The Complainant is The One Account Limited of London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Tony Donaghey - Eranet Int Ltd of Toronto, Canada / Chris Patton of Victoria Harbour, Canada. 2. The Domain Names and Registrar
At the time the Complaint and the First Amended Complaint were filed, the disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2017. On December 20, 2017, the Center transmitted by email to the original Registrars a request for registrar verification in connection with the disputed domain names. On December 21, 2018, the then Registrars transmitted by email to the Center their verification responses confirming that the Respondents were listed as the registrants and providing the contact details. On January 12, 2018, the Complainant forwarded to the Center an email which the Complainant had received from the first-named Respondent, Mr Donaghey, following service of the Complaint on the first-named Respondent by the Complainant. Noting that the then-named Registrars had confirmed that the then disputed domain names were registered in the names of different Respondents, on January 15, 2018, the Center invited the Complainant to submit an amended Complaint in relation to the consolidation of Respondents. On January 19, 2018:
a) the first-named Respondent, Mr. Donaghey, submitted an email in response to the Complaint; and
b) the Complainant submitted to the Center an amended Complaint, asking for the domain name relating to the then second Respondent to be deleted from the Complaint.
On January 22, 2018, the first-named Respondent, Mr. Donaghey, submitted a further email in response to the amended Complaint.
On about February 7, 2018, the Center ascertained that, despite having been placed on “Registrar lock”, the first Registrar, Netim Euratechnologies, had allowed the disputed domain names to be transferred to the second Respondent, Chris Patton, and a new Registrar, NameCheap. As a result, the Center invited the Complainant to submit an amendment to reflect such change. The Complainant filed a second amended Complaint on February 9, 2018. On February 9, 2018, the Center transmitted a request for registrar verification in connection with the disputed domain names to the newly identified Registrar, who replied to the Center on the same day, confirming that the second identified Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint together with the two amended Complaints 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 February 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2018. The first-named Respondent submitted an email communication to the Center on February 21, 2018. The Center notified the Parties of the commencement of panel appointment process on March 7, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 22, 2018. 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 is a subsidiary of The Royal Bank of Scotland Group plc (RBS). The Complainant was formed in 1997 as a joint venture between RBS and Virgin Direct to provide banking and financial services in the United Kingdom. In 2001, RBS acquired Virgin Direct’s interest in the Complainant. The Complainant’s profit before taxes in 2016 was in excess of GBP 12 million, of which more than GBP 9 million represented retained profit.
Between June and November 2017, through its website at the Complainant had some 162,000 visitors.
The Complainant has four registered European Union Trademarks (“EUTM”), Nos 002492031, 003363835, 003543071 and 003543089. The earliest of these, EUTM No. 002492031 was filed on December 6, 2001 and registered on June 12, 2003; the EUTM No. 003363835 was filed on September 22, 2003 and registered on November 23, 2004; the last two were filed on November 17, 2003 and registered on February 24, 2005. Each is registered in respect of banking and financial services in International Class 36. EUTM No. 002492031 is for a figurative version of “one account”, featuring the word “one” in a white font against a black or dark ellipse and the word “account” in black or dark lettering. EUTMs 003363835 and 003543071 are for similarly stylized versions of the words “the one account” and EUTM 003543089 is for a similarly stylized mark featuring the word “one” only.
The disputed domain names were first created on January 13, 2016. Until about December 6, 2017, the disputed domain names resolved to websites which the Complainant contends were engaged in phishing schemes to obtain personal data of the Complainant’s customers. On December 6, 2017, the Complainant sent a “takedown email” to the then Registrar and host of the websites, Netim Euratechnologies, seeking the deactivation of the websites.
For some time after that date, the disputed domain names each resolved to a “parking page” which offers the hosts’ services to assist customers to “buy website traffic”. At the time this Decision is being prepared, the disputed domain names appear to be inactive. 5. Discussion and Findings
No response has been filed by the second-named Respondent, Chris Patton.
