The Complainant is DekaBank Deutsche Girozentrale, Germany, represented by Grünecker Patent - und Rechtsanwälte, Germany.
The Respondent is Privacy Guard, P.G., Regery, Ltd, Ukraine. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2021. On February 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 17, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 5, 2021 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 March 8, 2021 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 March 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2021. The Center appointed Jonas Gulliksson as the sole panelist in this matter on April 14, 2021. 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 a German credit institution that has been providing financial services under the company name Deka since 1956. The Complainant is the proprietor of the following trademarks: - European Union Trademark Registration No. 001555705 for the mark DEKA (word), with a registration date of September 10, 2001; The trademarks are all registered for the services financial affairs, monetary affairs in class 36. The Domain Names were registered on December 14, 2020. The Domain Names are currently inactive, but according to the Complaint the Domain Names were used to redirect to the official website of the Complainant. 5. Parties’ Contentions A. Complainant The Complainant alleges the following The Domain Names are identical or confusingly similar to the Complainant’s trademark registrations for the mark DEKA. The Complainant has not granted any rights to the respondent as regard use of the sign “deka”. Due to the term “deka” in the Domain Names, a clear connection with the Complainant is established. Further, the Domain Names have a direct reference to the banking sector. Consumers therefore expect that under the Domain Names goods and services are offered that have a connection to the financial section, regardless of the possible content of the websites. Therefore, the Domain Names as such create a confusion on the market. The Domain Names lead to the assumption that there exists a relationship between the Complainant and the Respondent when in fact no such relationship exists at all. The Respondent must have known about the Complainant and its reputation at the time of creation of the Domain Names. Prior to January 18, 2021, the Domain Names were automatically redirecting to the website of the Complainant. Thus, the Respondent must clearly have been aware of the Complainant’s reputation. Further, due to the clear combination of the trademarks DEKA with reference to banking and finance, no use whatsoever can be legitimate because the Domain Name as such refers to the banking sector in which the Complainant is well known under the company name DekaBank, using the sign Deka as its trademark for financial services. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has clearly established that it is the proprietor of several trademark registrations for DEKA and one for DEKABANK, all with prior registration dates to the Domain Names. The Domain Names incorporates DEKA in its entirety while adding the terms “finance” and “bank” respectively. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, 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. The terms “finance” and “bank” in the Domain Names does therefore not prevent the finding of confusing similarity between the Domain Name and the Complainant’s DEKA trademarks. In addition, it is well established that generic Top-Level Domain suffixes, including “.ltd”, are disregarded in the assessment of the similarity between the Domain Name and the Complainant’s mark (see section 1.11.1 of the WIPO Overview 3.0). Further, the Panel finds that the Domain Name Accordingly, the Panel finds that the Domain Names are identical and/or confusingly similar to trademarks in which the Complainant has rights. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must first make out a prima facie case showing that the respondent lacks rights or legitimate interests in respect of a disputed domain name and then the burden of production, in effect, shifts to the respondent to come forward with evidence of its rights or legitimate interests (see section 2.1 of the WIPO Overview 3.0). The Panel acknowledges that the Complainant has made a prima facie case showing that the Respondent lacks rights or legitimate interests in respect of the Domain Name. In this regard, the Panel notes that there is no indication that the Respondent has acquired trademark or license rights to the Domain Name. Accordingly, and since the Respondent has failed to present evidence of its right or legitimate interest, the Panel finds that that the Respondent does not have rights of legitimate interest in respect of the Domain Names. C. Registered and Used in Bad Faith The Complainant’s DEKA and DEKABANK trademarks all have prior registration dates compared to the Domain Names. The term “deka” does not have any particular dictionary meaning and there is no indication why the Respondent would have chosen domain names incorporating the term “deka” if not to confuse Internet users in believing that there exists a connection between the websites to which the Domain Names resolves and the Complainant. This notion is strengthened by the fact that the Domain Names also include the terms “finance” and “bank” respectively, which both allude to the business conducted by the Complainant, and by the use of the Domain Names to redirect to the Complainant’s website. The Panel finds that the Respondent has registered and is using the Domain Names in bad faith. 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 names Jonas Gulliksson
- European Union Trademark Registration No. 016449332 for the mark DEKA (figurative), with a registration date of June 23, 2017; and
- German Trademark Registration No. 30421730 for the mark DEKABANK (figurative), with a registration date of May 24, 2004.
Sole Panelist
Date: April 28, 2021
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