Complainant is Deutsche Kreditbank AG, Germany, represented by K&L Gates, Germany.
Respondent is M Elauriche Nickson Toho, Benin. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2020. On March 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 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 Complainant on March 30, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 30, 2020. The Registrar also indicated that the language of the Registration Agreement was French. The Center sent an email communication in English and French, to Complainant on March 30, 2020, inviting Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of the proceeding, a Complaint translated into French, or a request for English to be the language of the proceeding. Complainant filed a request for English to be the language of the proceeding on March 31, 2020. Respondent did not formally commented on the language of the proceeding. The Center received an informal communication in French from Respondent on April 6, 2020, requiring information on the dispute herein. The Center verified that the Complaint together with the amendment to the 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 in English and French Respondent of the Complaint, and the proceedings commenced on April 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2020. Respondent did not submit any formal response. Accordingly, the Center notified to the Parties on April 28, 2020, that it was proceeding to panel appointment. The Center appointed Nathalie Dreyfus as the sole panelist in this matter on May 6, 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 Complainant is a German online bank that is operating since 1990, under the commercial name “Deutsche Kreditbank” or its acronym “DKB”. Complainant has owned various trademarks, namely: - German word trademark DKB No. 39512394, registered on July 19, 1995, in class 36; - European Union Trade Mark DKB No.006107569, registered on September 17, 2008, in classes 16, 35, 36, 39, 41, 42, and 43; - International word trademark DKB No. 943513, registered on July 30, 2007, priority in class 36 and designating Switzerland. Complainant also owns the domain name The disputed domain name was registered on March 11, 2020, and redirected to an online page offering financial services. It does not currently resolve to an active website. 5. Parties’ Contentions A. Complainant Firstly, Complainant alleges that the disputed domain name is confusingly similar to its trademarks. It argues that the DKB trademark is fully incorporated in the disputed domain name and that the addition of the generic term “finance” describes exactly Complainant’s field of activity. It describes the core business of services offered by Complainant’s online bank services. Complainant adds that Internet users could believe that the disputed domain name is linked to Complainant since it is associated with the DKB trademark, which has no bank-specific meaning and could be used for other fields of activity, with the term “finance”. Furthermore, the disputed domain name points to a website offering financial services, in German, that are identical to Complainant’s ones. Secondly, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name. It alleges that Respondent did not hold any rights in the DKB trademark and that it did not obtain a license from Complainant. Complainant also argues that without disclosing its identity, Respondent gives a strong indication of fraudulent purposes. Furthermore, the fact that Respondent is using a standard email address, namely “[…]@dkb-finance.com” appears to be an evidence of its intention to attract Complainant’s customers and collect customers’ data or phishing them. Thirdly, Complainant states that the disputed domain name has been registered and is used in bad faith. It takes as an example a previous UDRP decision that has stated that the competition between entities includes competition at the attention of Internet users. Then, the use of Complainant’s trademark associated to the generic term “finance” intensified the risk of confusion, by pretending that the website is operating by Complainant. In the amendment to the Complaint, Complainant adds that the use of the disputed domain name by Respondent who is an individual shows that the disputed domain name is used to attract Internet users to the website and to phish customers’ data. The website provides access to a form requesting personal data. B. Respondent Respondent did not reply to the Complainant’s contentions. On April 6, 2020, Respondent sent an email in French to the Center requiring information on the dispute herein. 6. Discussion and Findings 6.1. Language of the Proceeding Paragraph 11(a) of the Rules indicates that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. In this case, the Complaint was submitted in English and the Registrar confirmed that the language of the registration agreement was French. Complainant requested English to be the language of proceeding and while Respondent sent a very brief email in French, he did not object for English to be the language of the proceeding. Noting that the proceeding was notified in both French and English, that Respondent decided not to submit a formal response in French, and that the website at the disputed domain name was in German, the Panel accepts Complainant’s request to issue a decision in English. 6.2. Substantive Issues Paragraph 4(a) of the Policy provides that, in order to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of or requirement under these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Respondent did not formally reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favor of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Taking the foregoing provisions into consideration the Panel finds as follows. