The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Studio Legale Perani, Italy.
The Respondent is George Papadakos of Mississauga, Ontario, Canada.
The disputed domain name <intesacanada.com> is registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2008. On October 8, 2008, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On October 9, 2008, Melbourne IT Ltd transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. 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 October 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 3, 2008.
The Center appointed Jane Lambert as the sole panelist in this matter on November 19, 2008. 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.
For the reason stated below, the Panel issued the following Procedural Order No. 1 on December 29, 2008:
“1. The Respondent shall file with the Center a written statement identifying the preparations (if any) that he may have made to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services exhibiting any draft web pages or other material to such statement not later than January 11, 2009.
2. The Complainant shall file with the Center a written statement:
(1) answering the Respondent's evidence (if any); and
(2) stating any evidence or reason to infer that the Respondent has registered and used the disputed domain name in bad faith beyond the evidence already submitted in the Complaint;
not later than January 18, 2009.
3. The Respondent may file with the Center a written statement answering any evidence or submissions that the Complainant may have filed pursuant to Paragraph 7.2.(2) not later than January 25, 2009.
4. Each statement shall be verified by the words “The Complainant (or, as the case may require the Respondent) believes that the facts stated in this statement are true” and shall be signed by that party.”
5. The time for delivering the decision shall be extended until February 8, 2009.”
The Respondent has failed to file a written statement as directed by the Panel. The Complainant has filed a written statement to which the Respondent has chosen not to reply.
The Complainant is an Italian public company which owns and controls the largest banking group in Italy and one of the largest in Europe. The group was formed by the merger of Banca Intesa S.p.A. with Sanpaolo IMI S.p.A. in 2006. The Complaint alleges that the group has 5,500 branches and 12 million customers in Italy, but a presentation on the group's website entitled “Intesa Sanpaolo Italian leader of European Scale” (which was last updated on December 1, 2008) claims 6,518 branches and 11.4 million customers. Both the Complaint and presentation agree that the group has interests in 34 countries though those countries do not appear to include Canada.
The Complainant has nevertheless registered the words INTESA and INTESA BANK CANADA with the Canadian Intellectual Property Office as trademarks for insurance, banking and other financial services in class 36 with effect from April 25, 2003 under registration numbers TMA641,178 and TMA640,760 respectively.
The only information about the Respondent on file is his name and address. The Respondent registered the disputed domain name on January 17, 2008. The Complainant has found no trademark registration corresponding to the domain name in the name of the Respondent and does not believe that he is commonly known as “intesacanada”.
A standard Yahoo “under construction page” with automatically generated lists of linked search terms and web sites appears at “http://www.intesacanada.com/”.
In accordance with paragraph 3(b)(xiii) of the Rules, the Complainant has submitted to the jurisdiction of the principal office of the concerned registrar (which, in this case, would be the state of Victoria and the Commonwealth of Australia) with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer the disputed domain name to the Complainant.
The Complainant claims the transfer of the disputed domain name on the grounds that:
- The domain name is confusingly similar to trademarks in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name was registered and is being used in bad faith.
The trademarks upon which the Complainant relies for its allegation that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights include those mentioned in paragraph 4 above. The only difference between the domain name and TMA640,760 is the inclusion of the word BANK in the trademark. The only difference between the domain name and TMA641,178 is inclusion of the word “Canada” on the domain name.
The Complainant submits that:
(1) The difference between the disputed domain name and TMA640,760 is negligible; and
(2) The decisions in America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713 and TPI Holdings, Inc. v. Autobuyline, WIPO Case No. D2000-1546 require the element “canada” in the disputed domain name to be disregarded.
The Complainant relies on the apparent absence of
(1) any trademark registration corresponding to the disputed domain in the name of the Respondent; and
(2) any goodwill or reputation accruing to the Respondent by reference to a trade name corresponding to the disputed domain name;
in support of its contention that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant alleges the disputed domain name was registered and is being used in bad faith in that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website.
