WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Volksbank eG Wolfsburg v. ol040980.com

Case No. D2004-0048

 

The Complainant is Volksbank eG Wolfsburg of Wolfsburg, Germany, represented by Christian Reinicke of Hannover, Germany.

The Respondent is ol040980.com of St. Peterburg, Pushkin, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <volksbankwolfsburg.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 21, 2004. On January 22, 2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On January 29, 2004, OnlineNic, Inc. d/b/a China-Channel.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 9, 2004. The Center verified that the Complaint, together with the amendment to 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"). The Administrative Panel ("the Panel") is satisfied that this is the case.

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 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 18, 2004.

The Center appointed David Taylor as the sole panelist in this matter on April 2, 2004. 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 is a German banking and financial institution. It appears from the copy of the Register of Cooperatives of the Local Court of Wolfsburg, registration number 110, provided in annex to the Complaint that the company dates back to the 1920s. In any event, this document contains a large number of entries throughout the previous decades thus the Panel safely assumes that Complainant existed under the name Volksbank eG Wolfsburg prior to the Respondent registering the disputed domain name.

The Complainant does not profess to be the proprietor of any relevant registered trademarks, but does however claim that the domain name is identical to its service mark "Volksbank eG Wolfsburg." No service mark registration number or certificate is provided.

The Respondent registered the domain name on October 4, 2003, and although this is not specifically asserted in the Complaint, it is evident from the Whois report annexed to the Complaint.

Certain correspondence took place between the Complainant and the Respondent in October 2003, copies of which were provided to the Panel. In this correspondence the Complainant asserted its rights to the disputed domain name and complained about the pornographic content at the website to which the domain name was pointing. The Respondent appears to have agreed to remove the offensive content from the website, but merely altered the content to other content of the same genre.

An interesting factual twist concerns the Respondent's contact details. In the Whois report of October 13, 2003, attached to the original Complaint, these are specified as being: ol040980.com, St.Peterburg, Pushkin, Russian Federation 196603. However, in response to the verification request from WIPO, the Registrar, OnlineNIC, d/b/a China-Channel.com confirmed on January 29, 2004, that the contact details of the Registrant at this date were:

Registrant:

ol040980.com info@vbwolfsburg.de +49.5361201000
Julian Breyer
Wolfsburg Wolfsburg Germany 38440

Administrator:

Julian Breyer info@vbwolfsburg.de +49.5361201000
Julian Breyer
Wolfsburg Wolfsburg Germany 38440

Technical Contact:

Julian Breyer info@vbwolfsburg.de +49.5361201000
Julian Breyer
Wolfsburg Wolfsburg Germany 38440

Billing Contact:

Julian Breyer info@vbwolfsburg.de +49.5361201000
Julian Breyer
Wolfsburg Wolfsburg Germany 38440

At first sight it might appear that the Complainant is filing a Complaint against itself. At the request of the Center, the Complainant provided an amendment to the Complaint on February 9, 2004, together with the below explanation of the Whois contact details having been amended to those of the Complainant:

The change of the name-entry in the WhoIs-Database is a result of an attempted settlement between Complainant and the formerly assigned Respondent. The Respondent has sent - after he had got the Complaint - log-in-data for the Whois-Zone of disputed domain-name to the Complainant. So the Complainant changed the names in the whois-entries in a way that the Complainant (i.e. one of the employees) is now shown as admin-c.

Nevertheless the Respondent didn't transfer the domain to the Complainant or gave the Complainant such log-in-data to do so. That's why the Complainant appreciates the continuation of this case.

The original Complaint does not mention this attempted settlement.

The Panel considers that one possible interpretation of the above scenario could be that the Respondent, on receiving the original Complaint did indeed seek to rid himself of the disputed domain name by providing the necessary information to the Complainant. The Complainant sought to amend the details in order to take control of the disputed domain name, but due to the fact UDRP proceedings had been initiated the resulting locking of the disputed domain name during the pending administrative proceeding would have prevented any attempted change of registrant or registrar. Thus the situation arises where the Respondent is still identified as registrant, but all of the contact information appearing is that of the Complainant as the latter was able to change this.

