The Complainant is UniCredit S.p.A. of Rome, Italy, represented by Array, Italy.
The Respondent is Adedoyin Abimbola of Cork, Ireland, self-represented. 2. The Domain Name and Registrar
The disputed domain name (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 30, 2018. On July 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 1, 2018, 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 August 7, 2018 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 amendment to the Complaint on August 7, 2018. The Center received email communications by the Respondent on August 7, 2018 and August 8, 2018.
The Center verified that the Complaint together with 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 August 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2018. The Response was filed with the Center on August 11, 2018.
The Center appointed John Swinson as the sole panelist in this matter on September 13, 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 UniCredit Spa, a company incorporated in Italy. According to the Complaint, the Complainant is one of the largest banks in Europe.
The Complainant owns several registered trade marks for BUDDYBANK, the earliest of which is United States of America (“United States”) registered trade mark number 5430733, filed on September 22, 2015 and registered March 27, 2018 (the “Trade Mark”). The Complainant owns a registered domain name which incorporates the trade mark, being .
The Respondent is Adedoyin Abimbola, an individual of Cork, Ireland. According to the Response, the Respondent is a web developer. The Respondent submits that he registered the Disputed Domain Name for the purpose of creating an application for the Nigerian market to allow people to loan funds to their family and friends. The Respondent registered the Disputed Domain Name on September 28, 2017. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
Identical or confusingly similar
The Disputed Domain Name contains the entire Trade Mark, with the addition of “my”. The addition of a generic suffix like “my” is not sufficient to distinguish the Disputed Domain Name from the Trade Mark.
No rights or legitimate interests
The Respondent has no possible rights or commercial interests in the Disputed Domain Name. There is no evidence that the Respondent is known by the Disputed Domain Name or has any registered trade marks in respect of the Disputed Domain Name. The Respondent is currently using the Disputed Domain Name to display pay-per-click (“PPC”) links with the objective of diverting traffic from the Complainant’s website.
Registered and used in bad faith
The Disputed Domain Name has been registered in bad faith as it is parked by the Respondent at a Registrar parking page and being used to display PPC links. The Disputed Domain Name has also been advertised for sale via the Registrar for EUR 85,39.
The purpose behind the registration was to attract traffic for commercial gain, by creating a likelihood of confusion with the Complainant’s mark and business as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. B. Respondent
The Respondent makes the following submissions.
The Disputed Domain Name was registered as an application for the Nigerian market that would allow anyone to raise funds without having to resort to a bank loan. The Disputed Domain Name has not been fully put to use as the Respondent has had other commitments.
The Respondent has not used the Disputed Domain Name for the purposes of PPC links, to divert any web traffic or to resell at a cost for commercial gain. The Respondent had not heard of the Complainant before registering the Disputed Domain Name. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name contains the Trade Mark in its entirety. The other element of the Disputed Domain Name, being the word “my”, is descriptive and does not avoid a finding of confusing similarity between the Disputed Domain Name and the Trade Mark.
The Trade Mark is clearly recognizable in the Disputed Domain Name. In cases where at least the dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Panel finds that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name resolves to a parking page which contains PPC links. The Complainant has also provided evidence that at some point in time the Disputed Domain Name was offered for sale by the Registrar for EUR 85,39. As set out in more detail in the Section C (Bad Faith) below, the Respondent is responsible for third party content on the website at the Disputed Domain Name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Complainant has provided evidence that the Respondent has used the Disputed Domain Name for PPC advertising, which presumably generated revenue, even if such revenue was not received by the Respondent. The Respondent argues that he has never used the Disputed Domain Name for PPC links or for sale or auction. However, the Complainant has provided evidence of this use.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law trade mark rights in relation to the Trade Mark. Further, the Complainant has not authorized the Respondent to use the Trade Mark in the Disputed Domain Name.
The Respondent argues that he has not been able to yet use the Disputed Domain Name due to personal commitments. However, the Respondent has not provided any evidence of his plans or preparation to use the Disputed Domain Name for a bona fide purpose. As such, the prima facie case established by the Complainant has not been successfully rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
In this case, the Respondent registered the Disputed Domain Name two years after the Complainant had applied for rights in the Trade Mark. The Respondent argues that he had no knowledge of the Complainant before registering the Disputed Domain Name. The Respondent has submitted that he registered the Disputed Domain Name with the intent to use it as an application for the Nigerian market that would allow anyone to raise funds without having to resort to a bank loan. Whilst this is not inconceivable, the Respondent has not provided any evidence (for example, notes or plans for the website) to support this.
The Disputed Domain Name resolves to a website which contains PPC links relating to the Complainant’s industry. The Respondent submits that he did not give the Registrar permission to use PPC links on the parking page, and that he did not profit from any advertising. Previous panels have found that a respondent will generally be deemed responsible for the content appearing at the relevant domain name, including where a registrar has placed a parking page with automatically generated content, unless the respondent can show some good faith attempt at preventing advertising which relates to third party trade marks. See WIPO Overview 3.0, section 3.5. The Respondent has shown no such good faith attempt in this case and many of the PPC links are to services containing the word “bank”.
It is therefore reasonable for the Panel to conclude that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trade Mark as to the source of the website. This is an indicator of bad faith use and registration under paragraph 4(b)(iv) of the Policy.
The Complainant succeeds on the third element of the policy. 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.
John Swinson
Sole Panelist
Date: September 27, 2018
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