The Complainant is Banque Et Caisse D’Epargne de L’Etat, Luxembourg, Etablissement Public, Luxembourg, represented by Office Freylinger S.A., Luxembourg.
The Respondent is Domain Administrator, See PrivacyGuardian.org / Domain Admin, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2019. On September 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing the Respondent 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 September 16, 2019 providing the Respondent 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 September 19, 2019. 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 September 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2019. The Center appointed Colin T. O’Brien as the sole panelist in this matter on November 6, 2019. 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, based in Luxembourg, is the owner of the SPUERKEESS trademark used in connection with banking services. The Complainant has been known by the SPUERKEESS name since 1856. The Complainant has registered its SPUERKEESS trademark in Benelux Registration. Nos. 796132 and 796133, Registered May 5, 2006, Switzerland (Registration No. 615157, Registered May 10, 2011), and the European Union (Registration No, 9110552, Registered November 2, 2010). The disputed domain name was registered on October 15, 2018 and it resolves to a page that contains an offer to sell the disputed domain name for USD 988 (Annex 3 to the Complaint). 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s well-known SPUERKEESS trademark because it is identical to the mark other than the addition of the “.com” top level domain. The addition of “.com” does nothing to distinguish the disputed domain name from the SPUERKEESS mark. The Respondent does not have any rights of legitimate interests in the disputed domain name because it does not have any registered trademarks or trade names corresponding to the disputed domain name; the Respondent is not a licensee of the Complainant. The SPUERKEESS mark is a coined term using the Luxembourgian language that is only used by the Complainant globally. The Respondent did not respond to the Complainant’s demand letter that suspend and transfer the disputed domain name. It is implausible that the Respondent was unaware of the Complainant’s mark when it registered the disputed domain name. The Complainant has been known by SPUERKEESS for over 150 years and is one of the top ten most trusted banks in the world. The disputed domain name was registered three days after the Complainant applied to register the SPUERKEESS mark in the United Kingdom. Currently the Respondent is offering for sale the disputed domain name for USD 988, which indicates that it registered the disputed domain name for the purposes of reselling it later. The registration of the disputed domain name prevents the Complainant from using its trademark in the domain name space. Lastly the Complainant asserts that the Respondent is a noted cybersquatter. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated it owns registered trademark rights in the SPUERKEESS mark and that no other entity has rights or uses the mark. The disputed domain name incorporates the Complainant’s SPUERKEESS mark in its entirety. The addition of the Top-Level Domain “.com” is insufficient to avoid a finding of confusing similarity. Accordingly, the disputed domain name is confusingly similar to a mark in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and has not at any time been commonly known by the disputed domain name. The fact that the Respondent obtained the disputed domain name three days after the Complainant filed an application for SPUERKEESS in the United Kingdom indicates that the Respondent sought to obtain a windfall based on the sale of the disputed domain name to the Complainant. After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Here, the Respondent has provided no evidence of any rights or legitimate interests in the disputed domain name rather the evidence suggests that it was registered to make an undue profit based on the Complainant’s rights. See, e.g., Bottega Veneta SA v. ZhaoJiafei,WIPO Case No. D2013-1556. In the absence of any evidence rebutting the Complainant’s prima facie case indicating the Respondent’s lack of rights or legitimate interests in respect of the disputed domain name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered many years after the Complainant first registered its SPUERKEESS trademark. The evidence on the record provided by the Complainant with respect to the extent of use of its SPUERKEESS trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s SPUERKEESS mark, and knew that it had no rights or legitimate interests in the disputed domain name. The Complainant has provided evidence that the disputed domain name was offered for sale for hundreds of US dollars that likely only had one legitimate buyer namely the Complainant. This establishes the Respondent acquired the disputed domain name primarily for the purpose of selling it to the Complainant for a sum significantly in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name – which, according to paragraph 4(b)(i) of the Policy, is evidence of registration and use of the disputed domain name in bad faith. Accordingly, the Panel finds that the disputed domain name has been registered and is being 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 Colin T. O’Brien
Sole Panelist
Date: November 21, 2019
Full & Egal Universal Law Academy