|Kläger||Banque Bruxelles Lambert S.A., One Two Trade S.A.|
|Beklagter||AIB and M123 Multimedia, Inc.|
|Entscheider||Léger, Jacques A.|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banque Bruxelles Lambert S.A. and One Two Trade S.A. v. AIB and M123 Multimedia Inc.
Case No. D2000-1818
1. The Parties
Complainants are Banque Bruxelles Lambert S.A. Avenue Marnix 24, 1000 Brussels (BELGIUM) and One Two Trade S.A. Avenue Marnix 24, 1000 Brussels (BELGIUM).
Respondents are AIB, 220 E. Live Oak St. Apt. 26, San Gabriel California 91723 (U.S.A.) and M123 Multimedia, Inc., 28 North Oak Avenue, Pasadena California 91107 (U.S.A).
2. The Domain Name and Registrar
The domain name at issue is <12trade.com> [hereinafter referred to as the Domain Name].
The registrar of the domain name is Tucows.com, Inc. (OpenSRS), 96 Mowat Avenue, Toronto, Ontario, M6K 3M1 (CANADA) [hereinafter referred to as the Registrar].
3. Procedural History
On December 26, 2000 Complainants filed a complaint with the WIPO Arbitration and Mediation Center [hereinafter referred to as the Center]. The Complaint was received by email on December 26, 2000 and in hardcopy on December 29, 2000.
On January 5, 2001, Acknowledgement of Receipt by the Center was sent to the Complainant.
On January 11, 2001, the Center informed the Registrar that a Complaint had been submitted to the Center regarding the Domain Name, and requested for Registrar Verification.
On January 12, 2001, the Registrar provided the Center with the full contact details available in its WHOIS database for the Domain Name registrant and confirmed that:
- a copy of the Complaint was sent to it by the Complainant;
- it is the current registrar of the Domain Name registration;
- the Respondent AIB is the current registrant of the Domain Name registration;
- the Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Policy] applies to the Domain Name.
The Center proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on January 18, 2001.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centers assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
On January 18, 2001 the Center informed the Respondents of the commencement of the proceedings as of January 18, 2001 and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a response to the Center being on
February 6, 2001.
In a letter dated February 9, 2001 the Center informed the Respondents that he was in default pursuant to the ICANN Policy and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant.
On February 28, 2001 the Center issued a Notification of the Appointment of Administrative Panel and of the projected decision date to the parties.
The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or prior to March 13, 2001, in the English language.
4. Factual Background
The following facts appear from the Complaint and documents submitted with the Complaint.
At the time the Complaint was made, the Complainants had rights to the marks "12TRADE" and "ONE TWO TRADE", as shown by Annexes B.1 to B.19 of the Complaint.
At the time the Complaint was made, Respondent AIB, with Allen Ma as the administrative contact, was the registered owner of the Domain Name <12trade.com> which was registered on January 29 1999, as shown by Annex A.1.
On July 30, 1999, Complainants' former representatives wrote by fax to Respondents' administrative contact.
On August 17, 1999, Respondents replied to the letter dated July 30, 1999.
On September 8, 1999, Complainants' former representatives answered back to Respondents' reply of August 1999.
On September 23, 1999, Respondents replied to Complainants' answer dated
September 8, 1999.
On September 20, 2000, Complainants' representatives sent a registered letter with delivery receipt to Respondents' administrative contact.
Respondents chose not to respond to the Complaint and are in default to do so as of
February 9, 2001.
As of December 14, 2000, there was no operating web site corresponding to the Domain Name, as shown by Annex A.2.
5. Parties Contentions
The Complainants allege that they are the sole and rightful owners and users of numerous trademarks identical or confusingly similar to the Domain Name in issue.
Complainants allege that Banque Bruxelles Lambert S.A. and One Two Trade S.A. are both member of the ING Group, that Banque Bruxelles Lambert S.A. is the lawful owner of the trademarks "12TRADE" and "ONETWOTRADE" and that it has licensed to its sister company, One Two Trade S.A., the right to use such trademarks.
Consequently, Complainants allege that each Complainant has a sufficient common interest in the Domain Name in issue.