The evidence upon which the Complainant relies for this contention appears to be the Yahoo “under construction page” (with its automatically generated lists of linked search terms and web sites) at “http://www.intesacanada.com/”. It adds that “[t]he Respondent's commercial gain is evident, since it is obvious that [its] sponsoring activity is being remunerated” though it does not disclose such evidence. It is certainly not obvious to the Panel that the Respondent has ever received, or is ever likely to receive, any money from such sponsorship.
Lastly, the Complainant says that the current use of the disputed domain name, which allows access to the websites of the Complainant's competitors, causes great damage to the Complainant, “due to the misleading of their present clients and the loss of the potential new ones.”
In the statement that it filed pursuant to paragraph 2 of Procedural Order No. 1, the Complainant notes the Respondent's failure to file evidence of any preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
It restates its contention that the name INTESA is “among the most well known trademarks in the banking and finance field, not only in Italy and in Europe, but also all over the world”.
It complains again of the automatically generated lists of linked search terms and web sites that appear on the Yahoo “under construction” some of which may lead to the Complainant's competitors. It refers to Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666 and Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 and cites long passages from the decision in mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 from which the Complainant seems to suggest that there is a duty, certainly upon domainers (speculators in domain names) and possibly upon all respondents, to take care not to allow a domain name to be used in a way that attracts sponsored links and searches tied directly to the value of the complainant's mark in which such respondent would not have rights or legitimate interests.
Relying on Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267, the Complainant argues that it does not lie in the Respondent's mouth to say that it has no control over the links that are generated automatically since it could easily choose a page that does not generate such links.
Relying on Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857 and Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, the Complainant argues that for the purposes of paragraph 4(b)(iv) of the Policy it is irrelevant whether the Respondent or a third party derives commercial gain from the generation of sponsored links.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy requires a complainant to prove the following:
(i) the disputed 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.
In an administrative proceeding, the complainant must prove that each of those three elements is present.
Because of the way the Complainant has put its case and also because it was necessary to make a Procedural Order, the Panel makes the following preliminary observations:
First, a domain name (or perhaps more accurately, the goodwill that accrues to a domain name) is a property right which, in some cases, can be exceedingly valuable. The right to property is a basic human right that is enshrined in Art 17(1) of the Universal Declaration of Human Rights and the laws of all civilized countries. Art 17(2) of the Universal Declaration recognizes the right of everybody in the world, including the Respondent, not to be deprived arbitrarily of his or her property. Sometimes the rights of a domain name owner conflict with those of another property owner such as the registered proprietor of a trademark. To resolve such conflicts, every domain name registration agreement provides circumstances in which the domain name can be transferred or canceled. Such a transfer is, of course, subject to any decision to the contrary by the courts of the jurisdiction to which a complainant submits but in practice very few transfer orders would appear to have been challenged in the civil courts. Consequently, an order to transfer a domain name may lead to the confiscation of a valuable property right. It is therefore incumbent upon a panel never to cut corners when applying paragraph 4 of the Policy. In most cases, it is immediately clear whether or not a transfer or cancellation of a domain name registration should be ordered, but a panel must still test the evidence against the paragraph 4 of the Policy.
Secondly, paragraph 4 of the Policy makes clear that the burden of proof rests squarely upon a complainant. A respondent need say or do nothing unless and until the complainant has made out a prima facie case. The Policy and, particularly paragraph 4(c), afford an opportunity to a respondent to answer such case by, for example, proving that he or she has rights or legitimate interests in a domain name, but he or she is not obliged to take advantage of that opportunity, particularly if the respondent has reason to believe that there is no case to answer. Although this point ought to be self-evident, the Panel mentions it because the Complainant observes in its further submissions in reply to Procedural Order No. 1 that “the Complainant presumes that the Respondent failed again to prove his bona fide in the registration and use of the contested domain name.” That observation suggests that the Complainant believes that the burden rests with the Respondent and not with the Complainant despite the very clear words of the paragraph 4 of the Policy. If that is the case, it is a misconception on the Complainant's part which may well explain the scantiness of the evidence of bad faith that the Complainant has adduced not only at the commencement of this case but even in response to Procedural Order No. 1.
