WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wirecard AG v. Konstantin B Pacevich
Case No. D2007-0650
1. The Parties
The Complainant is Wirecard AG, Berlin, Germany, represented by Jones Day, Germany.
The Respondent is Konstantin B. Pacevich, Vilniaus, Lithuania.
2. The Domain Name and Registrar
The disputed domain name is registered with EstDomains, Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2007, naming “P” as the Respondent. On May 2, 2007, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On May 5, 2007, EstDomains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details In response to a notification by the Center, the Complainant filed an amendment to the Complaint on May 25, 2007, naming Konstantin B Pacevich as the Respondent. On June 20, 2007, after communications between the parties and the Center, the proceedings were suspended. However, the parties were not able to finalize an agreement and the case was re-instituted on August 9, 2007. The Complainant filed a further amendment to the Complaint on August 8, 2007. The Center verified that 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 August 10, 2007. In accordance with the Rules, Paragraph 5(a), the due date for Response was August 30, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2007.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on September 18, 2007. 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 publicly listed company founded in May, 1999 which now has an international business in the provision of monetary payment systems.
It states that ‘on June 15, 1998, the Complainant has registered the domain name under which the Complainant operates its main official website since then’.
Leaving to one side the minor temporal inconsistency to that statement, the Complainant asserts unregistered rights in the trade mark WIRECARD and has also provided details of a number of trade mark registrations. They are discussed later.
The Complainant alleges that in April 2007 it first became aware of the disputed domain name which was being used in connection with emails having the composite address,[----.vogts@]. The Complainant employs no person by the name of Vogts’ and has characterized the Respondent’s action as the practice of ‘phishing’.
There was no Response to the Complaint and so that claim is not contradicted.
The Respondent registered the disputed domain name on March 16, 2007.
The Complainant petitions the Panel for transfer of the disputed domain name.
5. Parties’ Contentions
A. Complainant
The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Complainant submits that the disputed domain name is not only identical to its registered trade marks, but is also identical to the Complainant’s corporate and trading name, Wirecard AG. It reminds the Panel that the letters ‘AG’ stand for Aktiengesellschaft, the name given to a German public limited company and the legal status of the Complainant.
In the alternative, the Complaint argues that the disputed domain name is confusingly similar to the Complainant’s trade marks since that addition of “ag” and / or “.com” does not prevent a domain name from being confusingly similar to the basic trade mark to which those terms are appended.
The Respondent has no rights or legitimate interests in respect of the domain name
The Complainant argues that the Respondent has no rights or legitimate interests in the domain name since its only intention is to use the name for fraudulent activities, namely, phishing.
The Complainant provides evidence in the form of a Google search of the term “wirecard” which shows 431,000 hits, all of which it is alleged lead to the Complainant.
The Complainant confirms that it has no relationship with the Respondent and submits that its trade mark is not one that the Respondent would legitimately choose unless it was seeking to create a false impression of association with the Complainant.
The domain name was registered and is being used in bad faith
The Complainant alleges that the Respondent registered the disputed domain name in bad faith, knowing of the Complainant and its rights in the trade mark, primarily for the purpose of misleading internet users.
Moreover, the Complainant alleges that the Respondent has used the disputed domain name in bad faith by attempting to attract, for commercial gain, ‘internet users to reply to the Respondent’s email address using the disputed domain name, by creating a likelihood of confusion with the Complainant’s trade mark, trade name and official website as to the source of the Respondent’s services’.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact the Respondent failed to submit a reply : see The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465; and Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383.
According to Paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.
Having considered the Complainant’s case and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
For the purposes of Paragraph 4(a)(i) of the Policy, the Complainant has rights in certain trade marks by virtue of its registrations (see Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum December 21, 2005); Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum September 25, 2003).
The Complainant has not provided a full English language translation, certified or otherwise, of each of those registrations, but nor is it under an obligation to do so, provided that the Panel can made sense of the rights claimed. Suffice to say that the International, European Community and United States registrations show the Complainant to have rights in the trade marks shown below:
WIRE CARD
WIRE CARD and Device
The only question is whether the disputed domain name is identical or confusingly similar to one or other of those trade marks.
It has been held by numerous panels examining this aspect of the Policy that for the purposes of Paragraph 4(a)(i), the generic top-level domain (“gTLD”), “.com”, is to be ignored (see, for example, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003): “The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”.
Additionally, it has been held that other common designators such as recognized incorporation styles should be disregarded for the purposes of that comparison (see, for example, Steelcase Development Corporation v. Manila Industries, Inc.,WIPO Case No. D2006-1378; British Airways Plc. v. David Moor,WIPO Case No. D2006-1224; The letters ‘AG’ fall in this camp.
It has also been held that spaces and punctuation are omitted from domain names and so the terms WIRE CARD and WIRECARD should, for the purposes of the Policy, be regarded as identical. See Aurora Foods Inc. v. David Paul Jaros,WIPO Case No. D2000-0274 (“....the Panel concludes that use of the lower case letter format in “”, and elimination of the space between the words “Duncan” and “Hine” to form that name, are differences without legal significance from the standpoint of comparing “” to “Duncan Hines”.)
Applying those principles, the Panel has no hesitation in finding that the disputed domain name is identical to the Complainant’s trade mark WIRE CARD.
With that finding, it is no longer necessary to examine whether the disputed domain name is confusingly similar to the Complainant’s other trade mark, or to examine the Complainant’s claim to unregistered rights arising through use of its company name.
The Panel holds that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
There is no evidence that the Respondent has permission to use the Complainant’s trade marks. The Respondent has no obvious legitimate commercial interest in the domain name and there is no evidence that it is commonly known by the domain name. On the contrary, there is indication of “phishing”.
In these circumstances the burden of proof passes from the Complainant to the Respondent : see Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o,.WIPO Case No. D2004-0110.
The Respondent has provided no explanation for its actions and the evidence provided by the Complainant shows activity lacking a bona fide foundation and likely to offend against any number of national laws.
The only conclusion which can be drawn is that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has also satisfied the second limb of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.
Those sets of circumstances are not exhaustive and other instances of bad faith might be in evidence, however, what is noteworthy about Paragraphs 4(b)(i) – (iv) is that they all indicate both registration and use in bad faith.
It is therefore logical to first test the Respondent’s actions against those specifically described circumstances. In doing so, it is abundantly clear that the Respondent’s actions are directly caught by Paragraphs 4(b)(iii) and (iv).
The Panel accordingly finds that the disputed domain name was registered and used in bad faith and so the Complainant has satisfied the third and final element 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, be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Dated: October 2, 2007
Full & Egal Universal Law Academy