Complainant is BKS Bank AG of Klagenfurt, Austria, represented by Schönherr Rechtsanwalte GmbH, Austria.
Respondent is Jianwei Guo of Shiyan, China. 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 May 29, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 30, 2017, 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 proceedings commenced on June 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 28, 2017.
The Center appointed Yijun Tian as the sole panelist in this matter on July 3, 2017. 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 A. Complainant
Complainant, BKS Bank AG, is a company incorporated in Klagenfurt, Austria. Founded in 1922, Complainant is a universal bank based in Klagenfurt, Carinthia, Austria, and serves both private and business customers. Complainant operates the banking and leasing business in Austria and several neighboring countries, such as Hungary and ltaly. Complainant’s balance sheet total was EUR 7 billion as of December 31, 2015, and Complainant employed 923 people and operated 59 bank branches throughout Austria, Slovenia, Croatia and Slovakia. Currently, Complainant has about 150,000 customers (135,000 private customers and about 15,000 corporate customers).
Complainant has exclusive rights in the and BKS BANK trademarks (thereafter ”). Complainant is the exclusive owner of several BKS BANK trademarks registered since March 8, 2004, such as International Trademark registration number 821772 (Annex G to the Complaint); Austrian Trademark registration number 215993 (Annex H to the Complaint). Complainant also owns and operates the domain names , , , and . B. Respondent
Respondent is Jianwei Guo of Shiyan, China. The disputed domain name was registered on February 14, 2017, long after the BKS Marks were registered. The disputed domain name currently resolves to an active website, which has been used to offer online computer games (Annex 3 to the Complaint). 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to the BKS Marks.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence on record and in particular with regards to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the BKS and BKS BANK marks acquired through registration. The BKS Marks have been registered internationally and in Austria since 2004.
The disputed domain name comprises the BKS BANK mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by the prefix “i”, and the generic Top-Level Domain (“gTLD”) suffix “.com” to the BKS BANK Marks. This does not eliminate the confusing similarity between Complainant’s registered trademarks and the disputed domain name.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610 citing General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087).
Further, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1 states:
“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”
Thus, the Panel finds that the prefix “i”, and the gTLD suffix “.com” are not sufficient to negate the confusing similarity between the disputed domain name and the BKS Marks. Given that “i” may be understood as an abbreviation for “Internet”, Internet users are likely to be confused and may falsely believe that the disputed domain name is operated by Complainant for providing products or services via the Internet.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable 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
(ii) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).
According to the Complaint, Complainant has rights in the BKS Marks registered in Austria and internationally since 2004, which long precede Respondent’s registration of the disputed domain name (in 2017).
Moreover, Respondent is not an authorized dealer of BKS branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the BKS Marks or to apply for or use any domain name incorporating the BKS Marks. Moreover, the Panel visited the disputed domain name, and found that Respondent is currently using the disputed domain name in connection with a website which provides the links of online games and gambling. Therefore, the Panel finds that Respondent has not provided sufficient evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “BKS Bank”.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2017, long after the BKS Marks became internationally known in providing banking services. The disputed domain name is confusingly similar to Complainant’s BKS Marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The pdisputed domain name resolved to a website with links to online games and gambling websites. It seems that Respondent is making profits through the Internet traffic attracted to the website under the disputed domain name.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and is using the disputed domain name in bad faith.
The Panel finds that Complainant has a reputation in the BKS Marks with regard to its products and services. Complainant has registered its BKS Marks since 2004. Based on the information provided by Complainant, it is a universal bank based in Austria. Complainant’s balance sheet total was EUR 7 billion as of December 31, 2015. Currently, Complainant has about 150,000 customers. It is unlikely that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2017).
Moreover, Respondent is using the website resolved by the disputed domain name to offer online games and gambling services and the links to online game or gambling service websites. Thus, the Panel concludes that Respondent is currently using the confusingly similar disputed domain name with the intention to “attract, for commercial gain, Internet users to Respondent’s websites.”
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the reputation of the BKS Marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of a confusingly similar disputed domain name created a likelihood of confusion with the BKS Marks. Moreover, as mentioned above, Respondent offered the links to online game and gambling websites via the website to which the disputed domain name resolves. The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name, which is confusingly similar to Complainant’s internationally known trademarks, intended to disrupt Complainant’s business. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent are indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third element of paragraph 4(a) 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 disputed domain name be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: July 25, 2017
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