The Panel has also identified that the disputed domain name apparently had a Volksbank Wolfsburg eG holding page from around 1996 (source "www.archive.org") and though not specified in the Complaint, one of the emails from the Complainant to the Respondent submitted in evidence confirms that the Complainant was, at one time, the owner of the domain name. Without any factual confirmation from the Respondent, the Panel assumes that the Respondent registered the disputed domain name on October 4, 2003, after it had been allowed to lapse.

In any event, the Respondent has not provided any response or evidence to bring into question the factual background provided by the Complainant.

5. Parties' Contentions

The Complainant contends that it has service mark rights in its name "Volksbank eG Wolfsburg" and that the disputed domain name which comprises its name with the generic ".com" suffix, but without the letters "eG," is identical or confusingly similar to its service mark.

In support of this contention, the Complainant points to the fact that "eG" equals "eingetragene Genossenschaft" meaning registered company in English and thus should be ignored, and provides a copy of the Register of Cooperatives of the Local Court of Wolfsburg, registration number 110, in German. In addition, the Complainant states that "it has used this service mark since decades, as a financial institute for any business dealing with banking, finance, investment etc." However, there is no evidence provided by the Complainant to the Panel of this. The Panel has, however, accessed the Volksbank eG Wolfsburg website at "www.vbwolfsburg.de" and there is an active financial website. The Complainant also contends that it has "exclusive rights to use his registered name `Volksbank eG Wolfsburg' in commercial intercourse."

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it has not been licensed in any way by the Complainant. The Complainant further contends that the Respondent is using the domain name in a commercial way, showing advertising banners and links for websites offering dating services, and up until the end of October 2003, the content included pornographic material. This material offered "Best Free Sex Sites" with links to over 200 different pornographic websites and three rotating advertising banners promoting websites including "Fuckomat," "GirlKnights" and BackdoorSpy" containing hard core pornographic images.

The Complainant contends that on discovering the content at the disputed domain name, it wrote to the Respondent requesting that he refrain from any further such use of the domain name for commercial purposes. The Respondent agreed to comply within 15 days, however the Complainant further contends that the Respondent merely changed the content to include further links to "Live-Video-Chats Girl-Girl (Lesbian), Guy-Guy (Gay) and other adult content before finally at the date of the Complaint providing dating services."

As to whether the Respondent is acting in bad faith, the Complainant contends this is the case as the Respondent has been directing traffic to a pornographic site and a dating service agency. By this action, the Complainant contends that the Respondent is intending to and is, in fact, disrupting the business of the Complainant and tarnishing "the distinctiveness and reputation of the Complainant, its trademarks and its business."

The Respondent did not submit a response.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(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 has first to decide whether the Complainant has the relevant trademark or service mark rights.

The Complainant has not demonstrated that it has registered trademark or registered service mark rights. However, the Policy is not restricted to registered rights and so the question is whether or not the Complainant has unregistered or so-called `common law' rights in the name "Volksbank eG Wolfsburg" or "Volksbank Wolfsburg" since the Panel accepts that "eG" is merely an indicator of the entity being a German registered company. This can be answered by considering whether the Complainant could succeed in a legal action to restrain a third party from trading under the name "Volksbank Wolfsburg." In the current scenario, the Panel considers that the answer is yes and that the Complainant has unregistered common law trademark rights in its trading name: "Volksbank Wolfsburg." The Panel notes, however, that the evidence provided to it is rather light in this respect with only an extract from the Register of Cooperatives of the Local Court of Wolfsburg having been provided in German.

Since this disputed domain name comprises the Complainant's trademark and/or service mark and the generic ".com" suffix, the Panel finds that the disputed domain name is identical to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, which, if shown by the Respondent to be present, are considered as suitable evidence of the Respondent's rights or legitimate interests in respect of the disputed domain name. However, the primary burden is on the Complainant to show that the Respondent has no such rights or legitimate interests. Once the Complainant has made out a prima facie case, it is for the Respondent to demonstrate the contrary.

