The Complainant is BKS Bank AG, Austria, represented by Schonherr Rechtsanwalte GmbH, Austria.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Mikell Karo, dineroQ, Nigeria / Mack John, wikina, Nigeria / John Terry, Georgia Group of Company, Nigeria. 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 22, 2021. On February 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 22, 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 February 23, 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 February 26, 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 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2021. Founded in 1922, the Complainant is a bank headquartered in Klagenfurt, Austria, serving both private and business customers. The Complainant operates 63 bank branches throughout Austria, Slovenia, Croatia, and Slovakia, and has representative offices in Hungary and Italy. As of December 31, 2019, the Complainant employed approximately 1,100 people with total assets of EUR 8.9 billion. In about 1983, the Complainant began using the initials “BKS” as its name on the stock exchange and for trademark purposes. The Complainant is a member of the “3 Banken Gruppe” of three Austrian regional banks that cooperate to provide certain nationwide services. The Complainant owns various trademark registrations, including the following: BKS, Austrian Trademark Registration No. 215993, registered on March 8, 2004; BKS, International Trademark Registration No. 821772, registered on March 8, 2004; BKS, Austrian Trademark Registration No. 278266, registered on May 28, 2014; BKS, International Trademark Registration No. 1229364, registered on September 9, 2014; and BKS, International Trademark Registration No. 1352849, registered on February 8, 2017 (hereinafter collectively referred to as the “BKS Mark”). In addition to using “www.bks.at” as its official website, the Complainant offers online banking services using the domain name The Disputed Domain Names, The Complainant contends that the entities which control the Disputed Domain Names are effectively controlled by the same person and/or entity in this proceeding and are operating under several aliases. Therefore, the Complainant requests that the Panel order the consolidation of the Respondents in this proceeding. The Complainant also contends that the Disputed Domain Names are identical or confusingly similar to the BKS Mark, that the Respondents have no rights or legitimate interests with respect to the Disputed Domain Names, and that the Disputed Domain Names were registered and used in bad faith. The Complainant requests the transfer of the Disputed Domain Names from the Respondents to the Complainant. B. Respondent The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Consolidation of Multiple Respondents In this proceeding, the Complainant has alleged, and the Panel agrees, that the entities which control the Disputed Domain Names are effectively controlled by the same person and/or entity, which are operating under several aliases. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 4.11.2 summarizes the consensus view of UDRP panels on the consolidation of multiple respondents and provides that where a complaint is filed against multiple respondents, panels consider whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. The Panel finds that based on the record, the Respondents which control the Disputed Domain Names are under common control for the following reasons: - All Disputed Domain Names are registered with the same Registrar, and use the exact same privacy protection service to hide the registrant information; - All Disputed Domain Names used subdomains resolving to the Respondents’ website, falsely presenting themselves as the official website of the Complainant, and contained an online banking registration and login form inviting visitors to provide the Respondents with sensitive data; - All Disputed Domain Names resolved to similar websites, featuring banking services offered under the Complainant's trademarks and name and displaying the Complainant’s trademarks; - All registrants purportedly reside in Nigeria; - Previous UDRP proceedings2 involved confusingly similar domain names incorporating the same trademarks, and identical respondents as 2 of the Respondents here, i.e., mikell karo, and mack john; and - The Respondents have not presented any arguments as to why consolidation would be unfair or inequitable. Accordingly, the Panel finds that the conditions for consolidation of the Respondents into one proceeding are present here. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, are the Disputed Domain Names identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Names are confusingly similar to the BKS Mark as set forth below. First, the Complainant has established rights in the BKS Mark based on its years of use as well as its registered trademarks for the BKS Mark in Austria and other international jurisdictions. