WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

International Bank For Reconstruction and Development d/b/a The World Bank v. Yoo Jin Sohn

Case No. D2002-0222

The Complainant is the International Bank For Reconstruction and Development d/b/a The World Bank, an agency of the United Nations, whose address is 1818 H Street, N.W., Washington, D.C, 20433, United States of America. The Complainant is represented in this proceeding by Peter J. Riebling, Esq., Arter & Hadden LLP, 1801 K Street, Suite 4000K, Washington, D.C. 20006-1301, United States of America.

The Respondent in this proceeding is Yoo Jin Sohn, an individual whose address is P.O. Box 5503 CHRB, Saipan, MP96950, MP (Northern Mariana Islands), United States of America.

The domain name in dispute is <worldbank.net>.

The registrar for the disputed domain name is Network Solutions, Inc. , 21355 Ridge Top Circle, Lakeside 3, Dulles, Virginia 20166, United States of America.

This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).

The Complaint was filed on March 6, 2002. On March 8, 2002 the Center sent a Request for registrar verification to Register.com, the registrar of the disputed domain name referred to in the Complaint. On March 18, 2002, the Center received a registrar verification response which indicated that the correct registrar for the disputed domain name is Network Solutions, Inc.

On March 19, 2002 the Center wrote to the Complainant and requested that the Complaint be amended to reflect the correct registrar of the disputed domain name. On March 22, 2002 the Complainant submitted an amended Complaint changing the name of the registrar to Network Solutions, Inc.

On March 20, 2002 the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began. On April 5, 2002 the Respondent submitted a Response by fax, and on the same day the Center sent a Response Deficiency Notification to Respondent requesting an amended Response with a certification per Rule 5(b)(viii). The Respondent later submitted the amended Response by email and in hard copy.

The Administrative Panel submitted a Declaration of Impartiality and Independence on April 22, 2002, and the Center proceeded to appoint the Panel on April 23, 2002. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.

The due date of this Decision is May 7, 2002.

In 1944, Complainant was founded as an agency of the United Nations to provide various goods and services on an international scale, including, most prominently, economic development financing to national governments. Complainant is well known to anyone engaging in international banking or finance.

Complainant owns registered United States and international trademarks (for example Canada, Pakistan and Venezuela) in "The World Bank" and "World Bank" (collectively referred to hereinafter as the "Complainant Trademarks"). In addition, Complainant has registered and uses the domain name <worldbank.org> in promoting its services and activities on a country-by-country basis in a global manner.

According to the registration verification response received by the Center dated March 18, 2002, Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on January 28, 1999.

In a letter sent via airmail dated January 9, 2002, Complainant attempted to contact Respondent and to demand that Respondent transfer ownership of the domain name to the Complainant (the Complaint Exhibit 7). The Respondent did not reply.

- Complainant has provided international financial services under the Complainant Trademarks for decades, accruing a certain amount of goodwill, reputation and monetary value.

- Respondent’s domain name is identical or confusingly similar to the Complainant Trademarks. The disputed domain name is visually the same as Complaint's trademark, "World Bank", and Complainant would be mistaken as the trademark source by internet users. Complainant's Trademarks were registered 35 years before Respondent registered the disputed domain name.

- Respondent has no right or legitimate interest in respect of the domain name. Respondent is not a licensee of Complainant, nor is he otherwise authorized to use Complainant’s marks.

- The Respondent registered the <worldbank.net> domain name in bad faith. As evidence of Respondent’s bad faith registration, Complainant submits that it contacted Respondent regarding potential trademark violations and that Respondent had constructive knowledge of Complainant's prior rights in the Complainant Trademarks due to their international fame.

- The Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, who is the owner of the trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.

- It would be impossible for Respondent to use the disputed domain name because it would infringe the Complainant Trademarks.

- The Respondent has not developed any web site using the disputed domain name as the Uniform Resource Locator ("URL").

- The Respondent has never been commonly known by the disputed domain name.

- The Respondent deliberately designed to trade on and misappropriate the monetary value, reputation, notoriety, fame and good will of Complainant's Trademarks. Evidence of this is Respondent's use of Complainant's entire trademark in the disputed domain name.

- Respondent’s domain name registration causes Complainant malicious damage and business injury.

