The Complainant is Citibank Privatkunden AG & Co. KGaA of Dûsserldorf, Germany, represented by MEYER & Partenaires, France.
The Respondent is PrivacyP / N/A, indish india mr.ugala of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrar
The disputed domain names , , , , , and (the “Domain Names”) are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2010. On July 12, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the Domain Names. On July 14, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 21, 2010. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2010.
The Center appointed Luca Barbero as the sole panelist in this matter on August 16, 2010. 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 Citibank Privatkunden AG & Co. KGaA, a commercial bank which provides personal and business banking in Germany and operates, as of December 2008, as a subsidiary of Group Crédit Mutuel. On February 22, 2010, the Complainant changed its trade name into Targo Bank AG & Co. KGaA.
The Complainant is the owner of several trademark registrations consisting in or including the sign TARGO BANK, such as the German nominative trademark No. 302009004415 for TARGO BANK, filed on January 23, 2009, in classes 16, 35, 36 and 38; the International trademark No. 1013173 for TARGO BANK of July 22, 2009, in classes 16, 35, 36 and 38; the Community trademark No. 008285579 for TARGO BANK and design, filed on April 14, 2009 in classes 16, 35, 36 and 38; and the German nominative trademark No. 302009004416 for TARGO BANK SO GEHT BANK HEUTE, filed on January 23, 2009 in classes 16, 35, 36 and 38.
The Complainant is also the owner of numerous domain names consisting in or including the sign TARGO BANK, such as , , , , and . All the mentioned domain names were registered by the Complainant before the registration of the Domain Names by the Respondent on March 13 and 14, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names , , , , , and are confusingly similar to trademarks and domain names in which the Complainant has rights as they reproduce the registered trademark TARGO BANK. The Complainant states that the mere inversion of the two terms constituting the trademark, the addition of an hyphen, of the letter “s” and of the suffix “en” are not sufficient to exclude the confusing similarity, also in light of the fact that the word “banken” is the plural of “bank” in German.
With reference to rights or legitimate interests in respect of the Domain Names, the Complainant states that the Respondent is not related in any way to the Complainant’s business, that the Respondent is not currently and has never been known under the sign BANK TARGO or TARGO BANKEN or TARGO BANKS and has no trademark rights on these signs. The Complainant highlights that no license or authorization has been granted to the Respondent to make any use, nor apply for registration of the disputed domain names by the Complainant.
The Complainant also states that the Respondent registered the Domain Names to take advantage of the Complainant’s trademarks and to confuse and divert Internet users. The Complainant, in particular, underlines that the Respondent “has not engaged in any action that shows it has right or legitimate interests in the disputed domain names”.
With reference to the circumstances evidencing the Respondent’s bad faith, the Complainant indicates that the Respondent could not have ignored the Complainant’s trademark TARGO BANK at the time it applied for the Domain Names, since the Complainant is the registered owner of trademark and domain name rights on TARGO BANK also in the country in which the Respondent is based. Therefore, the Complainant points out that it is “reasonable to conclude that only someone who is familiar with the TARGO BANK trademarks is likely to have registered the disputed domain names”.
With reference to the use of the Domain Names, the Complainant states that the Domain Names are not being used for active websites and that the Respondent’s inaction constitutes bad faith use, in light of the reputation of the Complainant’s trademark TARGO BANK and considering that the Respondent has submitted no evidence whatsoever of any good faith use of the Domain Names and that this non-use is harmful for the Complainant.
The Complainant also points out that the Domain Names could be used in any moment for phishing attacks, which frequently involve banking groups like the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions and is in default.
Therefore the Panel shall decide this proceeding on the basis of the Complainant’s submissions, drawing such inferences from the Respondent’s default that are considered appropriate according to paragraph 14(b) of the Rules. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith. A. Domain Names Identical or Confusingly Similar
The Complainant has provided evidence of ownership of the German nominative trademark No. 302009004415 for TARGO BANK, filed on January 23, 2009, in classes 16, 35, 36 and 38; and of the German nominative trademark No. 302009004416 for TARGO BANK SO GEHT BANK HEUTE, filed on January 23, 2009, in classes 16, 35, 36 and 38. The Complainant has also proved ownership of the International trademark No. 1013173 for TARGO BANK, of July 22, 2009, in classes 16, 35, 36 and 38; and of the Community trademark No. 008285579 for TARGO BANK and design, filed on April 14, 2009, in classes 16, 35, 36 and 38.
The Panel finds that the Domain Names , , , , , and are confusingly similar to the registered trademarks owned by the Complainant, since all the Domain Names reproduce the two words constituting the trademark TARGO BANK. The mere inversion of the terms, the addition of an hyphen, of the letter “s” or the suffix “en” are not sufficient to exclude confusing similarity.
See, along these lines, Credit Industriel et Commercial S.A., Banque Fédérative du Credit Mutuel v. Headwaters MB,WIPO Case No. D2008-1892, regarding the domain name , in which it was found: “The [p]anel also finds that the domain name is likely to be confused with [c]omplainants’ trademarks because it incorporates [c]omplainants’ trademarks. Neither the reversal of the trademarks CIC and CM nor the addition of an ‘S’ at the end of the domain name prevents a finding of confusingly similarity. It is not significant that these acronyms are inversed”. See also Schneider Electric SA v. Ningbo Wecans Network Technology Co., Ltd., Ningbo Eurosin International Trade Co., Ltd,WIPO Case No. D2004-0554, regarding , in which the Panel stated: “The inversion of the words and the addition of a hyphen are not enough to avoid confusion”.
In view of the above, the Panel finds that the Complainant has proven that the Domain Names are confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Respondent may establish a right or legitimate interest in the Domain Names by demonstrating one of the circumstances in paragraph 4(c) of the Policy.