The disputed domain name being the Complainant's well-known name and the Respondent having registered the company name of the Complainant without any authorisation or license from the Complainant constitutes such a prima facie case. The fact that the content on the website associated with the disputed domain name is of a pornographic nature/dating service agency and, thus, the Respondent is highly likely to be obtaining a fee for such pointing of the disputed domain name, this cannot realistically constitute a bona fide offering of the services in question. The disputed domain name was, at the time of the filing of the Complaint, clearly pointing to a commercial website and payment methods and telephone call costs are mentioned on the provided screen captures which underline the fact that the activity in question is indeed commercial in nature. Anyone typing in the disputed domain name to a web browser would not be looking for pornography or a date, but rather the Volksbank Wolfsburg website. Clearly, the content that does appear is designed to then tempt the user into other things rather than his original intended purpose, even more so given that the content is in German.

The disputed domain name being the Complainant's well known name and the Complainant not having granted the Respondent a license to use the Complainant's name, the prima facie case is made and the Respondent has made no attempt to rebut it.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, which, if the Panel finds them to be present, shall constitute evidence of bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b)(iv) of the Policy reads:

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 Complainant bases its contention that the disputed domain name has been registered and used in bad faith by the circumstances:

that the Respondent directly directs traffic to a porn site... or now to be specific a so called "dating-service-agency... by this the Respondent intends to disrupt, and does disrupt, the business of the Complainant and tarnishes the distinctiveness and reputation of the Complainant, its trademarks and business."

The Complainant cites Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (June 19, 2000), however, this case accepted bad faith registration and use on the basis of paragraph 4(b)(i) of the Policy, namely that the Respondent sought to sell the domain name for profit and also provided false contact details. Neither of these facts are relevant to the issues in question in the present case, or at least were not argued in the Complaint. There was a threat to divert traffic to a pornographic site, which is presumably why it has been associated here.

The Panel does not consider that the Complainant has argued its case of a bad faith registration and use in the most pertinent manner. It has not contended in this section of its Complaint that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, although this is mentioned elsewhere in the Complaint. Neither has the Complainant contended, for example, that there is a likelihood of confusion with the Complainant's service mark as to the source, sponsorship, affiliation, or endorsement of the website of a product or service.

The case for the Complainant is saved by the fact that it has mentioned elsewhere in the Complaint the essential factor that the website in question is being used in a commercial way, though it has not sought to demonstrate evidence of this. The additional lack of response entirely from the Respondent and, therefore, no rebuttal is also helpful for the Complainant's case.

The Panel is of the view that, on the facts before it, it is indeed highly likely that the Respondent is attracting a fee for the redirection of traffic and that the Respondent is itself the operator of the websites in question, in which case it benefits directly from the redirection. Such arrangements are certainly very common on the Internet today and no other reasons for the redirection are readily apparent. The Panel has identified from the evidence that some form of charging appears to be in place at the websites in question with the mentioning of premium telephone call rates. It does not matter whether the money in question which a party makes is large or small. The important factor is whether the Respondent's website is commercial or not; National Association for Stock Car Auto Racing, Inc. v. Steven R. Shacklette, WIPO Case No. D2001-1350 (February 4, 2002). In addition, it has been previously held that "Both case law and prior arbitral findings have held that misdirecting or redirecting Internet users can constitute bad faith"; Geocities v. Geociites.com, WIPO Case No. D2000-0326 (June 19, 2000).

It has also been held in a number of cases that where a domain name resolves, or is linked to content of a sexual nature, this has been held to constitute bad faith registration and use by attracting users to a website for commercial gain by creating a likelihood of confusion as to the sponsorship or affiliation, Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102 (April 18, 2000). Even though it might be argued that a user who finds himself or herself at a pornographic site may conclude that this was not the content expected, the registrant of the domain name has, nevertheless, succeeded in its purpose of using the domain name to attract the user with a view to commercial gain, National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118 (April 17, 2000).

The Panel accepts that having a pornographic website at the disputed domain name can only tarnish the distinctiveness and reputation of the Complainant right's and business generally. The Panel is of the view that having such websites associated with the disputed domain name are clearly an intentional attempt to attract users to the website and that there is confusion as to the source, sponsorship, affiliation, or endorsement of the website as specified in paragraph 4(b)(iii) of the Policy. The fact that such confusion may be dispelled and replaced by annoyance or disgust, once the nature of the website is revealed does not negate the fact of the initial confusion, Royal Bank of Canada v. Personal, WIPO Case No. D2001-0761 (July 24, 2001).

The Panel, therefore, finds that the disputed domain name was registered in bad faith and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.

7. 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, <volksbankwolfsburg.com> be transferred to the Complainant.