Thirdly, a panel is required by paragraph 7 of the Rules to be impartial and independent in dealing with the parties. He or she must not assume the worst of a respondent merely because the respondent is an individual and the complainant is a large and powerful bank. For example, a panel must not automatically assume bad faith on the part of a respondent merely because he parks his domain on a page that generates automatically sponsored links that may sometimes lead to a complainant's competitors. That may be the respondent's intention but in certain fairly limited circumstances it may also be an honest mistake made by a member of the public with little or no experience of web design who is quite unaware that the “under construction” page may generate sponsored links to the complainant's competitors. A case in point is Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241. In that case, the complainant had registered the word ELEPHANT as a UK trademark for insurance services while the respondent had used the domain name <elephant.com> for a website about elephants. The respondent had contracted with Google to display random advertisements on his site from which he no doubt derived commercial gain. The advertisements that were presented to British visitors to the site included advertisements for the complainant's competitors. The respondent may have had no means of controlling the content of those advertisements and was not even aware of them. Even though all the requirements of paragraph 4(b)(iv) had been met, the three panelists unanimously dismissed the complaint on the ground, inter alia, that the respondent had not acted in bad faith.
Having said that, a panel must be astute not to dismiss what may well turn out to be a valid complaint simply because of the way in which the complaint has been put and/or because of the respondent's failure to participate in the proceedings.
Upon reading the Complaint, the Panel was not satisfied that the Complainant had proved its case on the balance of probabilities. Two points troubled her in particular:
(1) the landing page of the disputed domain name was a standard Yahoo “under construction” page; and
(2) the only evidence of registration and use in bad faith were the lists of linked search terms and websites that appear automatically on Yahoo “under construction” pages.
The significance of the “under construction” page was that it raised at least the possibility of the Respondent's building a website. If that was the case and if such website was to be used for the bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy, the Respondent may have a possible defense to the Complaint since he would be able to demonstrate rights or legitimate interests in the disputed domain name. The Panel might reasonably have discounted that possibility had there been other evidence of bad faith on the part of the Respondent, such as offer to ransom the domain name or a pattern of conduct, but in this case there is none.
However, although the Complainant had failed to prove its case, the Panel was reluctant to dismiss the Complaint out of hand lest her decision might drive a coach and horses through the Policy. She appreciated that the linked search terms and websites generated automatically by a Yahoo “under construction” page could be just as annoying to a trademark proprietor (and hence just as likely to prompt the paying of an undeserved ransom) as those generated by a parking page on a domain name trading site.
The Panel considered whether she could properly draw any adverse inferences against the Respondent from his failure to respond to the Complaint and concluded that she could not. Paragraph 4(a) of the Policy imposes the burden of proof on the Complainant. A respondent is under no duty to say anything if he thinks there is no case to answer. And the respondent could be forgiven for thinking that there was no case to answer here. The Panel decided to probe whether there was a defense to the Complaint under paragraph 4(c) and also whether the “under construction” landing page was intentional or inadvertent by her Procedural Order No. 1.
The Panel reasoned that had the Respondent made demonstrable preparations to use the domain name, or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services, there was likely to have been some documentation such as copy or drawings or maybe correspondence with a web designer which the Respondent could produce quickly and easily. That is why the Panel directed the Respondent to file with the Center a written statement identifying any preparations that he may have made to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services exhibiting any documentary evidence to such statement by January 11, 2009.
Of course, had the Respondent filed such evidence, the Complainant would have been entitled to challenge it. Also, because of the Policy considerations that the Panel mentions above and the Complainant's failure to satisfy her that the Respondent had acted in bad faith, she thought it right to give the Complainant another opportunity to bolster its case.
Since the case that the Respondent might then have to meet could be different from the one set out in the Complaint, natural justice (namely the principle of audi alteram partem) required the Respondent to be given an opportunity to answer such further evidence or submissions as the Complainant might file.
There is no doubt that the domain name <intesacanada> is similar to the trademark INTESA BANK CANADA. The only question is whether such similarity is confusing.
