The Complainant is Landesbank Baden-Württemberg (LBBW), Germany, represented by Bird & Bird LLP, Germany.
The Respondent is Private by Design, LLC, United States of America / Alexander Alberht, Russian Federation.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2021. On July 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 19, 2021, 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 July 26, 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 July 26, 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 July 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2021. Upon the Respondent’s request, the Center extended the due date for Response until August 21, 2021. The Response was filed with the Center on August 20, 2021.
On September 1, 2021, the Complainant filed a supplemental filing with the Center (the “Supplemental Filing”)
The Center appointed Nick J. Gardner as the sole panelist in this matter on September 29, 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 BackgroundThe Complainant is a German bank. It provides its services 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, and 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, for example German trademark registration for LBBW (word/figurative), registered on August 23, 1999. These trademarks are referred to collectively as the LBBW trademark in this decision.
The Complainant has registered the domain name
The Disputed Domain Name was registered on June 2, 2021. At the time the Complaint was filed it appears (see discussion below) it did not resolve to an active website. By the time the Response was filed it resolved to a website (the “Respondent’s Website”) where the landing page is headed “LBBW Low Birth Baby Weight”. The Respondent’s Website contains several pages of information about pre term births and low birth weight in babies. As far as the Panel can see whilst it contains some links to other sources of information it does not contain any advertising or any “pay per click” commercial links. It states “LBBW is noncommercial website created by volunteers and being under development”. It says that it “aims to spread information about low birth baby weight to help people avoid this condition”. And “Despite the fact that millions of people suffer from this problem, it is still not well highlighted”. The information on the Respondent’s Website is relatively limited and in general terms – it does not contain any detailed scientific or medical advice. It contains two links to external sources – these are discussed below.
5. Parties’ Contentions A. ComplainantThe Complainant in the Complaint alleges the following.
The Disputed Domain Name 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 Disputed 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 Disputed 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 TLD “.credit” suggests a connection with banking activities.
The Respondent has registered and used the Disputed Domain Name in bad faith. The Complainant relies on the principles set out in the well know case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, in respect of domain names corresponding to a specific trademark which are not in active use.
The Complainant makes further submissions in its supplemental filing. These are where relevant discussed below.
B. RespondentIt is convenient to quote verbatim from the Response, as follows.
“Disputed domain name is Generic Top Level Domain and do not belong to any national domain name zone.
The Complainant has no rights in respect of the domain name in countries where its trademark have not been registered, so usage of the domain name by the Respondent in the absence of competition is legitimate.
Moreover, the Respondent is from Russian Federation where the Complainant’s trademark has not been registered. Complainant do not operate and is not represented in Russian Federation so its trademark is unknown here.
When I registered this domain name I knew nothing about Complainant and it’s [sic] trademark.
In case of the disputed domain name “lbbw.credit”, “lbbw” means: “low birth baby weight”.
And “credit” according to Oxford Dictionary, among other meanings, commonly means: “praise or approval because you are responsible for something good that has happened” so “credit” in the domain name
Domain name
The Response goes on to say that the Respondent is making a legitimate noncommercial and fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark.
6. Discussion and Findings I. Procedural matters A. Complainant’s Supplemental filingThe Panel will exercise its discretion to admit the Complainant’s Supplemental Filing. This is because it relates in large measure to matters which post-date the Complaint – specifically the contents of the Respondent’s Website. As discussed below that website appears to have been created by the Respondent after he received the Complaint.
B. Respondent IdentityThe Panel notes this is a case where one Respondent (Private by Design, LLC) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case, the Panel considers the substantive Respondent to be Alexander Alberht and references to the Respondent are to that person.
II. Substantive MattersTo succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
A. Identical or Confusingly SimilarThe Complainant has rights in the LBBW trademark. The Panel finds the Disputed Domain Name is identical to this trademark. It is well established that the TLD, in this case “.credit”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The Respondent says that the Complainant has no trademark rights in the term “lbbw” in the Russian Federation. That is irrelevant so far as the Policy is concerned. It also appears from the evidence provided by the Complainant in its Supplemental Filing to be factually incorrect but the Panel does not need to consider this issue.
Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent says that (iii) above applies. He says the Disputed Domain Name is linked to a bona fide website which provides information about what the Respondent refers to as “low birth baby weight”.
For reasons discussed below, the Panel does not accept that explanation and conclude that the Respondent purchased the Disputed Domain Name because it corresponded to the Complainant’s LBBW trademark (see below). Acquiring a domain name because it corresponds to the Complainant’s trademark cannot establish a legitimate interest. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad FaithUnder paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
In the present case the Panel concludes that it is more likely than not that the Respondent acquired the Disputed Domain Name being aware that it corresponded to the Complainant’s LBBW trademark.