Complainants allege that the Complainant Banque Bruxelles Lambert has registered trademarks comprising the terms "one two trade" and "12trade" in Benelux and has applied for the said trademarks in numerous countries, such as Argentina, Australia, Brazil, Canada, Ireland, Japan, New Zealand, South Africa and United States of America. Complainants allege that they also obtained international registration for the same marks.
Complainants allege that they are authorized to use and that they have used their trademarks in connection with financial services. In addition, Complainants allege that one of the Complainants' commercial and trading name is "One Two Trade S.A.".
Accordingly, Complainants allege that the Domain Name in issue is identical to the trademarks "12TRADE" and confusingly similar to the trademarks "ONE TWO TRADE" in which the Complainants have exclusive rights.
Complainants allege that Respondents have no rights or legitimate interests in respect of the Domain Name.
To support this contention, Complainants submit that Respondents have not developed a web site linked to the Domain Name at issue nor have they made any other good faith use of the Domain Name.
Complainants allege that Respondents AIB and M123 Multimedia, Inc. do not own any "12trade" trademark in any country and cannot claim any license to use such trademark or other right to use Complainants' trademarks.
Complainants allege that the Domain Name was registered and is being used in bad faith. To support this contention, Complainants allege that further to a letter of the former Complainants' representative (Cabinet Netter) dated July 30, 1999, the Respondent M123 Multimedia, Inc. indicated in a fax dated August 17, 1999:
" () Please be informed that Mr. Ma is a principal shareholder and officer of M123, Inc. Notwithstanding that the Domain Name 12TRADE.COM is registered in his name, actual ownership is vested in the corporation.
While the corporation is not in the business of buying and selling domain names, we would consider a reasonable offer for 12TRADE.COM. Please identify your client and submit your best proposal. ()" (emphasis added by Complainants)
Complainants also allege that in response to a fax letter of the Complainants' former representative dated September 8, 1999, the Respondent M123 Multimedia, Inc. wrote in a fax dated September 23, 1999:
" () In my prior letter I asked you to identify your client. Perhaps I should have been more direct and simply asked if your client is Bank Brussels Lambert, the ING Group, or one of its other subsidiaries. I ask this question because, as I am sure you know, BBL is the registered owner of both 12trade.net and 12trade.org. (these names were registered by BBL within one week following our registration of 12trade.com.)
If BBL is not your client it is incumbent upon us to invite BBL to participate in these negotiations. The value of any Domain Name is greatly enhanced when only one company owns all variations of the name. In this regard, to prevent any further dilution, in the value of 12trade.com, we have registered the following additional variations: 1-2-trade.com, .org and .net; 12-trade.com, .org and .net; 12trading.com, .org and .net; 12-trading.com, .org and .net; 12trades.com, .org and .net; and 12-trades.com, .org and .net. (All variations owned by us will be sold as a block).
Given this somewhat confusing situation, it would not be appropriate for us to name a price. We therefore again ask you to identify your client and submit a reasonable offer. In doing so, please bear in mind that .com is by far the more desirable top domain. For your information, the best domain names are currently being sold in the six figure price range." (emphasis added by Complainants).
Complainants allege that further to this fax, the Complainants' lawyers addressed a registered letter with delivery receipt to Respondent M123 Multimedia, Inc. on
September 20, 2000 requesting to transfer the Domain Name in issue to the Complainant Banque Bruxelles Lambert S.A. in consideration of the fact that its registration and use constitutes trademark infringement.
Complainants allege that Respondents did not react to this letter.
Complainants allege that the Domain Name was registered primarily for the purpose of selling it to the Complainants for valuable consideration in excess of out-of-pocket expenses directly related to the name.
To support this contention, Complainants notably allege the following facts:
- The absence of any developed web site associated with the Domain Name in issue;
- The fact that the sum sought "in the six figure price range" is much in excess of registration costs.
Complainants cite Warner Lambert Export Limited v. Mr. Darren Darcy (WIPO Case D2000-0453) as an example where these elements were found evidence of registration and use in bad faith under paragraph 4(b)(i) of the Policy.
