The Complainant is ABN AMRO Bank N.V., The Netherlands, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / James Wheeler, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2020. On February 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 2020, 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 February 5, 2020, 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 amended Complaint on February 6, 2020. 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 February 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2020. The Center appointed Antony Gold as the sole panelist in this matter on March 9, 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 The Complainant is an international provider of banking and insurance services to personal, business, and institutional customers. It was formed in 1991, following the merger of Algemene Bank Nederland and Amsterdam Rotterdam Bank. It employs approximately 18,830 people and, in 2018, its net profit was EUR 2,325 million. The Complainant trades as ABN AMRO and ABN AMRO BANK. It has registered a number of trade marks to protect its trading styles, including; - Benelux trade mark, registration number 0785236 for ABN AMRO BANK, in classes 9, 35, and 36, registered on December 23, 2005; - United States service mark, registration number 1748791 for ABN AMRO, in class 36, registered on January 26, 1993. In addition, the Complainant registered the domain names The disputed domain name was registered on April 4, 2019. It resolves to a website which comprises solely a blue circle containing the following words: “Welcome! Site ispnlhyperhost.ua just created. Real content coming soon.”. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. For the purpose of making the comparison, the generic Top-Level Domain (“gTLD”), that is “.com”, is disregarded. In creating the disputed domain name, the Respondent has added the generic, descriptive letters “NV” to the Complainant’s ABN AMRO BANK trade mark, thereby making the disputed domain name confusingly similar to it. The fact that “NV” is the common abbreviation in the Netherlands for a form of public company, “Naamloze Vennootschap”, serves to underscore and increase the confusing similarity between the disputed domain name and the Complainant’s trade marks. The addition of a hyphen does nothing to distinguish the disputed domain name from the Complainant’s registered company name and it is accordingly an exact match for it. UDRP panels have consistently held that a disputed domain name that consists merely of a complainant’s trade mark and an additional term that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trade marks. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given its permission to use its trade marks and, specifically, has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trade mark. Moreover, the Respondent is not commonly known by the disputed domain name. As explained by the panel in Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875; “In the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed”. At the time of filing the Complaint, the Respondent was using a privacy WhoIs service, which UDRP panels have also found to equate to a lack of legitimate interest. The Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a blank page and lacks content. The Respondent has not demonstrated any attempt to make legitimate use of the disputed domain name and website. This evinces a lack of rights or legitimate interests in the disputed domain name; see Washington Mutual, Inc. v. Ashley Khong,WIPO Case No. D2005-0740. Lastly, the Complainant says that the disputed domain name was registered and used in bad faith. The Complainant and its ABN AMRO and ABN AMRO BANK trade marks are known internationally, with trade mark registrations in numerous countries. By registering a disputed domain name which is confusingly similar to the Complainant’s trade marks, the Respondent has demonstrated a knowledge of, and familiarity with, the Complainant’s brand and business. It is accordingly illogical to believe that the Respondent registered the disputed domain name without specifically targeting the Complainant, nor is it possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s brands at the time the disputed domain name was registered. The Complainant’s ABN AMRO and ABN AMRO BANK marks are so closely linked and associated with it that registration of the disputed domain name strongly implies opportunistic bad faith; see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226. At the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trade marks and that registration of domain names containing well-known trade marks constitutes bad faith. Whilst the disputed domain name currently resolves to an inactive site and is not being used, past UDRP panels have noted that bad faith use in the context paragraph 4(a)(iii) of the Policy does not require a positive act on the part of the Respondent. Passively holding a domain name can constitute a factor in finding bad faith registration and use; see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and also Clerical Medical Investment Group Limited. v. Clericalmedical.com (Clerical & Medical Services Agency),WIPO Case No. D2000-1228, in which the panels found that that merely holding an infringing domain name without active use can constitute use in bad faith. The disputed domain name can only have been registered with the intent to cause confusion among Internet users as to the source of the disputed domain name and thus it must be considered as having been registered and used in bad faith pursuant to paragraph 4(b)(iv) of the Policy, with no good faith use possible. In addition, the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use; see Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Sabatino Andreoni,WIPO Case No. D2003-0230. The Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. UDRP panels have held that failure to respond to a cease and desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate. Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint: (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. A. Identical or Confusingly Similar The Complainant has established its rights in the trade mark ABN AMRO BANK and the service mark ABN AMRO. For the purpose of determining whether the disputed domain name is identical or confusingly similar to these marks, the gTLD “.com” is disregarded as this is a technical requirement of registration. The disputed domain name comprises the Complainant’s ABN AMRO BANK trade mark in full, followed by a hyphen and the letters “nv”. The hyphen is of no significance and whether “nv” is perceived by consumers as having any particular meaning does not impact on an assessment of whether the disputed domain name is confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Both the Complainant’s ABN AMRO and ABN AMRO BANK trade and service marks are clearly recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to trade and service marks in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue. So far as the first circumstance is concerned, section 2.2 of the WIPO Overview 3.0 provides examples of non-exhaustive examples of prior use, or demonstrable preparations to use a domain name, in connection with a bona fide offering of goods or services and explains that “[w]hile such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required”. Set against this standard, use of the disputed domain name to point to a website which does no more than contain a welcome notice and the claim “Real content coming soon” does not constitute use, or preparation to use, the disputed domain name in connection with a bona fide offering of goods and services. So far as the second circumstance is concerned, there is no evidence that the Respondent has been commonly known by the disputed domain name. Lastly, the use of the disputed domain name simply to point to a holding page as described above, cannot be described as making a legitimate noncommercial or fair use of it. In addition, the nature of the disputed domain name creates a risk of implied affiliation. As explained at section 2.1 of the WIPO Overview 3.0, once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden and the Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith At the time of the Respondent’s registration of the disputed domain name, the Complainant had been trading under the names ABN AMRO and ABN AMRO BANK for approximately 28 years and it had secured extensive trade mark protection for its marks, including in the United States where the Respondent is apparently located. It is not possible to discern the Respondent’s precise motivation for registering the disputed domain name. However, the Complainant’s trade mark is distinctive and the Respondent’s registration of the disputed domain name can only have been intended in some way to take unfair advantage of the Complainant’s repute in its trade marks. The specific circumstances of bad faith and use set out at paragraph 4(b) of the Policy are without limitation and the Panel is satisfied that the Respondent’s registration of the disputed name was in bad faith. The Complainant’s assertions with respect to the Respondent’s passive holding of the disputed domain name require consideration in the context of section 3.3 of the WIPO Overview 3.0, which explains that; “[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. Applying these factors to the current circumstances; (i) the Complainant’s mark is well-known; (ii) the Respondent has not replied to the Complaint or provided any evidence of actual or contemplated good faith use; (iii) the Respondent has sought to conceal its identify through use of a privacy service; and, (iv) it is impossible to think of any good faith use to which the disputed domain name could be put. For this reason, the Panel therefore finds that the Respondent has registered and used the disputed domain name in bad faith. The Complainant’s additional submissions do not therefore require consideration. 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 Antony Gold
Sole Panelist
Date: March 23, 2020
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