The Complainant is Ukrainian Credit Union Limited, Canada, represented by Chumak & Company LLP, Canada.
The Respondent is Dengabo DD Concepts, United States of America (“United States”).1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2019. On November 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 2019, 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 November 25, 2019, providing the registrant and contact information disclosed by the Registrar, inviting the Complainant to submit an amendment to the Complaint, and requesting an administrative clarification. The Complainant filed an amendment to the Complaint together with an amended Complaint on November 25, 2019. The Center verified that the Complaint together with the amendment to the Complaint and 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 December 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2019. The Respondent did not submit any formal Response. The Respondent sent an informal email communication to the Center on December 6, 2019. The Complainant sent email communications to the Center on December 23, 2019, and January 2, 2020. Accordingly, on January 9, 2020, the Center informed the Parties that it would proceed to panel appointment. The Center appointed Jane Seager as the sole panelist in this matter on January 21, 2020. 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 Founded in 1944, the Complainant is a member-owned financial cooperative. The Complainant is among the leading Canadian credit unions and, according to the Complainant, it is the leading Canadian credit union operating under an ethnically-based charter. The Complainant’s membership includes but is not limited to Canadians of Ukrainian descent. The Complainant provides online-banking services to Canadians, as well as its members who are resident in various countries outside of Canada. For use in connection with the Complainant’s banking and financial services, the Complainant has obtained, inter alia, the following trademark registrations: - Canadian Trademark Registration No. TMA1050999, UCU, registered on August 23, 2019; - Canadian Trademark Registration No. TMA1050996, UCUYKC, registered on August 23, 2019; and - Canadian Trademark Registration No. TMA610166, UKRAINIAN CREDIT UNION (and design), registered on May 12, 2004. The Complainant is also the registrant of the domain name The disputed domain name was registered on April 22, 2019. Prior to the filing of the Complaint, the disputed domain name resolved to a website purporting to provide banking services (the “Respondent’s website”). The Respondent’s website was titled “Ukrainian Credit Union – the Premier Bank in Ukraine”. On November 12, 2019, the Complainant’s representative sent a notice to the Registrar as well as the hosting provider of the Respondent’s website, alleging that the disputed domain name was being used in connection with fraudulent activities. The Respondent’s website was subsequently taken down. At the time of this decision, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is confusingly similar to the textual elements of its UKRAINIAN CREDIT UNION (and design) mark. The Complainant adds that the disputed domain name is identical to the Complainant’s corporate trade name (Ukrainian Credit Union Limited), omitting the word “Limited”, and that it is identical or confusingly similar to the Complainant’s domain name The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name, noting that the disputed domain name appears to have been used or has been allowed to be used as an instrument for phishing or fraud. The Complainant further submits that the disputed domain name was registered and is being used in bad faith. In this regard, the Complainant asserts that the disputed domain name has been used as an instrument of fraud, in an attempt to obtain customers’ personal and financial information. In support of its claims of fraudulent use of the disputed domain name, the Complainant notes that prior to being taken down, the Respondent’s website was incomplete, with many of the sub-pages having no content; the Respondent’s website had copied many of the elements of a legitimate third-party financial website; the Respondent’s website was identical to another third-party website, displaying the same unique banking information, regarding which the Complainant had located reports of fraudulent activity whereby an individual lost USD 5,000. The Complainant further notes that the contact email address listed in the WhoIs record for the disputed domain name is associated with a number of other domain names that appear to have been used in connection with various fraudulent email schemes, including commodity advance-fee scams, import/export scams, fake job scams, fake bank scams, fake next-of-kin advance fee scams, fake governmental websites, and others. The Complainant requests transfer of the disputed domain name. B. Respondent In an informal communication to the Complainant, the Respondent stated “you can go ahead with the domain… it is now yours”. The Respondent did not submit any substantive Response. 6. Discussion and Findings 6.1. Preliminary Matter: Consent to Remedy The Panel notes that in its informal communication to the Complainant that the Respondent appears to have consented to transfer the disputed domain name to the Complainant. Despite the Respondent’s apparent consent, in light of the alleged use of the disputed domain name, and noting that the Respondent chose not to engage with the Complainant in the settlement process mandated by paragraph 17 of the Rules, the Panel will nevertheless proceed to issue a substantive decision on the merits; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.10. 