Complainants allege that, in the case at hand, the following facts indicate that the Domain Name was registered primarily for the purpose of selling it to the Complainants for valuable consideration in excess of out-of-pocket expenses directly related to the name:
- Respondents' reference to a sum "in the six figure price range",
- their expressed knowledge of BANQUE BRUXELLES LAMBERT S.A.'s registration of <12trade.org> and <12trade.net>
- the indication that Respondents intended to register all variations in order to avoid "dilution" of the value of the Domain Name.
Complainants also allege that the Domain Name was further registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and that Respondents' declaration that they would register variations of "12trade" in the .com, .net and .org TLDs clearly shows that they engaged in a pattern of such conduct.
Complainants allege that the fact that the Complainants registered the domain names <12trade.org> and <12trade.net> does not hinder this finding. To support this contention, Complainants cite Potomac Mills Limited Partnership v. Gambit Capital Management (WIPO Case D2000-0062), where it was found that Complainants had legitimate interest in reflecting their trademarks in more than one generic top-level domain."
Complainants allege that as a consequence of Respondents' acts, Complainants are unable to reflect their trademark "12trade" in the ".com" domain which, according to the Respondents themselves, "is by far the more desirable top domain".
As previously stated, Respondents have not filed a response to the current proceedings, and are in default to do so. Pursuant to s.5(e) and 14 of ICANN Rules, the Panel shall decide the dispute based solely upon the complaint, as well as the applicable rules and jurisprudence.
6. Discussion and Findings
Pursuant to the ICANN Policy, the Complainants must convince the Panel of three elements if they wish to have the Domain Names transferred. It is incumbent on the Complainants to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which they hold rights;
ii) that the Respondents have no rights or legitimate interest in the Domain Name;
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
A. Identity or Confusing Similarity between the Domain Name and Complainants trademark
The Panel has reviewed and is satisfied with the evidence provided by the Complainants to show their rights in the trademarks 12TRADE and ONE TWO TRADE. The Panel concludes that Complainants have legitimately commenced use of said trademarks in the ordinary course of business and have legitimate rights in their trademarks.
The Panel is of the opinion that the Domain Name is identical to the trademark 12TRADE and is confusingly similar to the trademark ONE TWO TRADE, especially given that, when spoken, the trademark sounds identical to the second-level part of the Domain Name in issue.
Consequently, the Panel finds that Complainants have successfully established that the Domain Name is identical or confusingly similar to trademarks in which they have rights.
B. Right or Legitimate Interest in the Domain Name by Respondent
Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that Respondents have commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.
Considering that the Domain Name has not led to any active web site (even after more than one year since the registration; the Panel has visited the site as of March 13, 2001 and there is still only the "under construction" banner, as alleged by Complainants), and given that Complainants have shown legitimate activity and rights in the trademarks 12TRADE and ONE TWO TRADE in Benelux and have applied for the said marks in many countries around the world, and especially in the country where Respondent AIB has declared to reside, and in absence of evidence to the contrary, the Panel agrees with Complainants contention that Respondents have no right or legitimate interest in the Domain Name.
While no direct conclusion can be drawn from a failure by Respondents to provide explanation, in some circumstances, a negative inference can be drawn from the lack of justification by the Respondents, especially when direct evidence, such as the correspondence submitted by Complainants, points in the direction of an absence of rights or legitimate interest, in particular in regard of paragraphs 4(c)(i), (ii) and (iii) of the Policy. In the present case, the Panel so finds.
It is now a well-established principle that when two persons concurrently have rights or legitimate interests in a domain name, the person who is entitled to have registration of such domain name is determined by the notion of "first come, first serve". In Welltec ApS v. Dave Gardner, WIPO Case No. D2000-1145, it was held that "[i]n this case however, both parties produce and manufacture well tractors; thus both parties have a legitimate interest in the domain name. Hence the first come, first served principle must prevail." A contrario, it can be said that when only one party has rights or legitimate interests in a domain name, the notion of first come first serve does not necessarily apply.
C. Bad faith in Registration and Use of the Domain Name by the Respondent
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainants to prove that the Respondents have registered and is using the Domain Name in bad faith. Paragraph 4(b) of the ICANN Policy provides a number of circumstances which, if found to be present, are evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(i) of the ICANN Policy holds that evidence of bad faith is provided when circumstances indicating Respondents have 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 for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
As to Use in Bad Faith
In the present case, the Panel is of the opinion that the exchange of letters between Complainants representatives and the Respondents constitute evidence of such bad faith in the "use" of the Domain Name, for the sole purpose of leveraging Respondents' position in trading the Domain Name with Complainants.
