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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Banca di Roma S.p.A. v. Overlord Designs Inc.

Case No. D2006-0123

 

1. The Parties

The Complainant is Banca di Roma S.p.A., Roma, Italy, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Overlord Designs Inc., Vallon, Abidjan, the Republic of Cфte d’Ivoire.

 

2. The Domain Name and Registrar

The disputed domain name <bancroma.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2006. On January 30, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On February 2, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details as registered. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2006.

The Center appointed Clive N.A. Trotman as the sole panelist in this matter on March 3, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant Banca di Roma S.p.A. is a well known Italian bank. It was founded on August 1, 1992, from the merger of Banco di Santo Spirito, founded in 1605, Cassa di Risparmio di Roma, founded in 1836, and Banco di Roma, founded in 1880. On 2002, Banca di Roma became part of Capitalia Gruppo Bancario. Banca di Roma has 1100 banking counters in Italy and 12 main offices, 7 branches, and 7 representative branches throughout the world. It uses among others the domain name <bancadiroma.it>. Banca di Roma International in Luxembourg uses the website “www.bancaroma.lu”.

The Complainant has used BANCA DI ROMA as a trademark and as a trade name continuously since 1992, and owns national and community trademarks that cover mostly financial and banking services and include the trademarked words BANCA DI ROMA, as follows:

Italian registration for SPAZIO BANCA DI ROMA (word), No.891461, filed on July 7, 1999, registered on May 15, 2003 (class 36);

Italian application for BANCA DI ROMA and device No. RM2003C001429, filed on March 14, 2003 (classes 9, 16, 35, 36, 38,42);

Italian application for BANCA DI ROMA (word) No. RM2003C001430, filed on March 14, 2003 (classes 9, 16, 35, 36, 38, 42);

European Community trademarks registrations for BANCA DI ROMA No. 3348117 of 12.09.2003/10.01.2005 (classes 9, 16, 35, 36, 38, 42);

European Community trademarks registrations for BANCA DI ROMA and device No. 3349487 of 12.09.2003/18.03.2005 (classes 9, 16, 35, 36, 38, 42).

The disputed domain name <bancroma.com> appears to have been registered by the Respondent on July 3, 2005.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <bancroma.com> is confusingly similar to its trade name and trademark BANCA DI ROMA. Significantly, “bancroma” is commonly used in international bank jargon as short for “Banca di Roma”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There was no evidence, before the dispute, of the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The Respondent has never been commonly known by the domain name, nor did it do business under the domain name. There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the domain name and in fact it is used only in order to perform an international Internet fraud.

The Complainant contends that the disputed domain name is used in bad faith. Internet users have received spam email prompting them to check their Banca di Roma account by following a link to <bancroma.com>, with instructions to use “bancroma” as user name and “welcome” as password. Users who do so are eventually conveyed to a website that imitates the authentic Banca di Roma International website found at “www.bancaroma.lu” but is in fact a counterfeit website. By continuing to follow instructions, unsuspecting users reveal sufficient banking details for their accounts to be accessed fraudulently, a criminal activity widely known as “phishing”.

The Complainant contends that the Respondent, because it targeted specifically Banca di Roma with fraudulent intent, must have been aware of the Complainant’s famous trademark. The Complainant cites Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, in support of its contention that intentional registration of another’s well known trademark, which it must have known about, is opportunistic bad faith.

The Complainant requests that the disputed domain name <bancroma.com> be transferred to the Complainant.

B. Respondent

No response has been received and the Respondent has not contested the allegations of the Complainant.

 

6. Discussion and Findings

Jurisdiction of Administrative Panel

Paragraph 4(a) of the Policy states:

“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.

A. Whether the Domain Name is Identical or Confusingly Similar to a Trademark

The Complainant provides documentary evidence to the effect that it has registered and used the trademark BANCA DI ROMA since 1992. This trademark is not identical to the disputed domain name <bancroma.com>. Nevertheless the Complainant certifies that “bancroma” is a shortening of BANCA DI ROMA commonly used in international bank jargon. Furthermore the contraction “bancroma” is closely similar to “bancaroma” as used in the Complainant’s legitimate Luxembourg domain name <bancaroma.lu>, and similarly omits the word “di”.

