ADMINISTRATIVE PANEL DECISION Centurion Bank of Punjab Limited v. West Coast Consulting, LLC Case No. D2005-1319
1. The Parties The Complainant is Centurion Bank of Punjab Limited, Central Bombay Infotech Park, Maharashtra, India. The Complainant is represented by J. Sagar Associates, Maharashtra, India.
The Respondent is West Coast Consulting, LLC, Newport Beach, California, United States of America. The Respondent is represented by WCC Solutions Pvt., New Delhi, India.
2. The Domain Names and Registrar The disputed domain names:
are all 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 December 19, 2005. On December 20, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com.a request for registrar verification in connection with the domain names at issue. On January 12, 2006, 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 December 31, 2005. 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”).
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 January 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2006.
There appears to have been an unfortunate initial technical mix up caused by the registrar OnlineNIC wherein it appeared as if the Respondent had transferred two domain names and to another party, initially brought into these proceedings as Respondent No.2, by the name and address of DNS Manager, Hongkong, SAR of China.
This confusion was subsequently corrected by the legal affairs department of OnlineNIC, Inc., and had been acknowledged by the representative of the Respondent.
On January 25, 2006, the Respondent requested an extension of the deadline for the submission of its Response. Taking into account the exceptional circumstances of the case, the due date for the submission of the Response was extended until February 5, 2006 (see paragraph 5(d) of the Rules). The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2006. The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on February 14, 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.
The language of the proceedings is English.
4. Factual Background 4.1 The Complainant The Complainant is the Centurion Bank of Punjab Limited. The Complainant was formed by a merger on October 21, 2005, of the Centurion Bank and the Bank of Punjab.
4.2 Complainant’s Activities After the amalgamation, the Complainant has approximately 2.2 million customers as on October, 2005. The Complainant submits that its customers and others in the banking industry identify the Complainant with the name ‘Centurion Bank of Punjab’ and that the Complainant thus has common law trademark rights in respect of the same. The Complainant submits that it is now in the process of operating its banking services under the corporate name/trademark ‘Centurion Bank of Punjab’.
4.3 Complainant’s Trading Name One of the participants in the merger, the Bank of Punjab Limited, was erected in India as a company offering banking services, and it has carried on banking business under the name ‘Bank of Punjab Limited’ since 1995. Due to the merger, the Complainant, comprised of both the ‘Centurion Bank Limited’ and the ‘Bank of Punjab Limited’ has common law trademark rights over its own corporate name as well as the former corporate names of the merged companies. The merger in 2005 was highly publicized and followed by a change of names at the Registrar of Companies in Goa, Daman and Dui, Panaji in India on October 17, 2005.
4.4. Respondent’s Identity and Activities The Respondent is the registrant of the domain names ; and which are registered with OnlineNic, Inc. d/b/a China-Channel.com. The Registrant is referred to as West Coast Consulting, LLC Newport Beach, California, United States of America. The disputed domain names do not resolve to a website.
5. Parties’ Contentions A. Complainant (a) The Domain Names are Confusingly Similar to the Complainant’s tradenames/marks The Complainant argues that due to the merger it has acquired all intellectual property rights relating to both its own name as well as the former names of this participants in the merger, namely ‘Centurion Bank’ and ‘Bank of Punjab’. In June 2005 the merger became publicly known. Taking into account the extensive publicity the merger entailed, the Respondent must have been aware of the Complainant and its new name well before the registration of the disputed domain names.
The Complainant alleges that each of the contested domain names is confusingly similar to its name ‘Centurion Bank of Punjab Limited’. The confusing similarity between the disputed domain names and Complainant’s marks is apparent from simple comparison of the marks with the contested domain names. Complainant submits that its name is its trademark in any form, be it written or depicted, and that the Respondents use of the disputed domain names is an infringement of its rights. The Complainant argues that its customers and other third parties in the banking industry identify the Complainant with the name ‘Centurion Bank of Punjab’ and as such the amalgamated banking entity has common law trademark rights in respect of its name. The Complainant further submits that it is in the process of operating its banking services under the corporate name/trademark ‘Centurion Bank of Punjab’ and has provided copies of some documents showing the use of the name ‘Centurion Bank of Punjab’.
