Complainant is EFG Bank European Financial Group S.A. of Geneva, Switzerland, represented by Nabarro, United Kingdom of Great Britain and Northern Ireland ("UK").
The Respondent is Xcorp1 Xcorp1 of New York, New York, United States of America ("US"). 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Network Solutions, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 13, 2015. On October 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 14, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on October 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 19, 2015.
The Center appointed Flip Petillion as the sole panelist in this matter on November 27, 2015. 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, EFG Bank European Financial Group S.A., is the parent company of a global private banking group. The group offers a wide range of services, including portfolio investment management through asset management teams in cities around the world. Complainant holds various trademarks, including the following:
- word mark EFG, registered with the United States Patent and Trademark Office ("USPTO") on June 6, 1997 under No. 2 554 449 in class 36;
- word mark EFG, registered with the Office of Harmonization in the Internal Market ("OHIM") on January 25, 1999 under No. 582742 in classes 16, 35 and 36.
The Disputed Domain Name was registered on June 20, 2015, and resolves to a website containing sponsored links. 5. Parties' Contentions A. Complainant
Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Finally, Complainant claims that the Disputed Domain Name was registered and is used in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
3. The Disputed Domain Name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there is an EFG trademark in which Complainant has rights. The trademark has been registered and used in various countries in connection with financial services.
The Panel notes that the Disputed Domain Name, , incorporates the Complainant's EFG trademark in its entirety. The Panel is of the opinion that the addition of the generic Top-Level Domain ("gTLD") can be disregarded when comparing the similarities between a domain name and a trademark (see Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269). Therefore, the Panel considers the Disputed Domain Name to be identical to Complainant's EFG trademark.
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is established case law under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of rebuttal on Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; 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).
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent's use and registration of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
In addition, the Panel is of the opinion that Respondent is not "making a 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" (Policy, paragraph 4(c)(iii)). Respondent uses the Disputed Domain Name to refer to a website incorporating sponsored links to promote services of third parties which are either competing with or closely related to the services offered by the Complainant, such as stock trading services.
According to this Panel, such use of the Disputed Domain Name is detrimental to Complainant and cannot be considered to constitute a bona fide commercial or fair use (see paragraph 2.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"); Delta-Sonic Carwash Systems, Inc. v. Radio plus, spol.s r.o.,WIPO Case No. D2015-1512).
Finally, Respondent did not reply to Complainant's arguments and decided not to take part in the administrative proceeding. This is a further indication of the absence of rights or legitimate interests in the Disputed Domain Name.
In view of the foregoing, the Panel considers that Complainant has also made out the second of the three elements that it must establish. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant's rights in the EFG trademark at the moment it registered the Disputed Domain Name. Complainant has valid trademarks in the US, where Respondent is located. A simple trademark search on the Internet would have revealed the presence and use of the EFG trademark by Complainant. Moreover, the Panel considers that the nature of the links on the website linked to the Disputed Domain Name creates at least an inference that Respondent was aware of Complainant at the time of registration of the Disputed Domain Name (see Delta-Sonic Carwash Systems, Inc. v. Radio plus, spol.s r.o.,WIPO Case No. D2015-1512).
The Panel therefore finds that Respondent's awareness of Complainant's trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO CaseNo. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix ("voip") suggested knowledge of the complainant's rights in the trademarks).
As mentioned above, Respondent uses the Disputed Domain Name to refer to a website incorporating sponsored links to promote services of third parties which are either competing with or closely related to the services offered by Complainant. While the intention to earn click-through-revenue is not in itself illegitimate, the Panel finds that the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use (see Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258; L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623).
The Panel therefore concludes that, by using the Disputed Domain Name incorporating Complainant's trademark in connection with a website containing links referable to goods and services relating to Complainant's industry, Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant's trademark. In accordance with paragraph 4(b)(iv) of the Policy, this is evidence of registration and use in bad faith.
Finally, by failing to respond to the Complaint, Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. 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 Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: December 11, 2015
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