WIPO Domain Name Decision: D2010-0737

The Complainant is Credit Europe Bank N.V. of Amsterdam, The Netherlands, represented by Novagraaf Nederland B.V., Netherlands.

The Respondent is is Peter Yu of Hong Kong, SAR of China represented by John Berryhill, Ph.D. esq., United States of America.

2. The Domain Name and Registrar

The disputed domain name <crediteurope.com> is registered with Backslap Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2010. On May 7, 2010, the Center transmitted by email to Backslap Domains, Inc. a request for registrar verification in connection with the disputed domain name. On May 7, 2010, Backslap Domains, Inc. transmitted by email to the Center its verification response confirming that:

However, the Registrar disclosed updated contact information for the disputed domain name. The Center sent an email communication to the Complainant on May 12, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 17, 2010.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for any Response was June 8, 2010. The Response was filed with the Center June 9, 2010.

On June 23, 2010 prior to the appointment of the Panel, the Complainant submitted a proposed Supplemental Filing. On June 30, 2010, the Respondent submitted a supplemental filing in response to the Complainant's proposed supplemental filing.

The Center appointed Warwick A. Rothnie, Willem J. H. Leppink and Richard G. Lyon as panelists in this matter on July 5, 2010. The Panel finds that it was properly constituted. Each member of 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 was founded in 1994 in the Netherlands. It provides banking and financial services in a number of countries.

According to the Complainant's website,¹ when the Complainant was founded in 1994 it was part of Fiba Holding AS and traded under the name “Finansbank”. Further, it was not until after the sale of its Finansbank AS Turkey division to the National Bank of Greece in 2006 that the Complainant was rebranded to become Credit Europe Bank NV.

The Complainant has submitted evidence of a number of registered trademarks that include the words “Credit Europe,” the earliest of which were applied for on 25 and 28 September 2006. One of these is Benelux registration No 808175 for Credit Europe with a device of a diamond within a circle separating the word “Credit” from “Europe”, which is registered for a range of goods and services in International Classes 9, 16, 35 and 36. Another is Benelux registration No. 808230 for CreditEurope Bank with the same “diamond in a circle” device separating the words “Europe” and “Bank”. The Complainant also has International Registrations flowing from these trademarks, although protection has been refused in some of the countries in which it was sought.

The whois record indicates that the disputed domain name was registered in November 2001. However, the Respondent states that it first obtained the registration on October 15, 2003.

The Respondent, or a company associated with him, has a business providing a range of Internet services. It would appear from other UDRP decisions referred to by both the Complainant and the Respondent that the Respondent, or his company, has registered other domain names for use in connection with search portals and the generation of advertising revenues.

Prior to the Complaint being filed, the disputed domain name resolved to a website which contained material relating to the financial or credit standing of various European countries. The Complainant contends, and the Respondent does not dispute, that this material has simply been extracted from a website operated by the British Broadcasting Corporation.

Before the Complaint was filed, representatives of the Complainant sought to negotiate purchase of the disputed domain name from the Respondent. In response to the Complainant's offer of EUR 5,000, the Respondent requested payment in the range of EUR 200,000. Further negotiations in which the Complainant offered substantially higher amounts resulted in only a small reduction by the Respondent and no agreement was reached.

5. Discussion and Findings

A. Procedural matters

Before addressing the substantive requirements under the Policy, the Panel deals with two procedural matters.

First, the Response was received by the Center in Geneva some five hours after midnight on the due date for its submission. The relevant record of the email communication indicates that the Response was transmitted on June 8, 2010 in the United States where the Respondent's counsel is located. Accordingly, the Response was timely transmitted for the purpose of paragraph 2(f)(i) of the Rules, bearing in mind the time difference between Switzerland (where the Center is located) and the United States (where the Respondent's counsel is located). In the circumstances, therefore, the Response was filed within time and the Panel accepts the Response as part of the Record.

Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.

Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent's position on a particular point was clear.

In this case, the Complainant's proposed Supplemental Filing does seek to respond to issues going to the heart of the dispute. The central matter raised in the Response is whether the Complainant commenced using its trademark in 1994 as the Complaint can be read as suggesting or not until 2006 or 2007. The Response contends for the latter date, citing supporting evidence. These were matters which were well within the Complainant's knowledge before the Complaint was prepared and go to the foundation of its case.² This would normally be a proper basis for rejecting the proposed supplementary filing, however, the allegations made in the Response properly called for explanation by the Complainant. Accordingly, the Panel admits the Complainant's Supplemental Filing. While it is not strictly necessary, the Panel also admits the Respondent's Supplemental Filing in the interests of fairness.

B. Substantive consideration

Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:

(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

Typically, a Panel considers each of the three requirements under paragraph 4(a) of the Policy in turn. Because paragraph 4(a)'s requirements are conjunctive, however, no matter what the findings under the first and second sub-paragraphs, the Complainant must fail under the requirement to demonstrate that the disputed domain name has been both registered and used in bad faith.

The central fact in this case is that the Respondent registered the disputed domain name in October 2003. That is almost three years before the Complainant applied to register the trademark rights on which it relies. Moreover, the Complainant does not in its Supplemental Filing contest the Respondent's allegation that the Complainant did not commence using the name “Credit Europe” as, or as part of, its trading name until 2007. The Supplemental Filing instead proceeds on the basis that the Response has correctly identified the date the Complainant commenced using the Credit Europe name and branding. Hence, the Respondent also registered the disputed domain name more than three years before the Complainant actually adopted its current corporate and trading name.

Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right.

In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant's potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant's enterprises.

