Complainant is BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft, Austria, represented by Binder Grösswang Rechtsanwälte GmbH, Austria.
Respondent is WhoisGuard, Inc., Panama / Robert Mueller, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2020. On October 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 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 October 15, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 16, 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 Respondent of the Complaint, and the proceedings commenced on October 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 6, 2020. The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 10, 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 the owner of registration for the word trademark (goods and services) EASY KREDIT on the register of the Austrian Trademark Office, registration number 243174, registration dated January 29, 2008, in international class (IC) 36, covering, inter alia, finance, banking, and banking services.1 Complainant is the owner of an international registration under the Madrid System for the word and design mark EASYBANK (lower case letters, green color), registration number 1164564, registration dated April 10, 2013, in IC 36, covering “Insurance; financial affairs; monetary affairs; real estate affairs. There are multiple country designations covered by the aforesaid international registration, which is based on a registration at the Austrian Trademark Office dated April 3, 2013. Complainant is the owner of registration for the word trademark EASYBANK at the European Union Intellectual Property Office (EUIPO), registration number 387233, registration dated February 25, 2005, in IC 36, covering “Direct banking services, in particular electronic banking services”. Complainant is a substantial Austria-based commercial bank doing business since the late 1800s, although under different names at various times. Complainant operates a commercial banking website under its EASYBANK trademark at “www.easybank.at”, to which its domain name According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the disputed domain name was registered on July 28, 2020. There is no indication on the record of this proceeding that registration of the disputed domain name has been held by a party other than Respondent. Respondent has used the disputed domain name to direct Internet users to a website with appearance highly similar to that of Complainant’s “www.easybank.at” website. Respondent’s website is not identical to Complainant’s website because there are certain differences in the use of color. While Complainant predominantly uses green against a white background, Respondent predominately uses blue against a white background. But there are a substantial number of stylized drawings of credit-seeking processes on Respondent’s website that are identical to those on Complainant’s website, including the spatial arrangement of those drawings and the associated German-language descriptions of processes. There is very little likelihood that these identical elements are the product of coincidence. Particularly given that Respondent is using a website name, “Easy Kredite”, virtually identical to one of Complainant’s registered trademarks, EASY KREDIT, it is reasonable to conclude that Respondent deliberately created a clone of Respondent’s commercial website. The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant Complainant alleges that it owns rights in the trademarks EASY KREDIT and EASYBANK and that the disputed domain name is identical or confusingly similar to its EASY KREDIT trademark. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant has not authorized or licensed Respondent to use its trademarks; (2) Respondent must have been aware of Complainant’s trademarks when it registered the disputed domain name; (3) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, and; (4) creating and using a clone website does not establish rights or legitimate interests. Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Complainant did not authorize Respondent to use its trademarks; (2) Respondent has deliberately created the impression that it is affiliated with Complainant; (3) Respondent has provided false contact information, and; (4) Respondent for commercial gain is using the dispute domain name to create Internet user confusion regarding Complainant’s association with Respondent’s website. Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)). The Center formally notified the Complaint to Respondent at the email and physical address provided in its record of registration. It appears that express courier physical delivery could not be completed because of false and/or incomplete address information provided by Respondent. There is no evidence on the record of the proceeding as to whether email notice was received by Respondent at the contact information it provided. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and (ii) 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. Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar Complainant has provided substantial evidence of rights in the trademark EASY KREDIT including by registration at the Austrian Trademark Office, and through use in commerce. Complainant has provided substantial evidence of rights in the EASYBANK trademark, including by registration under the Madrid System, at the EUIPO, and the Austrian Trademark Office, and through use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s rights in these trademarks. The Panel determines that Complainant has established rights in the trademarks EASY KREDIT and EASYBANK. The disputed domain name directly incorporates Complainant’s EASY KREDIT trademark and adds the letter “e”. Complainant’s trademark is readily identifiable within the disputed domain name and this supports a finding of confusing similarity. Addition of “e” to Complainant’s trademark in the disputed domain name does not prevent a finding of confusing similarity between Complainant’s trademark and the disputed domain name, particularly as in the German language adding “e” to “kredit” creates the plural term. The Panel determines that Complainant has established rights in the trademark EASY KREDIT and that the disputed domain name is confusingly similar to that trademark within the meaning of the Policy. B. Rights or Legitimate Interests Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5.A., and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests. Complainant has provided substantial evidence that Respondent used the confusingly similar disputed domain name to direct Internet users to a commercial website that is substantially identical, i.e., a clone, of Complainant’s commercial website, and that offers services substantially identical to those offered by Complainant.2 The Panel takes note that Complainant uses more than one of its trademarks (i.e., both EASY KREDIT and EASYBANK) to direct Internet users to its own commercial website, and that its own commercial website predominantly displays its EASYBANK trademark. This does not justify Respondent’s use of Complainant’s EASY KREDIT trademark in the disputed domain name, as Complainant owns and does business under the EASY KREDIT trademark. There is no disclaimer of affiliation with Complainant on Respondent’s website. Respondent’s use of the disputed domain name commenced long after Complainant established rights in its trademarks. Respondent’s use of the disputed domain name does not constitute legitimate noncommercial or fair use of Complainant’s trademarks. The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) the Policy. C. Registered and Used in Bad Faith In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include that, “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location”. Given that Respondent’s website is essentially a clone of Complainant’s commercial website, Respondent must have been aware of Complainant’s rights in its trademarks when it registered and used the disputed domain name. Although Complainant has not provided evidence of specific activities undertaken by Respondent through its clone website, the Panel infers that Respondent created the website for some commercial and non-fair use purpose. There is no indication of fair use (see section 6.B above). Since the clone website was designed to solicit information from prospective customers, Respondent in the ordinary course of operating its website would have been collecting Internet user data under false pretenses (i.e., in the guise of Complainant) for some profit-oriented reason. Alternatively, Respondent may have provided credit services to consumers. This would constitute an abuse of Complainant’s trademark rights in connection with operating a competing business. Respondent has not responded to the Complaint to suggest that it might have been engaged in some good faith use of Complainant’s trademarks. Respondent has used the disputed domain name that is confusingly similar to Complainant’s EASY KREDIT trademark intentionally for purposes of commercial gain to establish Internet user confusion regarding Complainant as the source, sponsor or affiliate of Respondent’s commercial website The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) 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 Frederick M. Abbott 1 Translation from German by Panel. 2 There is no direct evidence on the record of this proceeding, such as records showing Internet user activity, regarding whether Respondent was providing services at its website, or was using its website to illicitly solicit information or funds from Internet users.
Sole Panelist
Date: November 25, 2020
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