- The Complainant has the trademark The World Bank, not worldbank. I think that worldbank is just a noun that everybody can use. If they are right nobody can use this name anymore, what’s the difference if somebody registers the "world trade center" as their trade mark, asking nobody in the world should use the same name on their world trade center which each country has. If The World Bank owns the trade mark like "girl", could that mean they own all the girls in the world?

- I have a dream, I want to build up the network banking system in the future.

In order for Complainant to prevail and have the disputed domain name <worldbank.net> transferred to it, the Complainant must prove the following (the Policy, para 4(a)(i-iii)):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- 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 Panel finds that Complainant owns many registrations of the trade and service mark "World Bank" in the United States and in many countries: for example United States principal register trademark reg. No. 2,129,753 dated January 20, 1998, in int. class 16 for publications on the development of third world nations (Complaint Exhibits 1 and 2 contain numerous examples of Complainant’s registered marks).

Complainant's rights in that trademark date from 1944, and thus arose significantly prior to Respondent's registration of the disputed domain name. The disputed domain name <worldbank.net> is the same as the Complainant’s trademark except for the absence of a space between the two words and the addition of the gTLD ".net". The absence of spaces between words is common and to be expected in domain names, and does not reduce confusion between them and valid trade or service marks. The inclusion of a gTLD is without legal significance because a gTLD is required of registrants and ".net" does not serve to identify a specific source of goods or services (see, AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002).

In accordance with the Policy at para 4(a)(i), the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Complainant contends that Respondent has received no license, permission or consent from Complainant to use the Complainant Trademarks. Respondent contends he wants to build up a "networking banking system in the future." However, in the more than three years since the Respondent registered the disputed domain name on January 28, 1999, the Respondent apparently has made no use whatever of the disputed domain name, still less a use that might qualify as a legitimate right or interest under the Policy at 4(c)(i) .

Respondent has not contended or attempted to show that he is commonly known by the domain name (the Policy at 4(c)(ii)), or that he has attempted to make a non-commercial or fair use of the disputed domain name per 4(c)(iii).

In accordance with the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant contends that its World Bank trademark is so strong internationally that Respondent’s very registration of the domain name without authorization is indicative of bad faith. Previous panels under the Policy have been willing to grant this status to a select group of internationally famous marks. (for example the mark "Veuve Cliquot" in Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No D2000-0163 (May 1, 2000); and Yahoo!Inc. v. M & A Enterprises, WIPO Case No. D2000-0748 (October 23, 2000). The Panel finds this contention persuasive in this instance. The Complainant has been using the World Bank mark for some sixty (60) years all over the world.

The Panel also is convinced that the fact that the Respondent held the disputed domain name comprising the Complainant’s famous trademark for over three (3) years without making any use of the name that he could demonstrate to the Panel is further evidence of the Respondent’s bad faith (on this point see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000); and Nintendo of America, Inc. v. Garrett N. Holland et al., WIPO Case No. D2000-1483 (January 11, 2001).

The Panel is aware that the above two grounds for finding bad faith in registration and use are not explicitly enumerated in the Policy, but the Policy’s listing is by design non-exhaustive. And Rule 15(a) gives the Panel the latitude, where appropriate, to find other grounds for bad faith. As is apparent from the few cases the Panel cited among the many cases where Panels have based bad faith on similar grounds, there is broad support in previous panel decisions under the Policy for the Panel’s bad faith findings here.

The Panel thus finds that the disputed domain name was registered and is being used in bad faith.

The Panel finds the disputed domain name, <worldbank.net>, is identical to the Complainant’s World Bank trade and service marks. The Panel also finds the Respondent has no legitimate rights or interests in the disputed domain name. Finally, the Panel finds the Respondent registered and is using the disputed domain name in bad faith because the Complainant’s mark is in a select class of internationally strong marks that make it virtually certain the Respondent knew that his domain name registration infringed the Complainant’s mark; and because the Respondent held the disputed domain name for over three (3) years without attempting to make a bona fide use of it.

In accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the disputed domain name, <worldbank.net>, be transferred from the Respondent, Mr. Yoo Jin Sohn, to the Complainant, International Bank for Reconstruction and Development d/b/a The World Bank.