However, the Complainant served the Second Amended Complaint and Annexes on both the first named Respondent, Mr. Donaghey, and the second named Respondent, Mr. Patton when submitting the second amended Complaint. In addition, after the Center forwarded the Second Amended Complaint to both Mr. Donaghey and Mr. Patton as well as both the former and current Registrars:
a) the courier was unable to deliver the hard copy to the address provided by Mr. Donaghey to the former Registrar;
b) emails to the “postmaster” mailbox for each of the disputed domain names were rejected by the server, but not emails to either the email address for Mr. Donaghey or the email address provided by Mr. Patton and confirmed as correct by the Registrar; and
c) Mr Donaghey provided an email response on February 21, 2018, the full text of which is as follows:
“SOme comoany WANT to capture MY domains! with idiotic proes of some fraud, and YOU (WIPO) asking money from me just for my responce to protect MY domains from capturing ?????? YOU ARE THE SAME CYBER ROBBERS!!!!! Cheaters and mafia!!!!!!!!!!”
(The earlier emails from Mr. Donaghey, while longer in text, were essentially to the same substantive effect.)
The Panel notes further that, after the Complaint was filed and the Center sought Registrar verification from the original Registrar, the disputed domain names were placed on “Registrar Lock”. At some point after this, the disputed domain names were transferred to the second-named Respondent and the current Registrar. These transfers are in breach of paragraph 8 of the Policy: WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft 2,WIPO Case No. D2012-0033. The original Registrar has not provided an adequate explanation for the transfers.
In these circumstances, the Further Amended Complaint has been sent to the second-named Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the current Registrar) in accordance with paragraph 2(a) of the Rules.
Further, despite the change of name of the Respondent, it appears that Mr. Donaghey claims still to be the holder of the disputed domain names or that he and Mr. Patton are acting in concert in the registration and use of the disputed domain name. Accordingly, the Panel finds that the Complaint has been properly notified to both the first-named Respondent and, the second-named Respondent. Under the circumstances, including the statements by the first-named Respondent indicating a continuation of control despite the change of registrant details, the Panel finds it proper to include both named Respondents in the present proceeding. Tadano Ltd. v. Stanley Pace / Xaichie Tadano,WIPO Case No. D2013-0865. Except where it is necessary to distinguish between them, therefore, the Panel will simply refer to “the Respondent” below.
Accordingly, paragraph 4(a) of the Policy provides that, to divest the Respondent of the disputed domain names, the Complainant must demonstrate for each of the disputed domain names each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of that disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that each disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the European Union Registered Trademarks referred to in section 4 above.
The second stage of this inquiry requires a visual and aural comparison of each disputed domain name to the proven trademarks. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. For the purposes of the present inquiry and having regard to representations of the Complainant’s trademarks, the figurative elements can be disregarded and reference made just to the verbal elements: WIPO Overview 3.0, section 1.10.
Disregarding the generic Top-Level Domain (“gTLD”) “.com”, each of the disputed domain names is essentially a misspelling of the Complainant’s trademark, EUTM No. 002492031 and, disregarding the definite article “the”, EUTM Nos 003363835 and 003543071. It has long been settled that these types of misspelling can satisfy the requirement of confusing similarity as the Complainant’s trademark remains essentially recognizable with the domain name: WIPO Overview 3.0, section 1.9.
Accordingly, the Panel finds that each disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use 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) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the 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 the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head, and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant points out that both its use and registration of its trademark occurred many years before the Respondent registered the disputed domain names. The disputed domain names are not derived from either of the Respondent’s names. The Complainant also has not licensed or authorised the Respondent to use its trademark in any domain name and, according to the Complainant, the Respondent is not associated with it or its business in any way.
The Complainant also alleges that the Respondent used the disputed domain names for a phishing scheme to harvest personal details of the Complainant’s customers and potential customers. The Complainant somehow failed to download print-outs of the websites before they were deactivated. The Panel notes, however, that the then Registrar did disable the websites in response to the Complainant’s objections. In response, the Respondent merely says that the current website which exhorts browsers to “buy website traffic” is not phishing. Whether or not that be the case, it does not address the content and use of the disputed domain names before the Registrar disabled the website pages on complaint from the Complainant. Although best placed to do so, the Respondent did not seek to enlighten the Panel about the content of the websites to which the disputed domain names have resolved in the past.
The use of the disputed domain names in the manner alleged by the Complainant and their subsequent use in the offers to “buy website traffic” do not qualify as a good faith offering of goods and services under the Policy. Accordingly, the Panel finds that the Complainant has established the Respondent does not have rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that each of the disputed domain names has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Given the use of the disputed domain names in the phishing scheme alleged by the Complainant and their subsequent offering for sale to promote website traffic as discussed in section 5B above, the Panel finds that the disputed domain names were each registered and are being used in bad faith under the Policy. 6. 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 names, , , , and be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: April 2, 2018
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