and 2 need not be addressed further in detail.
On the other hand, the issue of the third Domain Name <bcge-connection.com> is unresolved. In this respect, the conditions of the ICANN Policy need to be examined more closely. The following discussion is limited to Domain Name 3 only:
Paragraph 4(a) of the policy directs that the Complainant must prove of the following:
(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and used in bad faith.
Identical or confusingly similar Domain Name: Policy 4(a)(i)
It is uncontested that Complainant owns a registered trademark "BCGE" in Switzerland for products and/or services in international classes no. 16, 35 and 36 since June 4, 1999. It is furthermore uncontested that "BCGE" is an abbreviation of Complainant's company name "Banque Cantonale de Genиve SA". In Geneva and surroundings the bank is commonly referred to as "BCGE", "BCGe" or simply as "BCG" (phonetically pronounced as BCGe).
Domain Name 3 <bcge-connection.com> is composed of two main elements, separated by a hyphen. The first element ("bcge") is identical to the trademark of Complainant. The second element ("connection") is a generic English term which, in the present context, is not clearly defined as to its meaning and significance.
The most natural meaning of the term "connection" in English is a "relationship between two things" (Collins COBUILD English Language Dictionary, HarperCollins Publishers, London). There are several other or ancillary meanings of the term in English such as, for instance, looking up a "connection" (by train or bus), making some statements in "connection" with something, having "connection(s)" to people, etc. Additionally, there is - as Complainant correctly states - yet another notion of the term "connection", i.e. something related to the Mafia. This notion became famous some time ago, particularly in Switzerland, when a widely publicized criminal case involving money laundering activities of organized crime figures through the Swiss banking system made headlines in the press. Because many elements of the crime were closely connected to a series of pizza restaurants, the press referred to it as the "pizza connection".
What the various meanings of the term "connection" have in common is the fact that they tie a certain thing or activity to another one, thus fulfilling some kind of bridge function.
In Complainant’s business area and in the Western part of Switzerland, the trademark and abbreviation "BCGE" is well known. It is particularly noted by the public today because Banque Cantonale de Genиve SA, and the bank's management, are facing considerable criticism by some local newspapers. Severe financial irregularities have been alleged against the bank as mentioned in the Response.
Respondent's registered Domain Name 3 must be examined against this background.
The Domain Name <bcge-connection.com> contains the element "bcge" which is distinctive and identical to Complainant's trademark. This part also collides with some of Complainant's registered domain names, i.e. <bcge.ch>, <bcge.com>, <bcge.net>, <bcge.org> and <bcge-direct.ch>. Of course, the four letters of Complainant's trademark reflected in Domain Name 3 are not used alone but only in conjunction with the term "connection". On the other hand, the hyphen in the middle of Domain Name 3 pronounces and improves the recognition of Complainant's trademark "BCGE". In comparison thereto, the generic term "connection" which has no particular meaning of its own, other than indicating some sort of a bridge function to the trademark owner, is of little weight. Domain Name 3 is clearly dominated by the letters "BCGE" which are identical to Complainant's regionally quite well known trademark. This bears the risk that Internet users may confuse Domain Name 3 with Complainant's mark.
In their submissions, both parties refer to WIPO Case No. D2001-0007, Sociйtй Accor v. M. Philippe Hartmann, regarding the domain name <accorsucks.com>. The similarity test under Policy 4(a)(i) in connection with "...sucks" sites is, however, not applicable to the present case. Other than the component "...sucks" in a domain name which - by itself - reflects a protest site and does not mislead or confuse Internet users concerning the owner and content of a site, the component "...-connection" points into the opposite direction. As mentioned above, the term "connection" seems to imply a bridge function, i.e. a connection to the trademark holder which, most likely, is assumed to be the owner of the site. Even though it is quite true that any visitor to the site will quickly find out that the trademark owner has nothing to do with it but rather is the target of criticism, the fact remains that Internet users are confused by the ambiguous designation of the site. This particular risk generally does not exist with "…sucks" sites where Internet users may tell already from the domain name what kind of site they are visiting.
Therefore, the Panel concludes that Domain Name 3 is partly identical and in any event confusingly similar to Complainant's trademark. The first condition of the Policy is fulfilled.
Respondent's Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)
Paragraph 4(c) of the Policy sets out, by way of example, various circumstances demonstrating registrant's rights or legitimate interests in a domain name. One of these circumstances is the "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" (Paragraph 4(c)(iii) of the Policy).
First, we would like to mention that the Panel believes that protest sites (such as many "…sucks" sites) may reflect a legitimate interest of their owners. The publication of protest on the Internet is the quintessential noncommercial fair use envisioned by the Policy (see WIPO Case No. D2000-1455, McLane Company, Inc. v. Fred Craig). Protest is furthermore an expression of free speech, and free speech deserves protection in any developed legal system. However, the principle of free speech must not be abused by designating a protest site in a misleading manner.
To identify a protest site with a trademark implemented by the formative "…sucks" can be seen as a legitimate noncommercial or fair use of the domain name. However, the question whether names such as "bcgesucks" or " bcge-sucks " would be compatible with the Policy can remain open as in the case at hand no such domain names have been used. Instead, Respondent elected to add the formative "…-connection" to Complainant's trademark, thus creating a bridge function to Respondent, a regionally and internationally well known Geneva bank. The true nature of the site, being a protest site of a very aggressive character, is not reflected in the domain name itself. As a consequence, Internet users following the link or finding the link through search engines will not be aware that they end up on a protest site. They will only find that out once they have studied the sites' content.
