The Complainant is Doha Bank (Q.S.C.) of Doha, Qatar, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is Olga Pererva of Poltava, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 26, 2016. On July 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on July 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 19, 2016.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on August 26, 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 was incorporated as Doha Bank in 1978 and has traded under the name Doha Bank since March 15, 1979. It provides domestic and international banking services. It has 30 branches in Qatar, six international branches (in Abu Dhabi, Dubai, Kuwait and three branches in India) and 12 representative offices across the world (in the UK, Japan, China, Singapore, South Korea, Turkey, Germany, Australia, Canada, Hong Kong, SAR of China, South Africa and the Emirates of Sharjah).
The Complainant is the owner of Registration No. 27577 for the DOHA BANK trademark in class 16 with the Intellectual Property Department at the Ministry of Economy and Commerce in Qatar. That registration was issued on September 8, 2003. The Complainant is the registrant of the domain name , which is used in connection with its domestic and international banking services.
The Respondent registered the disputed domain name on September 8, 2014 ("the Relevant Date"). The Respondent is not associated with the Complainant. The Respondent has been the unsuccessful n two prior decisions under the Policy: ACCOR v. Olga Pererva,WIPO Case No. D2012-0539; and Bank of Canton v. Olga Pererva, NAF Claim No. 1672374. 5. Parties' Contentions A. Complainant
Although the disputed domain name was created on September 20, 1999 and the Respondent was not transferred the domain name until September 22, 2014, the Complainant contends that the Respondent is the registrant of the domain name because the transfer of a domain name to a third party amounts to a new registration.
The Complainant contends that the disputed domain name is identical or confusingly similar to the DOHA BANK trademark. This is because it includes the DOHA BANK trademark in its entirety. It contends that the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for the purposes of the Policy.
The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It contends that the Complainant has never authorised the Respondent to use the DOHA BANK trade mark in any manner. It further contends that the Respondent has failed to create a bona fide offering of services or goods under the Policy by including commercial links for third-party websites, including links with banking services competitive with the Complainant. The Complainant contends that the Respondent has never been known by the disputed domain name nor acquired any trademark or service mark rights in that name.
As to bad faith, the Complainant contends that the disputed domain name should be considered as having been registered and used in bad faith by the Respondent. It contends that the Respondent's use of the disputed domain name in connection with a "monetised parking page", which includes links for services competitive with the Complainant, constitutes bad faith as provided by paragraph 4(b)(iv) of the Policy. It contends that given the Complainant applied for and registered its trademark 11 years before the Respondent obtained registration of the disputed domain name, the Respondent had constructive notice of the Complainant's trademark and has accordingly acted in bad faith. It cites the previous decision of ACCOR v Olga Pererva, supra where the panel considered that because the Respondent acquired the disputed domain name well after the complainant in that case registered its mark, there was sufficient evidence to ground an inference of bad faith.
The Complainant also contends that the Respondent has acted in bad faith pursuant to paragraph 4(b)(ii) of the Policy because the registration by the Respondent has prevented the Complainant from reflecting its mark in a corresponding domain name and because the Respondent has "engaged in a pattern of such conduct". This is shown by the history of successful cases brought against the Respondent'sregistration of other domain names with which she has no relationship, such as , , , and .
The Complainant requests that be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(I) That the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights; and
(II) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(III) That the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the trademark DOHA BANK by virtue of its trademark registration in Qatar. The Panel is also satisfied that the DOHA BANK trademark is widely known internationally as a result of use throughout the world since 1979.
The Panel finds that the disputed domain name is identical to the Complainant's trademark. This is because the Complainant's trademark is entirely subsumed within the disputed domain name. The generic Top-Level Domain ("gTLD") ".com" is insufficient to prevent a finding of confusing similarity.
The Panel therefore finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(I) That before notice of the dispute, the respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to a disputed domain name in connection with a bona fide offering of goods or services; or
(II) That the respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(III) That the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Complainant has stated, and the Panel accepts, that it has not authorized the Respondent's use of its trademark and the Respondent is not sponsored, endorsed by, or in any way affiliated with the Complainant or its subsidiaries or affiliates. The Panel also accepts that the placement of links on the website located at the disputed domain name for financial services is not a bona fide use in the form of offering goods or services. In fact, as discussed below, the Panel considers this to be evidence of bad faith use in this case.
The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, and in the absence of any response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trade mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) That the respondent has registered the disputed domain name in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) That the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) That by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website 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 the respondent's website or location or of a product or service on the respondent's website or location.
The Panel accepts that the transfer of the disputed domain name is a registration for the purposes of the Policy. It is also satisfied that the disputed domain name has been registered in bad faith for the following reasons:
(i) The Respondent has engaged in a pattern of conduct of registering disputed domain names in order to prevent the owners of trade marks from reflecting that mark in a corresponding domain name. A pattern of conduct can involve multiple UDRP cases with similar factual situations or a single case where a respondent has registered multiple domain names which are similar to trademarks. See in this regard paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant has cited two examples of previous UDRP panel decisions where domain names registered by the Respondent have been transferred in similar circumstances, namely ACCOR v. Olga Pererva, supra; and Bank of Canton v. Olga Pererva, supra. The Panel concludes that paragraph 4(b)(ii) is satisfied and draws the inference that the registration and use of the Disputed Domain Name in this instance has been in bad faith.
(ii) Further, paragraph 2 of the UDRP puts a burden on the registrant of a domain name where it states "By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party … it is your responsibility to determine whether your domain name infringes or violates someone else's rights." A simple search engine search for "Doha Bank" prior to the Respondent registering the disputed domain name would have instantly revealed the Complainant, its domain name and its website at "www..qa" and its trademark. See in this regard paragraph 3.4 of WIPO Overview 2.0.
The Panel is also satisfied that the disputed domain name has been used in bad faith. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's DOHA BANK trademark as to the source, sponsorship, affiliation, or endorsement of that website.
Screenshots supplied by the Complainant show that links for financial services competitive with the Complainant's services were displayed on the website available at the disputed domain name. These links include options for "Online Banking", "Banking", "Checking Account", "Online Bank Account", "Open a Bank Account" and "Bank Interest Rates". The Panel concludes that these monetised links enabling the earning of click-through fees constitutes use in bad faith within paragraph 4(b)(iv) of the Policy. The Respondent has attempted to attract for commercial gain users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant, given use of the Complainant's trade mark in the disputed domain name.
Again the Panel draws adverse inferences from the Respondent's failure to respond to the Complaint.
Accordingly, the Panel finds that paragraph 4(b) of the Policy is satisfied in favor of the Complainant. 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.
Andrew Brown QC
Sole Panelist
Date: August 30, 2016
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