(b) Respondent has no Rights or Legitimate Interests in the Domain Names The Complainant contends that Respondent has no legitimate rights or interests in the contested domain names. The Complainant submits that there was no real purpose for registering the impugned domain names other than for commercial gains, and that the intention of the Respondent was simply to generate revenue, either by using the domain names for its own commercial purpose or through the sale of the disputed domain names to a competitor or any other person that has the potential to cause damage to the ability of the Complainant to have peaceful usage of the Complainant’s legitimate interests in using their own trade names.
(c) Respondent has Registered and is using the Domain Names in Bad Faith The Complainant has also submitted that the Respondent has registered the domain names in bad faith, thus preventing the Complainant from registering the same domain names for its own purpose. The Complainant argues that the Respondent sought to make wrongful gains by illegally squatting on the domain names. The Complainant claimed that it desired to provide comprehensive information about itself and its products through its proposed website bearing the name “www.centurionbankofpunjab.com”, but that it will be unable to do so until this domain name dispute is settled.
The Complainant contends that the squatting on the said domain names by the Respondent poses a material disruption of the business of the Complainant and that the bad faith on the part of the Respondent was borne out by the fact that the Respondent does not carry on any business through the website. The Complainant contends that the intention of the Respondent is to make illegal gains out of the registration in bad faith of the domain names.
B. Respondent The Respondent did not submit any response.
6. Discussion and Findings The procedural history of this case raises the question as to whether Respondent has received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. Furthermore, the Panel notes the Decision to grant the Respondent with an additional 10 days extension in order for it to submit its Response. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements of its case:
(i) The Respondent's domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) The Respondent's domain names have been registered and are being used in bad faith
(a) Identical or Confusing Similarity The Panel finds that the Complainant has provided evidence that it possesses unregistered trademark and tradename rights in the designation ‘Centurion Bank of Punjab’ as well as in marks that combine ‘Centurion Bank’ and ‘Bank of Punjab Limited’. Each of the contested domain names, , and , is confusingly similar or identical to the Complainant’s marks.
The Panel concludes that the Complainant has established paragraph 4(a)(i) of the Policy.
(b) Respondent’s Rights or Legitimate Interests The Complainant contends that the Respondent has no legitimate interest in the disputed domain names. Paragraph 4(c) of the Policy sets out three elements, any of which shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The Respondent had been given the opportunity to respond and to present evidence in support of the elements in paragraph 4(c) of the Policy. The Respondent chose not to do so and has not filed any response in this proceeding to establish any circumstances that could assist it in demonstrating any rights or legitimate interest in the disputed domain names. Although the Complainant is not entitled to relief simply by default of the Respondent to submit a Response, the Panel can however and does draw evidentiary inferences from the failure of the Respondent to respond. The Complainant has established a prima facie case of lack of rights and legitimate interests and the Respondent has failed to rebut the presumption of absence of rights or legitimate interests. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
Based on the record, the Respondent does not have rights or legitimate interests in the disputed domain names as the Respondent’s current use is neither an example of a bona fide offering of goods or services as required under paragraph 4(c)(i) of the Policy; nor is there any legitimate non-commercial or fair use of the disputed domain name and as such there is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply. The Complainant has not licensed or otherwise authorized the Respondent to use their trademark.
The Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain names and, accordingly, paragraph 4(a)(ii) of the Policy is satisfied.
(c) Registration and Use in Bad Faith Paragraph 4(b)(iv) of the Policy provides that one of the circumstances evidencing registration and use of a domain name in bad faith is that, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line locations, 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.
The Respondent has registered three domain names each of which appears to have been selected precisely for the reason that it is identical or confusingly similar to Centurion Bank of Punjab’s unregistered trademarks and tradenames. The Complainant is well known in India and internationally. The Respondent has no affiliation with the Complainant. Registration of a domain name that is confusingly similar or identical to a famous trademark by any entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (June 27, 2000).
In view of the submitted evidence, and in the specific circumstances of this case, the Panel draws the inference that Respondent’s purpose of registering the domain names was for commercial gain in bad faith within the meaning of the Policy.
The Panel finds that the Complainant has established that the disputed domain names were registered and are being used in bad faith.
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 names, , and be transferred to the Complainant.