Complainant is Mitsubishi UFJ Financial Group, Inc. of Tokyo, Japan, represented by Sanderson & Co., United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
Respondent is Jose Castrellon, Cyber Cast Intl. of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 29, 2014. On October 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2014, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and providing contact details.
The Center verified that the Complaint satisfies 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 Respondent of the Complaint, and the proceeding commenced on November 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 27, 2014.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on December 21, 2014. 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
Complainant was formed by a merger of two of Japan's biggest banking entities in 2005. Complainant has the largest overseas network of any Japanese bank, with offices and subsidiaries in over forty countries. According to the record and Complainant's undisputed contentions, as of March 2014, Complainant employed over 100,000 people, held over USD 2.5 trillion in assets, and over USD 1.6 trillion in deposits. Complainant is part of the Mitsubishi multinational conglomerate that comprises a range of autonomous businesses and which share the Mitsubishi brand and trademark. Complainant owns trademarks for the term MUFG, including for word mark MUFG, as set forth in Japanese Registration No. 4902421 (2004), and European Registration No. 011660255 (2013), as well as MUFG, and design, as set forth in International Registration Nos. 879802 (2005) and 987309 (2008). Complainant also owns trademarks for the term MUFG included with other terms, including MUFG BizBuddy, as set forth in International Registration No. 1026352 (2009).
Respondent registered the disputed domain name, , on April 7, 2014.
Respondent has apparently not used the disputed domain name to link to an active web site. However, Respondent has used an email address associated with the domain name as part of a scheme to divert potential consumers of Complainant's banking services to Respondent's web and other activities by seeking investors on Respondent's behalf. In this way, Respondent has used the disputed domain name for his own apparent financial gain.
Respondent has no license from, or other affiliation with, Complainant, nor any permission to use Complainant's marks in connection with his activities. 5. Parties' Contentions A. Complainant
Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant's trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
First, Complainant contends that the disputed domain name is identical or confusingly similar to the MUFG and MUFG, and design marks for which Complainant has various registrations. Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name. Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith. In particular, Complainant submitted into the record an electronic mail message sent from an address listed as [redacted]@, which is an address associated with the disputed domain name. The email, which was sent on June 3, 2014, to an individual in the United Kingdom, contained the following message:
"Please find the attached documents detailing the agreement for the purchase of your Primary Water shares and the Net Capital Charge payment. Mr. Higgins informs me that you requested some additional information for your verification purposes. Please also find attached the regulator's report pertaining to the NCC for all shareholders and you can confirm Mr. Higgin's role and position within our group by going to the Financial Industry Regulatory Authority at:
On the top right of their website you can enter Mr. Higgin's CRD number which is [redacted] or our company CRD number which is [redacted]. You will need to select firm if you enter the latter number.
Please sign and return the agreement within the time frame specified.
Kind regards,
Christina Ramon
Mitsubishi UFJ Financial Group"
Complainant notes that Mr. Higgins is an actual employee of Complainant, but that he did not authorize or otherwise know about the message. Rather, the message, which was not authorized by Complainant, appears to be a phishing scam, intended to fraudulently lead potential consumers to believe that they are being contacted by Complainant or its authorized representatives. B. Respondent
Respondent did not reply to Complainant's contentions in this proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name is "identical or confusingly similar to a trademark or service mark in which the complainant has rights" in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is.
The disputed domain name incorporates in full registered trademark MUFG, and adds the descriptive or generic term "mail," separated by a hyphen. The Panel finds that the added word "mail" in the disputed domain name would be perceived by web users as descriptive of a website where they could find information about Complainant and its services, including means of contacting Complainant, such as the message sent by Respondent from the domain address "@." This is also true since Complainant itself holds and uses marks that include the term MUFG with designs and with other added terms.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words generally does not make a domain name any less "identical or confusingly similar" for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb,WIPO Case No. D2000-1500 (transferring ); Wal-Mart Stores, Inc. v. Horoshiy, Inc.,WIPO Case No. D2004-0620 (transferring ); General Electric Company v. Recruiters,WIPO Case No. D2007-0584 (transferring ).
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain names at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name "in connection with a bona fide offering of goods or services"; (ii) demonstration that Respondent has been "commonly known by the domain name"; or (iii) "legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
Respondent did not reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent's rights or legitimate interests in the disputed domain name. Rather, as mentioned in Sections 4 and 5 of this Panel's decision, Respondent has apparently used an email address associated with the disputed domain name to divert Internet users for fraudulent purposes, apparently for Respondent's financial gain.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent's lack of "rights or legitimate interests" in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where "by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent's] web site 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 [respondent's] web site or location or of a product or service on [the] web site or location." As noted in Sections 4 and 5 of this Panel's decision, Respondent has used an email address associated with the disputed domain name to divert Internet users. Specifically, Respondent has perpetuated a scheme to divert potential consumers by contacting them with an address including Complainant's mark, and purporting to represent Complainant, and thereby soliciting investment opportunities. In so doing, Respondent is trading on the goodwill of Complainant's trademarks to attract Internet users, presumably for Respondent's own commercial gain.
Finally, Respondent has evidenced a pattern of bad faith conduct in accordance with paragraph 4(b)(ii), by registering domain names to prevent trademark owners from reflecting their mark in a domain name and to perpetuate schemes similar to that at issue in this proceeding, as noted in other UDRP decisions. See Mitsubishi UFJ Financial Group, Inc. v. Jose Castrellon, Sky IP, Inc.,WIPO Case No. D2012-2334 (transferring and stating, in quote, about this very Respondent, "use of a disputed domain name for the purpose of defrauding Internet users by the operation of a 'phishing' website is perhaps the clearest evidence of registration and use of a domain name in bad faith. The fact that the website is currently inactive does not negate such a finding. [citations omitted]"; see also Dixons B.V. v. Jose Castrellon, WIPO Case No. D2014-1045 (transferring ), stating "[m]any panels have held that the 'passive holding' of a domain name can constitute bad faith in light of the overall circumstances of the case."
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) 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 Complainant.
Lorelei Ritchie
Sole Panelist
Date: December 31, 2014
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