In particular, the letter written by Mr. Joseph Murphy on September 23,1999, despite the fact that the wording appear to have been carefully chosen to avoid any sign of bad faith use, constitute an obvious manifestation of bad faith. When the author of the letter says "Perhaps I should have been more direct and simply asked if your client is Bank Brussels Lambert, the ING Group, or one of its other subsidiaries", Respondents clearly show that they have an extensive knowledge of the Complainants' existence, structure and activities, since nothing in the tradenames of Bank Brussels Lambert or the ING Group would lead someone to think that they have rights in the trademarks 12TRADE or ONE TWO TRADE.
In the same letter, by stating "If BBL is not your client it is incumbent upon us to invite BBL to participate in these negotiations" and by referring to a "six figure price range" for "best domain names", Respondents are in fact admitting that they intended to sell the Domain Name to that particular financial institution for valuable consideration in excess of their documented out-of-pocket costs.
This is true even if Respondent, in their letter to Complainants' representatives dated August 17, 1999, claim that they are not "in the business of buying and selling domain names". The fact that Respondents were aiming to sell the Domain Name to Complainants in particular, so as to maximize Domain Name's value, may also be inferred from Respondents' request to Complainants' representatives to identify their client in that same letter.
Consequently, the Panel finds that Respondents' use of the Domain Name was in bad faith.
As to Registration in Bad Faith
In accordance with section 4(a)(i) of the ICANN Policy, as long as a complainant can assert and establish a trademark right at the time its complaint is filed, the complaint should not be rejected on the sole basis that the complainant has not asserted and established that its trademark rights preceeded the registration date of the Domain Name at issue. It follows that, where appropriate, a finding of registration in bad faith may be made without direct evidence establishing the existence of trademark rights prior to the registration of the Domain Name, provided that the circumstances indicate that an inference to the same effect may be drawn.
In this case, "12TRADE" or "ONE TWO TRADE" is a coined expression. The likelihood that this expression could have been invented almost at the same time, i.e. within a three-week span, by two unrelated persons or entities is remote. Registration of this expression as a domain name by one person and then as trademarks by another in such a short timeframe cannot be merely coincidental. It is the Panel's view that this concomitance of events compelled the Respondents to provide an explanation, which they have chosen not to do.
The Panel considers that, from this lack of explanation by the Respondents and from the distinctive and rather uncommon aspect of Complainants' trademarks, the Panel is allowed to draw an adverse inference to the effect that, at the time the Domain Name was registered, Respondents knew of the existence of such trademarks. (A similar inference was made by this Panel in Socit des Bains de Mer et du Cercle des Etrangers Monaco v. Integroweb (Bahamas) Ltd, WIPO Case No. D2000-1325. See also Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003.)
That being said, the Panel is comforted in drawing such inference given that it had the benefit of validating the factual background by looking at Complainants' web site, and more specifically at the press release dated January 18, 1999 announcing the launch of One Two Trade by Complainants. Of course, absent the negative inference, this cannot otherwise constitute a determining fact given the extrinsic nature of this evidence, not filed by Complainants.
However, noteworthy, Complainants' representatives would have made Complainants' case compelling, i.e. without the need of a negative inference, had they provided the Panel with evidence establishing the date when the company One Two Trade S.A. was constituted and establishing a use or commencement of use of the trademarks "12TRADE" or "ONE TWO TRADE", through the press release for instance, prior to the registration of the Domain Name by Respondents.
Accordingly, the Panel believes that, overall, the burden of Complainants to show that Respondents used but also registered the Domain Name in bad faith has been met.
For the foregoing reasons, the Panel concludes that:
- the Domain Name registered by the Respondents is confusingly similar to the trademark to which the Complainants have rights;
- the Respondents have no rights or legitimate interests in respect of the Domain Name;
- the Domain Name has been registered and is being used by the Respondents in bad faith.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <12trade.com> be transferred to the Complainant BANQUE BRUXELLES LAMBERT S.A.
Jacques A. Lger
Dated: March 13, 2001