The Complainant is EFG Bank European Financial Group of Geneva, Switzerland, represented by BCCC Attorneys-at-law, Switzerland.
The Respondent is Domain Consults of Los Angeles, California, United States of America. 2. The Domain Names and Registrar
The disputed domain names as set out in the Complaint are: ; ; and are registered with eNom1. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2011. On November 3, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On November 4, 2011, eNom 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 disputed domain name.
The Center verified that the 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 November 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2011.
The Center appointed John Swinson as the sole panelist in this matter on December 20, 2011. 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 EFG Bank European Financial Group of Geneva, Switzerland, a wholly owned subsidiary of European Financial Group EFT (Luxembourg), SA. The Complainant is part of a global private banking and asset management group and owns numerous registered trade marks incorporating EFG. As part of the Complainant’s operations, it states that it provides online banking facilities to its customers.
The Respondent is Domain Consults of Los Angeles, California, United States of America. The Respondent did not file a Response, and consequently little information is known about the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions:
The Complainant asserts that the disputed domain names were registered with eNom, Inc. as follows:
(a) registered on an unknown date;
(b) registered on an unknown date; and
(c) registered on September 29, 2011.2. i. Identical or Confusingly Similar
The Complainant owns numerous registered trade marks throughout the world which contain, either as their sole element or in combination with others, the EFG word or logo. These trade marks are used by a number of entities belonging to the European Financial Group, the parent company of the Complainant.
The Complainant’s subsidiary owns the domain name , registered on May 20, 2000.
The Complainant conducts banking operations in over 30 countries including the United Kingdom and Latin America. The focus of the Complainant’s business is the provision of private banking and wealth management services.
On October 11 and 12, 2011, Ms. Cuervo, a representative of EFG Bank in Bogota, Columbia received emails from a Mr. Cortes Rojas. Mr. Cortes Rojas referred Ms. Cuervo to a series of emails he had received on October 4 and 5, 2011 from a “Mr. Williams Anderson”. Mr. Anderson’s emails had been sent from a email address. The emails attempted to elicit information from Mr. Cortes Rojas for, what is believed to be, the purpose of enabling the Respondent to set up a fake account with the Complainant.
The websites linked to the disputed domain names, prior to institution of the Complaint, were what appeared to be reproductions of the official website of the Complainant translated into Spanish.
The Complainant contends that the inclusion of a geographical indication and the letter “c” in the domain name does not modify it in such a way as to prevent confusion in the minds of consumers. The likelihood of confusion has been demonstrated by the incident involving Mr. Cortes Rojas. ii. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Respondent has not:
(a) used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(b) been commonly known by the disputed domain name; or
(c) been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trade mark or service mark at issue.
On the contrary, the website linked to the disputed domain names is a phishing website which reproduces the Complainant’s Subsidiary’s website, including its trade marks. Panels have found that unauthorised reproduction of third parties’ trade marks on a website for identical or similar products, whose authenticity is more than doubtful typically amounts to abusive use (see e.g. ECCO Sko A/S v. He Shaonan, Lin Zhiyuan, Qinghuo Ou, WIPO Case No. D2010-0650; GoD Inc. v. GoDaddysD, Clark Signs, Graham Clark, WIPO Case No. D2007-0303). These decisions accord with another line of decisions which hold that use of a third party’s trade marks for commercial purposes does not typically constitute a bona fide use (see e.g. Hoffmann-LaRoche AS v. Transliner Consultants, WIPO Case No. D2007-1359; National Football League v. Peter Blusher d/b/a BluTech Tickets, WIPO Case No. D2007-1074).
Phishing websites are illegal in most jurisdictions and cannot amount to a bona fide offering of goods or services. iii. Registered and Used in Bad Faith
The disputed domain names were registered and are being used in bad faith. The Respondent was obviously aware of the Complainant’s trade marks and activities when it registered the disputed domain names and launched a website mirroring the Complainant’s Subsidiary’s website.
There is no doubt that the Respondent’s website was implemented for phishing purposes. Phishing activities pose a severe threat to customers, trade mark holders and other third parties. Several panels have found that performing phishing scams using a disputed domain name constitutes use in bad faith (see e.g. CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251; The Boots Company, PLC v. The programmer adviser, WIPO Case No. D2009-1383; and Societe Francaise Du Radiotelephone – SFR v. Morel David,WIPO Case No. D2009-1563). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even where there Respondent has not filed a Response. A. Procedural Issues i. The Disputed Domain Name
The Complaint refers to three separate domain names as the disputed domains. However, and are not separate domain names, as such; they are sub-domains of the domain name.
