The Complainant is Landesbank Baden-Württemberg (LBBW), Germany, represented by Bird & Bird LLP, Germany.
The Respondent is Marta Pucci, Italy1 . 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2021. On May 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 6, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 7, 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 amendment to the Complaint on May 10, 2021. 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 May 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2021. The Center appointed Jonas Gulliksson as the sole panelist in this matter on June 9, 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 provides its services as a mid-sized universal bank to companies, retail and institutional customers, and savings banks. Further, the Complainant fulfils the role of a central bank for the savings banks in the German federal states of Baden-Württemberg, Rhineland-Palatinate, und Saxony. As an institution under public law, the Complainant is owned by the German Federal State of Baden-Württemberg, the Savings Bank Association of Baden-Württemberg, and the City of Stuttgart. The Complainant is the owner of numerous trademark registrations that contain the term “LBBW” such as, inter alia, the following trademarks: - German trademark registration for LBBW (word/figurative), registered on August 23, 1999, for goods and services in classes 9, 16, 35, 36, 38, and 42 (Reg. No. 399217142). - European Union trademark registration for LBBW (figurative), registered on July 13, 2000, for goods and services in classes 9, 16, 35, 36, 38, and 42 (Reg. No. 001139450) - International trademark registration for LB BW (figurative), registered on March 1, 2019, for goods and services in classes 9, 14, 16, 35, 36, 38, and 42, designated for the European Union, United Kingdom, Norway, United States of America, and China (Reg. No. 1470393) Furthermore, the Complainant has registered the domain name The Domain Name was registered on February 3, 2021. The Domain Name resolves to a website displaying pay-per-click (“PPC”) advertising links related to the Complainant’s services in the financial and banking sector. 5. Parties’ Contentions A. Complainant The Complainant alleges the following: The disputed domain is identical or at least highly similar to the Complainant’s trademark rights and additionally also to its company name and its registered and actively used domain name The Respondent does not have any rights or legitimate interests in respect of the Domain Name. The Complainant has not granted any license or authorization of any kind to the Respondent to use the relevant LBBW trademarks or the Complainant’s company name. There has never been any kind of business relationship between the Complainant and the Respondent. The Domain Name falsely suggests an affiliation with the Complainant, not only due to the fact that it contains the term “lbbw” but also because the content is in close connection with the Complainant’s business activities. From the content of the Respondent’s website it is evident, that it is simply trying to take advantage of the Complainant’s good reputation in the field of banking and finance services. The Respondent’s only intention with the Domain Name is to create confusion among the Internet users in order to generate links to the marketed websites. By doing so, the Respondent is willing to accept that the good reputation of the Complainant is damaged. The Respondent has registered and used the disputed domain in bad faith. The Respondent has registered the Domain Name merely to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks, domain name and company name. The website available under the Domain Name shows advertising links to various banking and finance services. The Complainant´s registration and use of the relevant trademarks and domain names clearly predates the date at which the Respondent registered and started using the Domain Name. 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; and (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 LBBW, that were registered several years before the registration of the Domain Name. The Domain Name incorporates LBBW in its entirety while adding the descriptive term “landesbank”, which is German for “state bank”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 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. Moreover, the term “landesbank” is a term used in the Complainant’s company name. Further, it is well-established that “.com”, as a generic Top-Level Domain (“gTLD”) suffix, is disregarded in the assessment of the similarity between the Domain Name and the Complainant’s mark (see paragraph 1.11.1 of the WIPO Overview 3.0). Considering what has been stated above, the Panel finds that the Domain Name registered by the Respondent is confusingly similar to the Complainant’s LBBW trademarks. 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 paragraph 2.1 of the WIPO Overview 3.0). In the present case, the Respondent failed to submit a Response. The Domain Name consists of the Complainant’s LBBW trademark in its entirety, with the addition of the German term “landesbank”, which is descriptive of the Complainant (i.e., a state bank) and is also part of the Complainant’s company name. Accordingly, the construction of the Domain Name carries a risk of implied affiliation which cannot constitute fair use. See section 2.5.1 of the WIPO Overview 3.0. Further, noting the commercial nature of the website and the targeting nature of the PPC links, the Respondent cannot be held to have rights or legitimate interests in the Domain Name. See section 2.9 of the WIPO Overview 3.0. Considering all of the evidence presented in this matter and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the Domain Name and the confusing similarity between the Domain Name and the Complainant’s LBBW trademarks, the Panel concludes that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant. C. Registered and Used in Bad Faith The Complainant’s LBBW trademarks were registered several years before the Domain Name. The Complainant’s trademarks inherent a certain degree of distinctiveness that strongly suggest that the Respondent must have been aware of the Complainant’s trademarks when registering the Domain Name. The addition of “landesbank” to “lbbw” in the Domain Name strongly supports this conclusion. The Domain Name website contains advertising links that concern services that are of the same nature that the Complainant provides. This is a clear indication that the Respondent has registered the disputed domain merely to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks. Considering what has been stated above, the Panel finds that the Complainant has registered and used the Domain Name 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 name Jonas Gulliksson 1 The Complaint was initially filed against “Withheld for Privacy ehf”. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name is currently registered. The amended Complaint names the underlying registrant as the Respondent only.
Sole Panelist
Date: June 21, 2021
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