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. See section 1.7 of the WIPO Overview 3.0. Complainant has proved its rights in the DKB trademark. . The disputed domain name fully reproduces Complainant’s DKB trademark with the addition of the dictionary term “finance” and a dash in between. The Panel finds that the addition of “finance” to Complainant’s trademark does not prevent a finding of confusingly similarity between the disputed domain name and Complainant’s trademark. The Panel notes that the term “finance” refers to Complainant’s business, namely bank services. Also, as numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview 3.0. See, Deutsche Kreditbank AG v. Guinnevere Parise, GrowthMind,WIPO Case No. D2020-0073. Finally, the addition of generic Top Level-Domain Name (“gTLD”), such as “.com” in this case, is purely technical and does not challenge the confusing similarity test under the first element. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks. Complainant has therefore satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name. Complainant is required to establish a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, Respondent fails to come forward with such relevant evidence, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. The Panel finds that Complainant has established a prima facie case that Respondent had no rights or legitimate interests in the disputed domain name. For its part, Respondent responded to the Center without trying to prove its rights but only requesting answers as to why the disputed domain name had been blocked. Since there is no evidence that Respondent had been authorized or licensed by Complainant, the Panel finds Respondent lacks of rights or legitimate interests. See for example, FIL Limited v. Alexander Smith,WIPO Case No. D2020-0227: “The Respondent has sought to create an impression of association with the Complainant for its own, no doubt improper, ends which it has chosen not to try and justify. That perhaps is not surprising given that it appears to the Panel that there is very little the Respondent could say to challenge the Complainant’s assertion that it lacks rights or legitimate interests in the Domain Name.” In addition, Respondent is not commonly known under the term “dkb”. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith. Firstly, Complainant argued that the disputed domain name was registered in bad faith. It bases its argument on the fact that Respondent was aware of Complainant’s trademark when registering the said domain name. Furthermore, it alleges that the association of the term “dkb” with the dictionary term “finance” shows that it knew about Complainant, at the time of registering the disputed domain name. The Panel finds that the first requirement is satisfied and more likely than not Respondent was aware of Complainant. Furthermore, a basic Internet search on the term “dkb” directly points to Complainant’s official website and adding the term “finance” to the DKB trademark shows more related results to Complainant. This element is an evidence of Respondent’s intention to benefit from Complainant’s reputation. The Panel then finds that the disputed domain name was registered in bad faith. Complainant evidenced that the disputed domain name was pointing to a website in German offering services related to finance and online banking, at the time the Complaint was filed. The Panel observes that Respondent is domiciled in Benin. However, it is using a website in German and the contact phone number available on the website is a French number. It seems that Respondent wishes to create a risk of confusion but wants above all to attract Internet users and to try to benefit from Complainant’s reputation of being a German company offering online bank services. Those identified elements are contradictory and fail to establish a fair use or use in good faith of the disputed domain name. Furthermore, it has already been established that the use of Complainant’s trademark in the disputed domain name is an evidence of use in bad faith, particularly when the disputed domain is used in relation to similar or identical services as to Complainant’s. Similarly see, Deutsche Kreditbank AG v. Guinnevere Parise, GrowthMind,WIPO Case No. D2020-0073: “The Complainant showed evidence that the disputed domain name was used by the Respondent to mislead users into believing that the corresponding website was related to the Complainant, by displaying an almost identical layout and the reproduction of the Complainant’s mark. Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark. This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark DKB for commercial gain as described in paragraph 4(b)(iv) of the Policy has been demonstrated.” Also see A.P. Moller - Maersk A/S v. Name Redacted,WIPO Case No. D2020-0248: “In the present case, that is exactly what the Respondent has done. The Panel infers he selected the Disputed Domain Name because of its similarity to the Complainant’s trademarks and used it to attract customers to a competing business by creating a likelihood of confusion.” Therefore, these additional elements identified by the Panel, in addition to the arguments put forward by Complainant, establish the use in bad faith. Complainant has therefore satisfied 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 Nathalie Dreyfus
Sole Panelist
Date: May 19, 2020
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