Since there is no evidence of record that these sub-domains are as such registered with a registrar, via an applicable registration agreement which inter alia incorporates the Policy as an appropriate administrative dispute resolution mechanism, the Panel is not able to order that a sub-domain be transferred. By contrast, for example, the Panel is aware that certain sub-domains within the sub-domain industry, such as those registered with CentralNic, are registered via registration agreement, into which an applicable rights protection policy is typically incorporated, the CentralNic policy, which is based on the UDRP. (See e.g. applicable information on the WIPO Center’s webpage at “/amc/en/domains/gtld/cnic/index.html”). However, this is not the case with respect to the sub-domains at issue here. Although there may be no reason in principle why the UDRP could not apply mutatis mutandis to a sub-domain name registered with a register via a registration agreement that incorporates the UDRP as an applicable Policy, it would seem to be incumbent on a Complainant seeking to bring such case before a UDRP provider or Panel against a sub-domain name registrant either to show evidence of such UDRP applicability, or failing that, the consent of the Registrant to the UDRP applicability to the instant sub-domain dispute. As a practical matter, it might also be necessary to confirm that the Registrar could implement any panel decision issued under the Policy.
It is however clear that the Policy does apply to the disputed domain name , which is registered with an ICANN-accredited registrar, via a registrar agreement that is required (under the ICANN Registrar Accreditation Agreement to incorporate the UDRP).
Accordingly, the Panel will consider in this Policy proceeding the disputed domain name to be the domain name only. The Panel does note, however, that as a practical matter, any order made by the Panel with respect to the disputed domain name would appear to apply if only de facto with respect to control over any sub-domain name usage within the disputed domain name. ii. Respondent’s Default
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413; M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941; Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED,WIPO Case No. D2008-1036; and Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383).
However, the Panel may draw appropriate inferences from a respondent’s default. Nonetheless, a complainant must establish all three elements of paragraph 4(a) of the Policy. Where a complaint is based wholly on unsupported assertions, the requested remedy will be denied despite no response having been filed. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant asserts that it owns registered trade marks in many countries throughout the world, which incorporate “EFG” or the “EFG logo”. The Complainant provided a chart setting out its ownership of certain trade marks, including word marks for EFG and EFG CAPITAL. The Panel is prepared to accept that the Complainant owns the EFG and EFG CAPITAL registered trade marks.
The panel considers that disputed domain name is confusingly similar to the Complainant’s trade marks for EFG and EFG CAPITAL. The addition of “uk” at the beginning of the disputed domain name fails to mitigate this similarity since it is merely a common abbreviation for the United Kingdom (see e.g. Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; and Hachette Filipacchi Presse v. Vanilla Limited / Vanilla Inc. / Domain Finance Ltd.,WIPO Case No. D2005-0587). Visually, the letters “uk” are separated from the letters “efg” by a hyphen, increasing the likelihood of confusion with the Complainant’s trade marks.
The addition of the letter “c” at the end of the “efg” sequence of letters is also unlikely to mitigate confusion, in fact it may increase confusion since the Complainant owns a trade mark for EFG CAPITAL.
The Panel finds that despite some minor differences, the Complainant’s trade mark remains the dominant element in the disputed domain name. The Complainant’s trade marks are not sufficiently subsumed within other words or textual elements in a way which would avoid a finding of confusing similarity.
It is therefore clear that the disputed domain name and the Complainant’s trade marks are confusingly similar. The Complainant must necessarily succeed on the first element of the Policy C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. The Panel concludes that the Respondent’s purpose in registering the disputed domain name was to mislead consumers into believing they were dealing with a subsidiary of the Complainant. The use of the disputed domain is a clear example of phishing, and as such the Respondent cannot be described as having any legitimate interest in the disputed domain name. Further, the unauthorised use of the Complainant’s trade marks on the websites linked to the disputed domain name violates the exclusive rights of the Complainant (see GoD Inc. v. GoDaddysD, Clark Signs, Graham Clark, WIPO Case No. D2007-0303).
On the facts presented to the Panel, there does not appear to be any legitimate, fair, noncommercial or bona fide offering of goods or services through the disputed domain name. The prima facie case of the Respondent’s lack of rights or legitimate interests in the disputed domain name is clearly made out in this instance.
In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant must necessarily succeed on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith, including where a domain name is: “used to intentionally attract, for commercial gain, internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that we site or location or of a product or service on that web site or location”.
In the present circumstances, the Respondent deliberately created a replica of the Complainant’s web site for the purpose of deceiving consumers in what the Panel concludes is an attempt to commit acts of fraud. The Panel finds that on the facts it is plain that the Respondent registered and used the disputed domain name in bad faith and therefore the Complainant must necessarily succeed on the third element of the Policy (see e.g. CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: December 23, 2011
1 In its Registrar Verification Response of November 4, 2011, eNom stated that “ and are sub-domains of the disputed domain [].
2 In a communication to the Center on November 10, 2011, the Registrar, eNom, confirmed that “As sub-domains are not actually registered, we cannot provide any information regarding them.” This issue is addressed at section 6(A)(i) of the Decision, infra.
Full & Egal Universal Law Academy