Interbanking S.A. of Buenos Aires, Argentina, just lost its bid to grab the domain name interbanking.com from domain investor, Alexander Lerman who was represented by John Berryhill, Phd Esq.
The domain name was registered on March 4, 1997.
The Complainant was founded on September 25, 1996, when Datacash S.A. and Newnet S.A. merged to form Interbanking S.A.
The Complainant owns a number of trademark registrations in Argentina including:
INTERBANKING – Registration No. 2037652 dated June 21, 1996 for insurance, financial affairs, monetary affairs, real estate affairs.
INTERBANKING – Registration No. 2756543 dated July 5, 2007 for insurance, financial affairs, monetary affairs, real estate affairs.
INTERBANKING Logo – Registration No. 2662447 dated April 7, 2006 for insurance, financial affairs, monetary affairs, real estate affairs.
B INTERBANKING – Registration 2268254 dated February 15, 2000 for insurance, financial affairs, monetary affairs, real estate affairs.
At the time the Complaint was filed the disputed domain name reverted to a website that provided links to websites of other third party entities.
The Panel accepts the evidence that the term “interbanking” is a common and widely used term to denote Internet banking and transactions between banking institutions.
The Panel recognizes that the Complainant has established a substantial reputation in Argentina, but at the time the disputed domain name was registered by the Respondent, the Complainant’s business had only recently started, and was only operating in Argentina.
The Respondent resides in the United States and submits that he was unaware of the Complainant’s trademark rights when he registered the disputed domain name in 1997.
The Panel, after considering the evidence submitted and the generic nature of the terms which form the disputed domain name, finds that the Respondent was not aware, and had no reason to be aware, of the Complainant’s trademark rights at the time the disputed domain name was registered.
With respect to the Respondent’s use of the disputed domain name, the Panel finds that the use of a pay-per-click site, in the circumstances of this case, is not probative of bad faith under the Policy. Given that the terms “inter” and “banking” are widely used for the purpose of denoting Internet banking services.
It is not surprising that the disputed domain name currently reverts to a website which provides links to websites offering on-line banking, Internet banking, e-banking and other financial services. These businesses are all logically connected to the generic meaning of the combination of the terms “inter” and “banking”.
Accordingly, the Panel finds that the registration and use of the disputed domain name does not constitute bad faith, and that the Complainant has therefore not satisfied the requirement under paragraph 4(a)(iii) of the Policy.
One of the panelist voted to make a finding of Reverse Domain Name Hijacking (RDNH)
“Given the difficulties in proving that the Respondent in a distant country both knew of the trademark at issue and chose it for a free ride on its goodwill sixteen years ago, and only one year after the mark was registered, “the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.17.”