As a bank with at least 11.4 million customers and 6,518 branches in Italy and interests in 34 countries around the world, INTESA is a very strong brand, particularly in Italy and the former satellites of the Soviet Union (now the Russian Federation). There is no evidence on the file that any other business is known as INTESA anywhere in the world. Even if there were another company by such name, members of the public, at least in Italy, would be likely to associate INTESA with the Complainant bank just as members of the public in England and Wales associate the sign BARCLAYS with Barclays Bank PLC notwithstanding that “Barclay” (in various spellings) is a common English surname, and there are several other businesses that trade under the name “Barclays” in England.
The only respect in which the disputed domain name differs from the Complainant's trademark is that it omits the word “bank”. Companies often abridge their trademarks or corporate names in their domain names. Barclays Bank Plc, for instance, has registered <barclays.com> as its domain name. The public is aware that domain names are mnemonics and, like all mnemonics, the shorter they are the easier they are to remember. Accordingly, the omission of the word “bank” does nothing to diminish association of the domain name with the Complainant's trademark.
For these reasons, the Panel finds that the first element is present.
Paragraph 4(c) of the Policy provides the following guidance to respondents:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(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.”
The Complainant has addressed the second question, namely whether the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights, and to a certain extent the third, but not the first.
The Panel accepts the Complainant's evidence that there are no trademark registrations corresponding to the disputed domain name in the Respondent's name and that the Respondent is not commonly known as “Intesa Canada”.
The problem in this case is that the Respondent has parked the disputed domain name not on a link farm or domain name dealing site but on a website hosting page of the well-known Internet service provider, Yahoo. The landing page (that is to say, the page where the URL appears) is headed with the words “This site is under construction” and those words are accompanied by a photograph of the legs and arms of a casually dressed individual sitting or crouching on a parquet floor typing on a computer. Immediately below the photograph are the words “Why am I seeing this page? Learn more” and “Are you the owner of this domain? Find out how to replace this page.”
There is a hypertext link on the words “Learn more” and if one clicks those links, one is led to a page with the following information:
“Why am I seeing this page?
The page you're seeing is an ‘Under Construction' page, a standard placeholder web page that Yahoo! created for the owner of the web address at which it appears. The temporary home page will remain at this web address (domain) until the owner chooses to replace it with a web page or site of his own.
Some standard Yahoo! ‘Under Construction' pages also display lists of linked search terms and web sites. These lists include relevant and/or sponsored search results relevant to the domain of this page and may be used by site visitors to find complementary information on the Web.
Are you the owner of this domain? Remember that you can replace your temporary home page with a personalized web page or site anytime. For help getting started, please choose the link associated with your Yahoo! service below:
- GeoCities Pro
- Domains, Business Mail, or Custom Mailbox
- Web Hosting
- Merchant Solutions”
There is also a hypertext link on the words “Find out” and if one clicks, that link one is led to another page which displays the following text:
How do I replace the “Under Construction” page at my domain?
This answer applies to Yahoo! Domains, Custom Mailbox and Business Mail.
When you signed up for your service, we automatically created a placeholder ‘Under Construction' page for you at your web address. You can replace this default page by creating a customized page of your own (also called a starter web page). With a starter web page, you can enter your contact information into one of our templates to create an attractive, professional welcome to your visitors until you're ready to build a full web site. View a sample.
To build your starter web page:
1. Sign in to your Business Control Panel. (If you have not yet signed in with your Yahoo! ID and password, you'll be prompted to do so here.)
2. Click ‘Domain Control Panel.'
3. In the ‘Starter Web Page' area, click ‘Edit Starter Web Page.' The Starter Web Page Wizard will open, which will guide you through building your page. Please note: The starter web page is not a full web site, so you will not be able to add pages, alter our templates, or add your own images or HTML. To fully customize your web presence, you'll want to upgrade to Yahoo! Web Hosting.
You can also divert your site visitors from your ‘Under Construction' page by forwarding your domain to another web site you specify. Visitors to your web address will not see your placeholder page; instead they will see the page where you have forwarded your domain. Learn more about domain forwards.”