Having regard to the timing of the registration of the disputed domain name and the Complainant's adoption of the “Credit Europe” name and branding, there cannot be and is not any suggestion that the Respondent was aware of the Complainant's trademark rights or otherwise adopted the disputed domain name to take advantage of the Complainant's rights.

In its Supplemental Filing, the Complainant draws attention to its very substantial operations over a number of years now by reference to “Credit Europe Bank” and refers to the large number of domain names based on “crediteurope” or “crediteuropebank” which it has registered since 2006/2007. It states further that there is a significant volume of traffic going to the website which the disputed domain name resolves to which is presumably misdirected or which the Complainant contends is otherwise causing harm to the Complainant's business. It contrasts the nature of the Respondent's business and use of the disputed domain name to the scale and nature of the Complainant's activities. The Complainant then submits that it is being disproportionately harmed by the Respondent's retention and use of the disputed domain name, contending:

It should be clear that my client's interests are more important and carry bigger weight than the interests of the Respondent, and therefore it is justified if the domain name is transferred to [it].

These submissions are predicated on a misunderstanding of the Policy. The Policy is limited in its operation. It requires that the disputed domain name be both registered in bad faith and used in bad faith.

While this Panel accepts that the way in which a domain name is used may in appropriate cases lead to an inference that the domain name was also registered in bad faith, it is nonetheless necessary to be able to infer that the registration was in fact in bad faith at the time of registration. See e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470 and the earlier decisions referred to in that decision.

For the reasons already explained, the record in this case does not establish that the disputed domain name was registered in bad faith. Accordingly, the Complainant cannot establish the third requirement under the Policy.

6. Decision

Warwick A. Rothnie Presiding Panelist
Willem J. H. Leppink Panelist	Richard G. Lyon Panelist (Concurring)

I join the Panel's opinion as to why the Complaint must be denied. Respondent registered the disputed domain name three years or more before Complainant began using its current name, the name that provides the trademark upon which the Complaint is based. I write separately because, unlike my colleagues, I believe the filing of the Complaint in these circumstances requires a finding by the Panel “that the Complaint was brought in bad faith” and “constitutes an abuse of [this] administrative proceeding.” Rules, paragraph 15(e).

Several undisputed objective facts require such a finding. The first of these is that Complainant has misled the Panel in its description of the facts upon which the Complaint is based by not even mentioning that it did not begin using its current Credit Europe designation until 2006 or 2007. Especially since Complainant affirmatively pleads that it has been in business since 1994, this is an inexcusable omission that is misleading in the extreme. To my mind this omission – crucial to the merits of Complainant's case - cannot be squared with Complainant's certification, required by paragraph 3(b)(xiv) of the Rules, that “that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, . . .”

The second such fact is that Respondent's registration of the disputed domain name predates Complainant's first use of its current name and consequently any trademark rights in Credit Europe by several years, a fact that Respondent does not and perforce cannot deny. As the Panel notes, Policy precedent on this express subject is unmistakably clear and has been for many years, to the point of becoming a Consensus View in the WIPO Overview. Complainant, again in breach of its certification under paragraph 3(b)(xiv) that “the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by good faith reasonable argument,” makes no argument as to why the Panel should depart from this settled Policy precedent. That fact alone would suffice to justify a finding of Reverse Domain Name Hijacking. See Genomatix Software GmbH v. Intrexon Corporation, WIPO Case No. D2010-0778; Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598.

Finally, and in my opinion the most troubling aspect of this proceeding, is the premise upon which Complainant pitches its case. This too is an undeniable fact. In Complainant's own words: “my client's interests are more important and carry bigger weight than the interests of the Respondent, and therefore it is justified if the domain name is transferred to [it].” Bluntly stated, Complainant, or Complainant's representative, seems to believe not only that under some inchoate and undisclosed standard that Complainant has a greater entitlement to the domain name than Respondent, but also that this belief justifies relief in a UDRP proceeding. This latter assertion of course has no foundation in the Policy, and its use constitutes a flagrant abuse of the entire UDRP process. In a proceeding in which live testimony, cross-examination, and a record fully developed through discovery are ordinarily prohibited, a panel has no basis upon which to evaluate each party's respective “interests” in a domain name beyond determining whether the three elements of paragraph 4(a) of the Policy have been met. For a panel to presume to engage in weighing each party's entitlement based upon alleged business uses would far exceed the very limited brief given by the Policy and the Rules.

The Policy has been in force for more than a decade and the thousands of cases decided under it now constitute a workable body of (to use a legal term) precedent. In my opinion any complainant, and even more so any professional representative of a complainant, should be at least minimally versed in the Policy, the Rules, their scope, and their limits. It is no excuse that a party or its representative is unfamiliar with clear Policy precedent, much less the clear language of the Policy and the Rules themselves. The Policy's strict timelines, limited pleadings, and avoidance of lengthy and expensive discovery may well tempt a complainant into filing a UDRP complaint as a less expensive, quick-and-dirty alternative to an infringement action or other legal claim. That appears to me to be exactly what Complainant or its representative has attempted in this case.

Such conduct deserves the limited censure available to the Panel under the Policy and the Rules, if only to deter similar conduct in future. I would include a finding in the Panel's opinion that the Complaint was brought in bad faith and is an abuse of this administrative proceeding.

¹ http://www.crediteuropebank.com/fb/sites/com/en/about/corporate_governance/History/, invoked by the Respondent in the Response for both points and not disputed by the Complainant in its proposed Supplemental Filing.

² One Panel member would disallow the proposed Reply on this basis, and disallow Respondent's supplemental filing as unnecessary.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Credit Europe Bank N.V. v. Peter Yu

Case No. D2010-0737

1. The Parties