6.2. Substantive Matters In order to be awarded the transfer of the disputed domain name, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced evidence of its ownership of various UCU-formative marks, including Canadian trademark registrations for UCU and UKRAINIAN CREDIT UNION (and design), the details of which are provided in the factual background above.2 The Panel finds that the Complainant has established trademark rights of the purposes of standing under the first element of the Policy. The disputed domain name comprises the Complainant’s UCU trademark, substituting the first letter “u” for the term “Ukrainian”, separated from the letters “cu” by a hyphen under the generic Top-Level Domain (“gTLD”) “.com”. Similarly, the disputed domain name also incorporates the leading element of the Complainant’s UKRAINIAN CREDIT UNION (and design) mark, substituting the words “credit union” with the letters “cu”, ostensibly as an abbreviation for “credit union”. The Panel finds that the disputed domain name incorporates elements of the Complainant’s trademarks such that dominant elements of the Complainant’s marks are recognizable in the disputed domain name; see WIPO Overview 3.0, section 1.7. The gTLD “.com” may be disregarded for the purposes of assessment under the first element. In some instances, panels have also taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name; see WIPO Overview 3.0, section 1.15. The Panel finds the disputed domain name to be confusingly similar to trademarks in which the Complainant has rights. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests As stated in WIPO Overview 3.0, section 2.1, “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. The Complainant has provided evidence in the form of screen captures showing that prior to the filing of the Complaint, the disputed domain name resolved to a website purporting to provide Internet-banking services. As noted by the Complainant, that website closely copied the look and feel of a legitimate third-party banking website, including the wholesale reproduction of texts and images. The Respondent’s website included an application form where Internet users were invited to submit personal information in order to apply to open a bank account. The Panel further notes that the unique account information displayed on the Respondent’s website appears to have been used on another website, having a similar appearance to the Respondent’s website, about which there have been reports of fraudulent activity. In light of the above, the Panel infers that the Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Rather, it appears that the Respondent has used the disputed domain name to engage in a fraudulent scheme designed to illicitly obtain money transfers from unsuspecting Internet users. The application form on the Respondent’s website, requesting Internet users to disclose personal contact information, further placed such users at risk of identity theft and hacking. Prior UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., phishing, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent; see WIPO Overview 3.0, section 2.13. There is no evidence that the Respondent is commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy, nor has the Respondent made any legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii). The Respondent has not come forward to provide any substantive Response in reply to the Complainant’s allegations of fraudulent use of the disputed domain name. Based on the Complainant’s unrebutted allegations and supporting evidence, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant was founded in 1944. The Complainant asserts that it has since become one of the leading credit unions in Canada, with some 16 branches employing over 150 people. It can be inferred that the Respondent had knowledge of the Complainant, and its UKRAINIAN CREDIT UNION (and design) trademark, at the time it registered the disputed domain name. The Panel notes in this regard that the disputed domain name reproduces the Complainant’s official domain name As set out in detail above, the disputed domain name appears to have been used in connection with a fraudulent online scheme. As noted in WIPO Overview 3.0, section 3.1.4, given that the use of a domain name for per se illegitimate activity can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith. The Panel finds it more likely than not that the disputed domain name was used in an attempt to create a misleading impression of association with the Complainant, with a view to extracting payments from unsuspecting Internet users. By using the disputed domain name in such a way, the Panel finds that the Respondent has attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products and services offered therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The fact that the disputed domain name no longer resolves to an active website does not materially alter the Panel’s findings. The Panel finally notes that the Respondent appears to have provided false or incomplete WhoIs contact details for the disputed domain name (in breach of its registration agreement), which further reinforces the Panel’s finding of bad faith. The Panel finds that the disputed domain name was registered and has been used in bad faith. The Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 Jane Seager 1 The Panel notes that while the Registrant Country field of the WhoIs data associated with the disputed domain name lists the United States, the Registrant City field corresponds to a location in Nigeria. 2 The Panel notes that the Complainant’s UKRAINIAN CREDIT UNION (and design) mark includes a disclaimer as to the exclusive use of the words “Ukrainian credit union” independent from the design elements of the mark. Given that the design elements of a mark are incapable of representation per se in a domain name, and further noting that in the present case the design elements are not of a nature to comprise the dominant aspects of the Complainant’s trademark, the Panel does not consider that the disclaimer is of such an effect as to prevent the Complainant’s standing under the first element. In any event, in light of the Panel’s finding of confusing similarity between the disputed domain name and the Complainant’s UCU mark (containing no disclaimer), the Complainant’s reliance on its UKRAINIAN CREDIT UNION (and design) mark is not decisive for the purposes of its findings under the first element. See in this regard WIPO Overview 3.0, section 1.10.
Sole Panelist
Date: February 4, 2020
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