It is well-established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with UDRP precedent, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin, NAF Claim No. 852581).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.
Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
There is no indication before the Panel that the Respondent is commonly known by the Domain Names.
Since the Domain Names are passively held and the Respondent is in default, there is no evidence that the Respondent has made preparations to use the Domain Names in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the Domain Names. See, in this regard, Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483, in which the panel found that “[a]bsent some contrary evidence from [r]espondent, passive holding of a domain name does not constitute ‘legitimate non-commercial or fair use’”.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As to bad faith at the time of the registration, the Panel notes that, in light of the Complainant’s prior trademark and domain name registrations for TARGO BANK since early 2009, covering also the country in which the Respondent is based, and considering that the trademark is known in Europe in the field of banking and financial services, the Respondent was most likely aware of the Complainant’s trademarks when it registered the six Domain Names confusingly similar to TARGO BANK, in March 2010.
The Panel finds paragraph 4(b)(ii) of the Policy applicable in this case, since the Respondent has registered the Domain Names in order to prevent the Complainant from using the mark and has clearly engaged in a pattern of such conduct since it has registered six domain names incorporating the registered trademark owned by the Complainant. In fact, according to the consensus view of the panel, a “pattern of conduct” as required in paragraph 4(b)(ii) of the Policy typically involves multiple domain names directed against multiple [c]omplainants, but may involve multiple domain names directed against a single [c]omplainant (see Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046, Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602).
With reference to the issue of the non use of the Domain Names by the Respondent, the Panel finds that in this case the “passive holding” infers bad faith, also in light of the pattern of registrations by the Respondent of similar domain names. In fact, as also established in a number of prior cases, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding; see the landmark case Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and, among others, LANCOME PARFUMS ET BEAUTE & CIE, L’OREAL v. 10 Selling,WIPO Case No. D2008-0226, in which the panel stated that “the consensus view in the URDP Panel decisions has been that ‘[t]he lack of active use of the domain name does not as such prevent a finding of bad faith’, and that a panel must examine such circumstances as ‘complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name’”.
In the case at hand, the Respondent has registered six domain names confusingly similar to the Complainant’s trademark, has used a privacy shield to hide its identity and has failed to respond to the Complainant’s contentions.
Moreover, since the meaning of the Domain Names is related to banking and financial services, the Panel finds that the Respondent could not make a legitimate noncommercial use of the Domain Names and that, on the balance of probabilities, any active use of the Domain Names would resolve to an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s web sites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s sites.
See, along these lines, Confédération Nationale du Crédit Mutuel v. “Thierry Manni”,WIPO Case No. D2007-1481 (“In the case at hand, due to the fact that the domain name is confusingly similar to the CREDIT MUTUEL trademark, registered notably in respect of class 36 of the Nice Classification (financial and monetary affairs) and whose meaning is undoubtedly related to the commercial world, the [p]anel can not conceive, prima facie, that the [r]espondent could make any active use of the domain name that would not be illegitimate”) and Credit Suisse Group v. Milanes-Espinach, Fernando and Milanes-Espinach, SA,WIPO Case No. D2000-1376, regarding the domain name (“This [a]dministrative [p]anel is also satisfied that in registering said domain name and in passively holding said domain name, the intention of the [r]espondent has been to take advantage of the [c]omplainant's goodwill in the combination of the words ‘credit’ and ‘suisse’ or ‘swiss’ in some way. It is therefore clear to this [a]dministrative [p]anel that, while the [r]espondent has not established any website accessible via said domain name, nonetheless, in the absence of any rights or legitimate interest of the [r]espondent in the said domain name, and given the established reputation of the [c]omplainant, on the balance of probabilities, any use of the said domain name by the Respondent would inevitably result in an intentional attempt to attract, for commercial gain, Internet users to the [r]espondent’s website or other on-line location, by creating a likelihood of confusion with the [c]omplainant's mark as to the source, sponsorship, affiliation, or endorsement of the [r]espondent’s site or location or of a product or service on the [r]espondent’s website or location”).
As stated in Confédération Nationale du Crédit Mutuel v. Daniel Delcore,WIPO Case No. DLC2009-0001: “Phishing is the criminally fraudulent process of attempting to acquire sensitive information such as usernames, passwords and credit card details by masquerading as a trustworthy entity in an electronic communication. Phishing is typically carried out by email or instant messaging and [it] often directs users to enter details at a fake website whose look and feel are almost identical to the legitimate one. Recent phishing attempts show that phishers are targeting the customers of banks and online payment services. Once a victim visits the phishing website the deception is not over. Some phishing scams use Javascript commands in order to alter the address bar. This is done either by placing a picture of a legitimate URL over the address bar, or by closing the original address bar and opening a new one with the legitimate URL. ‘Phishing’ is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user ids, passwords, etc. A fake website is created that is similar to that of a legitimate organization, typically a financial institution such as a bank or insurance company and this information is used for identity theft and other nefarious activities (see Halifax plc v. Sontaja Sanduc,WIPO Case No. D2004-0237 and also CareerBuilder, LLC v. Stephen Baker,WIPO Case No. D2005-0251)”.
In light of Internet users’ presumption of trustworthiness in domain names consisting in or incorporating registered trademarks, the Panel finds that, when domain names are identical or confusingly similar to the trademarks of banks or other financial institutions, the potential risks posed by phishing must be considered an additional circumstance evidencing bad faith, since phishing emails received from email accounts based on such domain names are even more misleading to recipients. Furthermore, in the case at hand, it cannot be excluded that the Respondent has already used or will use the Domain Names for phishing purposes.
In view of the above, the Panel finds that the 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.
Luca Barbero
Sole Panelist
Dated: August 27, 2010
Full & Egal Universal Law Academy