The Complainant is Robeco Holding B.V., Netherlands, represented by NLO Shieldmark B. V., Netherlands.
The Respondent is Jeng Mungao, 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 November 13, 2020. On November 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 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 November 17, 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 amendment to the Complaint on November 17, 2020. 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 the Respondent of the Complaint, and the proceedings commenced on November 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2020. The Center appointed Luca Barbero as the sole panelist in this matter on December 15, 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 investment company which owns several trademark registrations for ROBECO, including the following: - European Union Trade Mark registration No. 005377437 for ROBECO (word mark), filed on October 11, 2006 and registered on November 19, 2007, in international classes 16 and 36; The Complainant is also the owner of the domain name The disputed domain name The Complainant contends that the disputed domain name With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that it has not granted any third party permission to register the disputed domain name, let alone using it to mislead customers through phishing activities. As a circumstance evidencing the Respondent’s bad faith, the Complainant points out that the Respondent copied the Complainant’s website log-in page to deliberately mislead the Complainant’s customers into logging in and exposing their personal details, which could lead to serious financial damages. The Complainant also highlights that the Complainant’s logo and name are displayed on the website to which the disputed domain name is pointed and that the layout of the website is so similar to that of the Complainant that it would be difficult for any user to distinguish whether or not it is owned by the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; The Panel finds that the Complainant has established rights over the trademark ROBECO based on the trademark registrations cited in section 4 above. As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically 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. Moreover, as indicated in section 1.8 of the WIPO Overview 3.0, where 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. In the case at hand, the Complainant’s trademark ROBECO is entirely reproduced in the disputed domain name, with the mere addition of the generic term “login” and a hyphen, which does not prevent a finding of confusing similarity, and the generic Top-Level Domain (“gTLD”) “.com”, which is commonly disregarded under the first element confusing similarity test (see section 1.11 of the WIPO Overview 3.0). In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is well established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent. Accordingly, in line with previous UDRP decisions, it is sufficient that the complainant shows a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Jeng Mungao, might be commonly known by the disputed domain name. As mentioned above, based on the screenshots submitted by the Complainant, the disputed domain name was pointed to a website displaying the exact copy of the Complainant’s login page, including the Complainant’s trademark and favicon, and requiring Internet users to insert their usernames and passwords. In view of the foregoing and in the absence of a Response, the Panel finds that, in all likelihood, the Respondent used the disputed domain name in order to attempt to fraudulently obtain personal information from the Complainant’s customers. The Panel finds that the Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. Indeed, as stated in section 2.13.1 of the WIPO Overview 3.0., previous UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith. As to the bad faith at the time of the registration, the Panel notes that, in light of the prior use of the trademark ROBECO in connection with the Complainant’s financial services and of the distinctiveness of the trademark, with which the disputed domain name is confusingly similar, the Respondent was or ought to have been aware of the Complainant’s trademarks. Moreover, in view of the redirection of the disputed domain name to a website displaying the Complainant’s trademark and reproducing the layout and content of the log-in page of the Complainant’s official website “www.robeco.com”, the Panel finds that the Respondent was indeed well aware of the Complainant’s and its trademark. In light of the above-described use of the disputed domain name, the Panel finds that the Respondent intentionally attempted to attract Internet users to its website, in all likelihood for commercial gain, by causing confusion as to the source, sponsorship, affiliation or endorsement of its website according to paragraph 4(b)(iv) of the Policy. As indicated above, the disputed domain name is currently not pointed to an active website. However, it is well established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, i.a., in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the case at hand, in view of i) the Respondent’s registration of a domain name clearly confusingly similar to the Complainant’s prior trademark and suggesting an affiliation with the Complainant; ii) the Respondent’s prior redirection of the disputed domain name to an active website apparently used for phishing purposes; iii) the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name; and iv) the Respondent’s failure to respond to the Complaint, the Panel finds that the current passive holding of the disputed domain name by the Respondent does not prevent a finding of bad faith registration and use. Therefore, the Panel finds that the Complainant has proven that the Respondent registered and is using the disputed domain name in bad faith according to 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, Luca Barbero
- European Union Trade Mark registration No. 017948805 for ROBECO (figurative mark), filed on August 31, 2018 and registered on January 10, 2019, in international class 36.
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: December 29, 2020
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