The Complainant is Sberbank of Moscow, Russian Federation, represented internally.
The Respondent is Alex Aleksandrov of Kiev, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with EvoPlus Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2016. On March 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 10, 2016, 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 March 14, 2016.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2016.
The Center appointed Assen Alexiev as the sole panelist in this matter on April 19, 2016. 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 Сбербанк России (“Sberbank of Russia” in English) is one of the largest banks in Russia and in Europe. It has representative offices and subsidiaries in the CIS countries, in nine countries of Central and Eastern Europe, and also in China, India and Turkey. The Complainant also operates in other countries, including the USA. The Complainant has more than 110 million customers in the Russian Federation. The Complainant has operated under the name “Sberbank” since 1991. Its official website is located at the domain name registered by the Complainant on July 25, 2008.
The Complainant is the owner of a number of trademark registrations for SBERBANK, including the following registrations (the “SBERBANK trademark”):
- the trademark SBERBANK with registration No. 463,470, registered on June 4, 2012 in the Russian Federation for services in International Class 36;
- the International trademark SBERBANK with registration No. 1,097,227, registered on September 5, 2011 for services in International Class 36;
- - the combined trademark SBERBANK with registration No. 4,769,007, registered on July 7, 2015 in the USA for services in International Class 36;
- the combined trademark СБЕРБАНК ОНЛАЙН (transliterated as “SBERBANK ONLINE”) with registration No. 435,579, registered on April 20, 2011 in the Russian Federation for services in International Classes 35, 36 and 38; and
- the combined trademark СБЕРБАНК ОНЛАЙН (transliterated as “SBERBANK ONLINE”) with registration No. 435,580, registered on April 20, 2011 in the Russian Federation for services in International Classes 35, 36 and 38.
The trademark СБЕРБАНК РОССИИ (translated as “SBERBANK OF RUSSIA”) of the Complainant was registered as a well known trademark with registration No.89 in the Russian Federation as of December 31, 2008.
The disputed domain name was registered on May 21, 2014. Currently, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the well-known SBERBANK trademark in which the Complainant has rights.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no trademark registration for “Sberbank”, and the disputed domain name does not reflect the name of the Respondent. The Respondent has no relation to the business activities of the Complainant and has not been authorized by the Complainant to use the SBERBANK trademark.
The Complainant contends that the disputed domain name was registered and is being used in bad faith.
The content of the website at the disputed domain name is in Russian, which shows that it is directed to Russian speakers. In addition to information about the services and products of the Complainant, the website also contains advertising banners about services and products of third parties, including financial organizations. According to the Complainant, this indicates that the purpose of the Respondent is not to inform users but to free ride on the reputation of the Complainant among consumers and to attract them to the website at the disputed domain name in order to sell advertising space on the website to third parties. Considering that the Complainant’s online banking platform is called “Sberbank Online”, the registration and use by the Respondent of the disputed domain name which is confusingly similar to the name of this platform is also an act of unfair competition to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…” In the event of a default, under the Rules, paragraph (14)(b): “[…] the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to make its Decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the SBERBANK trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” part of the disputed domain name.
Therefore, the relevant part of the disputed domain name that has to be analyzed is its “online-sberbank” section, which contains the elements “online” and “sberbank”, joined by a hyphen. The distinctive element “sberbank” is identical to the SBERBANK trademark, while the element “online” is descriptive and its combination with the “sberbank” element is likely to confuse Internet users into regarding the disputed domain name as an official online location of the Complainant. This likelihood of confusion is further strengthened by the fact that the online platform of the Complainant through which it provides its services is called “Sberbank Online”.
Taking the above into account, the Panel finds that the disputed domain name is confusingly similar to the SBERBANK trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the name Sberbank and that the Respondent has no rights in the SBERBANK trademark and has not been authorized by the Complainant to use them. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
There is no evidence in the case file that the Respondent is commonly known by the disputed domain names, and the Respondent has not denied the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests.
The disputed domain name incorporates the SBERBANK trademark entirely with the addition of the element “online”. This makes it likely that Internet users may regard the disputed domain name as related to the Complainant. The website associated to the disputed domain name has the appearance of an Internet portal providing information about the “Sberbank Online” Internet banking services of the Complainant. In addition to information about products and services offered by the Complainant, the website also displays advertising banners for debit and credit card services offered by third parties. This set of circumstances shows that the Respondent is well aware of the business of the Complainant and makes it likely that the Respondent exploits the popularity of the Complainant and of the SBERBANK trademark to attract the attention of Internet users to its website and to the advertising banners for services that compete with the offerings of the Complainant. In the Panel’s view, such conduct cannot be regarded as giving rise to rights and legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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 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 your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
The facts of this case show that the disputed domain name was registered with knowledge of the reputation and goodwill of the Complainant. The disputed domain name incorporates the SBERBANK trademark with the addition of the element “online”, which combination is confusingly similar to the designation “Sberbank Online” under which the Complainant offers its own online services. This similarity makes a false appearance of association with the Complainant. The conduct of the Respondent shows that it was well aware of the SBERBANK trademark and its attractiveness when it registered the disputed domain name, and that its decision to register it is likely to have been made in view of the popularity of the same trademark. This conclusion supports a finding that the Respondent registered the disputed domain name in bad faith.
The website associated to the disputed domain name contains information about the products and services of the Complainant, but also advertises third party credit and debit card services. This supports a finding that, by using the disputed domain name, the Respondent has intentionally exploited the goodwill of the Complainant’s SBERBANK trademark in an attempt to attract, for commercial gain, Internet users to the website at the disputed domain name and to expose them to advertisements for products and services that compete with those of the Complainant. This conduct supports a finding that the disputed domain name is being used in bad faith.
On the basis of all the above the Panel finds that the disputed domain name has been registered and 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 the Complainant.
Assen Alexiev
Sole Panelist
Date: May 5, 2016
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