Under these circumstances, the Panel has difficulties recognizing a legitimate interest of Respondent to keep the domain name which may mislead the public regarding the nature of the attached site. Although the noncommercial nature of Respondent’s web site is quite evident and not contested, it is the Panel's belief that protest disseminated through the powerful tools of the Internet is only legitimate if the protest is transparent. Transparency starts with choosing a domain name which reflects the protest as opposed to a domain name which implies an affiliation to the trademark holder. If the protest is reflected in the domain name (for instance by adding the component "...sucks" or a similar element), Internet users have a choice to follow or not to follow the link. Otherwise, they may be misled.
In this connection, it may be fair to state, however, that no numerus clausus of site names indicating protest or parody exists. It may even be legitimate, in some cases, to use a domain name denominating a corporation or public figure without qualifying additions. All depends from the circumstances of the individual case.
The web site of Respondent contains, among other things, the following explicit or implicit messages to its visitors:
- Complainant is involved in money laundering activities connected with drug traffic, theft, corruption, and misuse of public funds;
- Complainant is involved in Mafia-like business or in other criminal organizations;
- Complainant is a dubious bank. Investments with this bank are not sure and risk to result in losses to the investor.
Although, it is neither the purpose of this proceeding nor within the powers of this Panel to judge on the legality of Respondent's web site, it is fair to state that the nature of the site is such that some Internet users who are expecting to follow a link to "their" bank or to banking services, may not appreciate the protest they end up with. Nevertheless, it is the confusing and/or misleading impression which is created by Respondent's Domain Name 3 rather than the aggressive nature of the site that prompts this Panel to conclude that Respondent has no right or legitimate interest in the use of Domain Name 3. For the same reason, the question may remain open if the web site attached to Domain Name 3 exceeds the level of a legitimate and fair protest by damaging and tarnishing Complainant’s reputation as a bank and offending its officers.
Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)
Paragraph 4(b)(i) to (iii) of the Policy specifies in particular, but without limitation, the following examples of circumstances evidencing a registration and use of a domain name in bad faith:
(i) Circumstances indicating that Respondent registered or acquired the Domain Name primarily for the purpose of selling it to the Complainant.
This element of the Policy has neither been alleged nor does it seem applicable in the present case.
(ii) Registration of the domain name in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct.
Complainant has registered numerous domain names containing the trademark "bcge" which are actually used. An element of bad faith can thus be inferred from the fact that Respondent registered three sites with domain names incorporating or relating to the Complainant's name and willingly had to give up any alleged rights regarding two of them.
(iii) Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor.
As mentioned above, the Panel needs not to decide the issue whether Respondent’s web site is damaging and tarnishing Complainant’s mark. Furthermore, there is no indication in this case that Respondent is a competitor of Complainant.
In spite of the above, the pattern of conduct of Respondent who was registering several domain names, including those containing the words "BANQUECANTONALEDE GENEVE" and "BCGE", without – at the same time – reflecting in the domain names their character of being protest sites, does not find protection under the Policy. Further, the domain names at issue were transferred to a Panama entity shortly after Complainant requested their transfer, thus rendering a recovery of those domain names more difficult.
Although not specifically mentioned as an indication of bad faith, it is the Panel's belief that the misleading domain name as well as the other elements mentioned above are indications of bad faith in the registration and use of the Domain Name. This is particularly true on the background of the next paragraph.
(iv) By using the domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to its 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.
By deliberately using Complainant's trademark as a designation for its protest site without, at the same time, adding a component identifying the true nature of the web site, Respondent created a likelihood of confusion with Complainant. In addition, by not designating its protest site as a "…sucks" site, or similarly reflecting the character of protest in the chosen domain name, a definite risk was created that Respondent's web site is attracting Internet users, in particular bank clients and other persons interested in bank's services, who may not wish to be targeted by a protest site. These people would not knowingly follow a "…sucks" link on the Internet or any "…sucks" hits found through search engines. Even though Respondent does not appear to have established the <bcge-connection.com> web site for commercial gain, the set up chosen by Respondent may result in commercial damage to Complainant. This again, is not what the Policy wants to protect.
By using a domain name which seems to indicate some sponsorship of, affiliation with, or endorsement by Complainant, although the site is indeed intended to disseminate protest, Respondent acts quite similarly to the examples of bad faith mentioned in Art. 4b(iv) of the Policy.
The following facts are particularly indicating bad faith of Respondent: (1) Complainant’s business may be disrupted by Respondent's web site, (2) Internet users are attracted to the site without warning or indication that they are linking to a protest site, (3) a likelihood of confusion with Complainant's registered trademark is created by the designation of Respondent's web site.
The Panel finds that the noncommercial character of the web site and the absence of a competition relationship between the parties does not prevent a finding of bad faith. Considering the language of Art. 4(b)(i)-(iii) of the Policy, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
In view of the circumstances and facts discussed above, the Panel decides that the three disputed Domain Names:
shall be transferred to the Complainant pursuant to Paragraph 4(i) of the Policy.
Bernhard F. Meyer-Hauser
Dated: June 21, 2001