In Washington Speakers Bureau, Inc., v. Leading Authorities, Inc., 33 F. Supp. 2d 488, 503 (Virginia, 1999), the domain names <washingtonspeakers.com>, <washington-speakers.com>, <washingtonspeakers.net> and <washington-speakers.net> were held each to be sufficiently similar to the plaintiff’s common law trademark “WASHINGTON SPEAKERS BUREAU” as to be an infringement. The present case and Washington Speakers Bureau have clear parallels. In both, the Complainants’ trademarks combine a generic activity description with a universally recognized city identifier, although the companies trade more widely. In both, the domain names subject to complaint are a contraction of the full trademark, which nevertheless is sufficiently close to evoke the name of the respective Complainant.

As observed in the judgment in GoTO.com, Inc., v. Walt Disney Co., (202 F.3d 1199, 1205-1206 (9th Cir. 2000)), “Similarity is adjudged in terms of appearance, sound, and meaning. Similarities are weighed more than differences.” On the facts, the Panel finds the disputed domain name <bancroma.com> to be confusingly similar to the Complainant’s trademark BANCA DI ROMA in appearance, sound and meaning, with substantial similarities that weigh more heavily than the differences. It is well established in precedent that the gTLD identifier “.com” is of no consequence. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.

B. Whether Respondent has Rights or Legitimate Interests in Respect of the Domain Name

The Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant certifies that it has never had any connection with the Respondent and that there is no possible way the Respondent could have any right or interest in the domain name. A prima facie case has been made out to the effect that the Respondent does not have any rights or legitimate interests in the disputed domain name.

The Respondent has not responded with any refutation of the Complainant’s assertions or attempted in any way to establish rights or legitimate interests in respect of the domain name. On the evidence submitted and in contradistinction to paragraph 4(c) of the Policy the Respondent’s use of the domain name in connection with the offering of services has not been bona fide; the Respondent cannot reasonably have been commonly known by the domain name; and use of the domain name has been commercial and has not been legitimate or fair.

The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.

C. Whether the Domain Name Has Been Registered and Is Being Used in Bad Faith

In accordance with paragraph 4(a)(iii) of the Policy the Complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(iv) provides for a finding of bad faith where:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The evidence adduced by the Complainant, including animated screen captures, convincingly demonstrates the Respondent’s activity. Internet users received emails urging them to check their accounts by following a link to the website of the disputed domain name. This relied on the user being confused into thinking the website was associated with Banca di Roma. Via other keystrokes they were led to a fake website masquerading as Banca di Roma, itself copied from the Luxembourg website “www.bancaroma.lu” of Banca di Roma International, and then induced to divulge their confidential login details in the belief that these were being requested legitimately. In this way the Respondent gained knowledge of the user’s bank account and password thereby deriving the ability to transfer money from it fraudulently.

The Panel finds that the Respondent has intentionally attracted Internet users to its website for commercial gain by confusing users into thinking the website belonged to the Complainant. The Respondent has been attempting to perpetrate a fraud on bank customers by a well-known device known in current parlance as “phishing”. The Panel finds bad faith proven and finds for the Complainant in the terms of paragraph 4(a)(iii) of the Policy.

The circumstances listed in paragraphs 4(b)(i) - (iv) of the Policy are without limitation and bad faith may be found alternatively. For the Respondent to operate its device in the manner described, which included a fake version of the Complainant’s legitimate website, the Respondent must have been actually and fully aware, and more than constructively aware, of the Complainant’s famous trademarked name and the exact nature of its business. Notwithstanding that the disputed domain name is slightly different from the Complainant’s trademark, the trademark is nevertheless infringed, as remarked in Washington Speakers Bureau (above). Registration of a well known trademark of which the Respondent must have been aware is in itself sufficient to amount to bad faith (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Sociйtй des Hфtels Mйridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849), and the Panel sees an adapted trademark as included within the principle. The Panel finds bad faith proven additionally in this respect.

In summary, the Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s trademark in the terms of paragraph 4(a)(i) of the Policy; the Respondent does not have rights or legitimate interests in the domain name in the terms of paragraph 4(a)(ii) of the Policy; and the Respondent has registered and is using the domain name in bad faith in the terms of paragraph 4(a)(iii) of the Policy. The Complainant has proven all three elements required by paragraph 4(a) of the Policy and accordingly the Administrative Panel decides for the Complainant.

 

7. Decision

The Decision of the Administrative Panel is that the disputed domain name <bancroma.com> is confusingly similar to the trademark BANCA DI ROMA in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Respondent has registered and is using the disputed domain name in bad faith. In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bancroma.com> be transferred to the Complainant.


Clive N.A. Trotman
Sole Panelist

Dated: March 13, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0123.html

 

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