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the BKS Mark. The Disputed Domain Name The Disputed Domain Names Further, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that, as here, such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. There is no evidence in the record suggesting that the Respondents have rights or legitimate interests in the Disputed Domain Names. The Complainant has not authorized, licensed, or otherwise permitted the Respondents to use the Complainant’s BKS Mark. The Complainant does not have any business relationship with the Respondents, nor are the Respondents making a legitimate noncommercial or fair use of the Disputed Domain Names. There is also no evidence that the Respondents are commonly known by the Disputed Domain Names or by any names similar to it. In addition, the Respondents are using the Disputed Domain Names to trade on the Complainant’s BKS Mark and to deceive Internet users into thinking that they arrived at a site belonging to the Complainant. The Respondents also used the Disputed Domain Names as part of a fraudulent phishing scheme to encourage the Complainant’s customers to fill out online registrations and login forms so that the customers would provide sensitive, confidential financial information to the Respondents. “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.” See WIPO Overview 3.0, section 2.13.1. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Names. The Respondents have not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel determines that the Respondents do not have rights or legitimate interests in the Disputed Domain Names. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that, based on the record, the Complainant has demonstrated the Respondents’ bad faith registration and use of the Disputed Domain Names pursuant to paragraph 4(b) of the Policy. First, the Respondents have demonstrated bad faith registration and use by attracting, for commercial gain, Internet users to the Respondents’ websites and creating a likelihood of confusion with the Complainant’s BKS Mark. The use of a domain name to attract Internet users to a registrant’s website or other online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s online location for commercial gain demonstrates registration and use in bad faith. Thus, the Respondents’ use of the significant goodwill in the BKS Mark by registering the Disputed Domain Names and using those Disputed Domain Names to resolve to a website impersonating that of the Complainant so that customers arriving at the website would be fraudulently induced to disclose sensitive personal and financial information to the Respondents demonstrates the Respondents’ bad faith registration and use of the Disputed Domain Names under the Policy, paragraph 4(b)(iv). Second, the Panel finds that the Respondents had actual knowledge of the Complainant’s BKS Mark when registering the Disputed Domain Names, demonstrating bad faith. The Respondents registered the Disputed Domain Names years after the Complainant first used and obtained its trademark registrations for the BKS Mark. In addition, the same Respondents, purportedly using other aliases, previously registered confusingly similar domain names belonging to the Complainant in a scheme virtually identical to that in this proceeding. See footnote 2, supra. In light of those circumstances, it is not possible to conceive of a plausible situation in which the Respondents would have been unaware of the Complainant’s BKS Mark at the time the Disputed Domain Names were registered. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, it is likely that the Respondents had the Complainant in mind when registering and using the Disputed Domain Names. Finally, the Respondents’ registration of the Disputed Domain Names that contain misspellings of the BKS Mark in an effort to take advantage of a typographical error is evidence of bad faith registration and use. See Nutricia International BV v. Eric Starling,WIPO Case No. D2015-0773. The Panel concludes that the there is no doubt that the Respondents knew about the Complainant’s rights in the BKS Mark when it registered the Disputed Domain Names, since they misspelled the Disputed Domain Names to misdirect users from the Complainant’s website to the Respondents’ website by capitalizing on potential typing mistakes. See ESPN, Inc. v. XC2,WIPO Case No. D2005-0444 (“It is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name.”). Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun 1 As of the writing of this Decision, the Disputed Domain Names resolve to an error page stating that the accounts have been suspended, or the account is not found on the server. 2 BKS Bank AG v. WhoisGuard Protected, WhoisGuard, Inc. / Mikell Karo,WIPO Case No. D2020-0575; BKS Bank AG v. WhoisGuard Protected, WhoisGuard, Inc. / david Earl, linkorion,WIPO Case No. D2020-1922; and BKS Bank AG v. WhoisGuard Protected,
The Center appointed Lynda M. Braun as the sole panelist in this matter on March 30, 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
Sole Panelist
Date: April 11, 2021
WhoisGuard, Inc. / Mack John, Wikina,WIPO Case No. D2020-2811.
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