WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Bank AG v. Audrey Bessey
Case No. D2006-1037
1. The Parties
The Complainant is Deutsche Bank AG, London, United Kingdom of Great Britain and Northern Ireland, represented by Allen & Overy, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Audrey Bessey, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dbmortgages.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 15, 2006. On August 16, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. Later on August 16, 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 for the administrative, billing, and technical contact. 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 August 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2006.
The Center appointed Warwick A. Rothnie as the Sole Panelist in this matter on October 5, 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 Complaint asserts the following facts, which have not been disputed. Unless stated otherwise, the Panel finds them proved for the purposes of this dispute.
The Complainant is Germany’s largest bank. It was founded in Berlin in 1870 and today offers financial services in 73 countries from 1,588 branches. In 2005, it had over 13.4 million retail customers and, through its investment banking business, over 54,000 corporate clients.
The Complainant has operated in the United States since at least as early as 1978.
The Complainant has promoted its services around the world, including the United States since 2001, under the sign “DB”, alone or in combination with other terms, including DB Investments, DB Platinum and DB Real Estate.
Amongst other things, the Complainant has secured trademark registrations for:
Sign |
No |
Country |
Services (summary only) |
DB |
2823253 |
USA |
financial services, telecommunications in financial affairs and computer programming |
DB |
30220318 |
Germany |
|
dbMortgages |
2406569 |
UK |
Printed matter, financial services, insurance, mortgage services, loan services |
DB Real Estate |
2791230 |
USA |
Business management services, financial and monetary services, banking services in the nature of mortgage, telecommunications services |
DB Investments and device |
3055706 |
USA |
Business services, financial services, electronic mail services, computer services, development of computer programs |
DB platinum |
79016092 |
USA |
Financial affairs, telecommunications in financial affairs, computer programming |
The Complainant has provided evidence that it has 34 other trademark registrations in the United States based on the sign “DB”. It also claims, but has not provided evidence of, ownership of numerous similar marks in Germany and elsewhere.
The Complainant has registered many domain names based on the sign “DB” including <db.com>, <dbbrand.com, <dbgroup.com>, <dbprivatebanking.com>, <db-mortgages.co.uk> and, through a subsidiary, <dbberkshiremortgage.com>.
The Complainant states that it has been providing mortgage services in Germany for many years and the United States since 2000, amongst other countries. Since its adoption of the DB brand, the mortgage services have been promoted under that sign.
According to the whois information provided by eNom, the Respondent registered the domain name <dbmortgages.com> on May 25, 2005.
The domain name currently resolves to a website which features a headline banner “dbmortgages.com” and a device. The website also has a number of links to a variety of mortgage providers as well as a rotating series of articles related to mortgage products.
5. Discussion and Findings
There has been no Response. As noted above, the Center has forwarded the Complaint to the Respondent by email and courier to the addresses which the Registrar, eNom, has confirmed are the correct details for the domain name as registered. The Enom, Inc. Registration Agreement, by which the Respondent registered the disputed name, obliges the Respondent to keep “current, complete and accurate” the registrant’s name, postal address, e-mail address, voice telephone number and, where available, fax number. Consequently, as the Panel noted above, the Panel is satisfied that the Center has taken all reasonable steps to bring the Complaint to the Respondent’s attention and the Respondent has had an adequate opportunity to put his, her or its case in rebuttal of the Complaint.
Rules 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response. This is not a simple “rubber stamping”, however, as rule 15(a) directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.
Accordingly, 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
(iii) The domain name has been registered and is being used in bad faith.
The Panel deals with each of these elements in turn.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it?
The Complainant has proved the ownership of the registered trademarks in Germany and the United States for DB. It has also proved ownership of the registered trademarks in the United Kingdom and the United States, which include the sign “DB” set out above.
In light of this proof, it is unnecessary for the purposes of this decision to consider the Complainant’s claims of wider ownership including common law rights.
The question of confusing similarity for the purposes of the Policy requires a comparison of the domain name to the trademark in which the Complainant has proved rights. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: See for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. The question of the scope of the Complainant’s trademark rights may of course be relevant to the issues under paragraphs 4(b) and 4(c) of the Policy.
The difference between the domain name and the two registrations for DB is the addition of the term “mortgage” and the “.com” gTLD to the domain name. The addition of such generic material can be safely disregarded for the purposes of this comparison. See for example Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation vs. DiscoverNet, Inc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493. Although it hardly needs citation for the proposition that “mortgage/s” is generic, see Expedia, Inc. v. Miles Pennella, WIPO Case No. D2001-1416; HSBC Holdings Plc v. domainchronicle, WIPO Case No. D2002-1173; HSBC Holdings Plc v. Philip McCarthy MCG/First Direct Mortgages Limited, WIPO Case No. D2002-0644.
Accordingly, the Panel finds that the domain name is confusingly similar to the Complainant’s DB trademarks. It is virtually indistinguishable from the dbmortgages trademark. As the domain name consists of “db” plus generic terms, it is also confusingly similar to the Complainant’s other registered trademarks identified above – DB platinum, DB real estate and DB Investments: Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006; Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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.”
These are not an exhaustive enumeration of rights or legitimate interests; they are examples only.
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.
It is implicit in the Complaint that the Complainant has not authorised the Respondent to use the domain name. The domain name is not derived from the Respondent’s own name. It is also being used for a website that provides links to services provided by persons unrelated to the Complainant which are the same as, of the same nature as, those covered by the Complainant’s registered trademarks in the United States where, according to the whois details, the Respondent is located.
Cumulatively, these factors raise a clear prima facie case that the Respondent does not have any rights or legitimate interests in the domain name.
The Respondent has not sought to rebut that prima facie case in any way.
Accordingly, the Panel finds that the Complainant has established that the Respondent does not have any rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the disputed Domain Name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 Respondent is located (according to the whois details s/he provided to eNom) in the United States where the Complainant has numerous registered trademarks and a substantial business presence.
The Respondent is using the domain name for a website, which provides links to services competitive with the Complainant’s services.
The website to which the domain name resolves displays the letters “db” in a larger font than the word “mortgages” and the letters “db” are further emphasised in bold. Further, the banner heading on the website includes a device component, which takes the form of a box or square with a diagonal line from the bottom left corner to the top right corner. This device component is almost identical to the device component in the DB Investments registered trademark and, in addition, the Complainant has registered its device as a trademark in its own right in the United States (No. 2608877).
The Respondent has not made any attempt to rebut the Complainant’s allegations that the domain name was registered and is being used in an attempt to appropriate the Complainant’s goodwill or to profit from the resemblance of the domain name to the Complainant’s trademarks.
There can be little doubt that the domain name was registered in bad faith.
6. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <dbmortgages.com> be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Dated: October 14, 2006