Paragraph 1 of Procedural Order No. 1 required the Respondent to file such evidence as he had of preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. He has not complied with that requirement. The Panel is entitled to infer from such non-compliance that such evidence does not exist and that he does not intend to use the disputed domain name for a bona fide offering of goods and services.
Accordingly, the Panel finds that the second element is present.
The term “bad faith” is defined neither by the Policy nor the Rules. However the term occurs in legislation in various contexts in both common law and civil law systems.
Probably the most relevant of those contexts for construing the Policy is European Community trademark law. Art 3.2.(d) of the Trade Marks Directive (DIRECTIVE 2008/95/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of October 22 2008 to approximate the laws of the Member States relating to trade marks) requires EC member states not to register or, if registered to declare invalid, a trademark “where and to the extent that the application for registration of the trade mark was made in bad faith by the applicant.” Similarly, Art 51(1)(b) of the Council Regulation (EC) No 40/94 (Community Trade Mark Regulation) provides that a Community trademark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings “where the applicant was acting in bad faith when he filed the application for the trade mark.” In neither the Directive nor the Regulation are the words “bad faith” defined.
Cases have come before the courts of the member states and at OHIM (the EC trademarks registry) where those provisions have had to be applied. There appears to be a consensus that “bad faith” connotes not just dishonesty but also “some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined” (per paragraph [166] of Mr Justice Arnold's recent decision in Hotel Cipriani SRL and Others v. Cipriani (Grosvenor Street) Ltd and Others [2008] EWHC 3032 (Ch) (December 9, 2008).
In determining whether or not there has been bad faith, both the English courts and OHIM have applied a two-prong test. First, the tribunal ascertains what the person who is alleged to have acted in bad faith knew about the transaction or other matter in question. Next it decides whether in the light of that knowledge, that person's conduct is dishonest judged by ordinary standard of honest people (see Professor Ruth Annand's analysis in AJIT WEEKLY TRADE MARK [2006] R.P.C. 25 at paragraph [41] which was cited with approval by Mr. Justice Arnold in Cipriani at paragraph [166]).
This approach is entirely consistent with paragraph 4(b) of the Policy which provides a number of circumstances which may evidence registration and use of a domain name in bad faith. These include, but are not limited to:
(i) circumstances indicating that the respondent has registered or 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; or
(ii) 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; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his or her 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 the respondent's web site or location or of a product or service on the respondent's web site or location.
Each of the above circumstances requires a finding as to
- the respondent's state of mind (namely his or her purpose in paragraphs (i) to (iii) or intention in paragraph (iv)) in registering and using the domain name and
- a determination as to whether such purpose or intention is dishonest or otherwise below what Mr. Justice Arnold called “the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined”.
It is important to note that those circumstances are only evidence of registration and use of a domain name in bad faith and are not conclusive. Had ICANN intended to bind panelists to find bad faith whenever one or more of those circumstances occur, it could have inserted the adjective “conclusive” before the noun “evidence”. The obvious reason for omitting that adjective is that it is possible to envisage cases where a respondent falls entirely within one or more of the situations specified in paragraphs 4(b)(i) to (iv) but is nevertheless innocent of bad faith. A good example of where that actually occurred is Admiral Insurance Services Limited, supra which the Panel has already mentioned above.
The Complainant's case is that the Respondent “has intentionally attempted to attract, for commercial gain, Internet users to his 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 his web site or location or of a product or service on his web site or location” within the meaning of subparagraph (iv).
Had the Respondent parked his domain name on a site that would share with him its revenue from sponsored links, this would have been a very straightforward case as all the requirements of paragraph 4(b)(iv) would have been satisfied. The other probanda of paragraph 4(b)(iv) are certainly there in that visitors are likely to be attracted to the site by the use of a domain name that is similar to the trademarks and corporate name of one of the biggest banking groups in the world. Such visitors might include Italians planning a holiday or doing business in Canada or indeed Canadians contemplating a holiday or business in Italy. The difficulty in this case is that there is no evidence that the Respondent has received anything, or could expect to receive anything, from the sponsored links and searches. Any benefit from such sponsorship would go to Yahoo and Yahoo only.
In Port Aventura, S.A. v. Fred McCaw c/o Chelsey McCaw Publishing, Inc., WIPO Case No. D2008-0177, the panel acknowledged that paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users for commercial gain but expressed the view that “this gain does not need to be derived by the Respondent himself” but, unfortunately, did not explain his reasoning. Such a construction is unlikely for the following reasons. First, as the rest of the paragraph is addressed to the person who applies to register a domain name, it would be odd for the phrase “for commercial gain” to refer to anyone other than the domain name registration applicant. Secondly, if it really is immaterial whether the commercial gain accrues to the domain name applicant or to a third party, it is far from clear why commercial gain on anybody's part should be relevant. Thirdly, if the conduct complained of has to constitute bad faith (that is to say dishonesty or conduct below the acceptable standard of behaviour) and that is much more likely to occur where the Respondent derives some commercial gain than otherwise.
On the other hand, the fact that a third party rather than the Respondent derives revenue from the generation of advertisements for competing services does not necessarily save the Respondent from a finding of bad faith in registration and use (see Port Aventura, S.A., supra, Villeroy & Boch AG, supra and Sanofi-aventis v. Edith Van Der Linden, WIPO Case No. D2006-0372). There are at least two very good reasons why that should be. First, as the majority of the panelists noted at paragraph 7.C. of Grisoft, s.r.o. v. Original Web Ventures Inc., WIPO Case No. D2006-1381, “[t]he Respondent is ultimately responsible for the content of the website generated by DomainSponsor's technology.” That is because the last sentence of paragraph 2 of the Policy makes clear that it is the applicant's responsibility to determine whether the domain name registration infringes someone else's rights. Secondly, the Complainant's task is not to tick boxes to prove one or more of the situations listed in paragraph 4(b) but to prove bad faith on the part of the Respondent. The situations in paragraph 4(b) are but indications of bad faith. Just as it is possible to fall within a situation where the requirements of one of those paragraphs is satisfied and yet be innocent of bad faith as occurred in Admiral Insurance Services Limited, supra, so it is possible to fall outside all the situations in paragraph 4(b) but still act in a way falling short of the standards of acceptable behaviour as occurred in the cases cited above.
At first blush, simply relying on the proposition that a person who registers a domain name is responsible for the content of the landing page may be attractive but it would be unsafe and unsatisfactory for several reasons. First, and most importantly, “bad faith” requires a finding of dishonest intent or at least an intention to do something that most in the industry would regard as unacceptable rather than mere inadvertence. It is clear from the European and English cases that Mr. Justice Arnold reviewed in Cipriani that a two-prong subjective/objective test for “bad faith” is to be applied. Applying only an objective test will simply not do. On a careful analysis of the cases it appears than in practice a two-prong approach is generally applied in administrative proceedings under the Policy as it under in the general law. In Villeroy & Boch AG, supra and Sanofi-aventis, supra, for example, there were other materials that enabled the panel to determine bad faith beyond peradventure. Any other approach would risk injustice in circumstances similar to those in Admiral Insurance Services Limited, supra. Lastly, a single prong objective test reverses the burden of proof from the Complainant to the Respondent.
If this Complaint is to succeed it must be on the basis that the appearance of a Yahoo “under construction” page with sponsored links and searches that leads visitors to the site to competitors of the Complainant had been within the Respondent's contemplation. Had the Respondent produced evidence that he was busily designing a website for a Canadian business that did not infringe any of the Complainant's intellectual property rights blithely unaware that the advertisements on the landing page might injure the Complainant when he was served there would have been no bad faith. However, because he has not produced any such evidence despite the opportunity to do so, the Panel has to do the best she can with the materials before her. This is a very close run thing but the Panel finds on the balance of probabilities that the Respondent was well aware that the appearance of an “under construction” page has a nuisance value because of the sponsored links and searches but nevertheless decided to keep the disputed domain name where it is in the hope that the Complainant or someone else would offer to buy the domain name.
In the circumstances, the Panel finds that the third element is present.
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, <intesacanada.com>, be transferred to the Complainant.
Jane Lambert
Sole Panelist
Dated: February 12, 2009