The Panel recognises that this finding necessarily involves disbelieving the Respondent when he states he had no knowledge of the Complainant and that he acquired the Disputed Domain Name for use in relation to a website devoted to providing information about “low birth baby weight”. The Panel is conscious that proceedings under the UDRP are of a limited and restricted nature, do not involve oral hearings, discovery or cross examination, and hence are not readily suited to deciding disputed questions of fact or matters of truth or falsehood. That does not however mean a panel has to accept without scrutiny a claim by a respondent to lack knowledge of a complainant or its trademark. Were that the case any UDRP complaint could be defeated by an untruthful respondent. The Panel considers it is a question of evaluating all the available evidence and circumstances, including where appropriate forming reasonable inferences based on the available material, and reaching a conclusion as to whether or not, on the balance of probabilities, the Respondent is to be believed. The Panel consider there are a number of factors which, taken cumulatively, mean it is more likely than not to mean the Respondent’s claim to have registered the Disputed Domain Name to use in relation to a website devoted to providing information about “low birth baby weight” is untrue. Those factors are as follows:
1. It appears the Respondent’s Website was only created after the Respondent received the present Complaint. The Complaint simply alleges that the Disputed Domain name is not in use (and referred to the principles derived from the well-known case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Accordingly it seems to the Panel that the Respondent’s Website has been produced following receipt of the Complaint – which was sent to the Respondent on July 28, 2021. This is confirmed in that the Complainant in its Supplemental Statement produces evidence showing that content was first uploaded to the Respondent’s Website on August 20, 2021. This timing leads to a clear inference that the contents of the Respondent’s Website have been created as a pretext to provide an “after the event” justification for the registration of the Disputed Domain Name.
2. The Respondent has not provided any information explaining why he has an interest in the subject of “low birth baby weight”. There is no evidence to suggest he is a medical or health care professional and no other reason has been provided explaining why this subject was of interest to him.
3. The TLD “.credit” seems particularly unsuitable for a health related website. Much more suitable TLDs exist (for example “.health”). The Respondent’s explanation for the choice of “.credit” is as follows “And “credit” according to Oxford Dictionary, among other meanings, commonly means: “praise or approval because you are responsible for something good that has happened” so “credit” in the domain name
4. The content of the Respondent’s Website is relatively limited and superficial. It appears to the Panel that the content of this site could have been produced after a relatively short period of Internet research.
5. The Panel is not convinced that the term the Respondent uses – “low birth baby weight” or “lbbw” is in any event the usual term to describe the condition in question. There are two links on the Respondent’s Website to third party sources of information. One leads to a Wikipedia article which describe low birth weight and use the acronym “lbw”. The other leads to an article from a community health center headed “Risk of the low birth baby weight (lbw) (case study at community health center)” which commences “The incidence of Low Birth Weight (LBW) in Tanjungharjo Community Health Center Bojonegoro (6.60%) is higher than the prevalence of LBW in Bojonegoro (4.72%)”. Accordingly, it seems to the Panel that the relevant acronym commonly used to describe this condition is more likely to be “lbw” rather than “lbbw”. Further the Complainant in its Supplemental Statement provides evidence which shows that the standard World Health Organisation terminology for the condition in question uses the acronym “lbw” and that acronym is widely used by relevant organisations discussing the condition in question.
6. The Respondent says he had no knowledge of the Complainant and its LBBW trademark when he registered the Disputed Domain Name. This seems unlikely to the Panel. Even if hypothetically the Respondent had arrived at the choice of “lbbw” independently, any Internet searches the Respondent would have done would have immediately provided information about the Complainant. A search carried out by the Panel on October 11, 2021, for the term “lbbw” via “www.google.com” overwhelmingly produced results which related to the Complainant – the first five pages of results all appear to relate to the Complainant (and nowhere in those pages is there any result relating to “low birth baby weight”).
Taking all of the above factors into account the Panel concludes that it is more likely than not that the Respondent acquired the Disputed Domain Name being aware of the Complainant’s LBBW trademark, and that it is more likely than not that the content of the Respondent’s Website is a device intended to confer a defensive veneer of explanation in response to the present Complaint being filed against the Respondent. If the Respondent did not register the Disputed Domain Name for use in relation to a website concerning “low birth baby weight” there is no other credible reason for the registration apart from the association of the term “lbbw” with the Complainant. On the evidence before the Panel that term has no other meaning save in relation to the Complainant.
Accordingly, the Panel concludes that the Respondent chose to register a name comprising the Complainant’s LBBW trademark. The evidence before the Panel does not provide sufficient material for the Panel to reach a conclusion on exactly what the Respondent’s intention was in so doing. The Panel cannot clearly determine which, if any, of the factors under paragraph 4(b) of the Policy (above) may apply. However, the Panel notes that in any event this list is non-exhaustive and concludes that the registration of the Disputed Domain Name with knowledge of the Complainants’ trademark is itself evidence of bad faith – see Magneti Marelli Motopropulsion France S.A.S. v. Mopex S.A., WIPO Case No. D2003-0187: “Previous Panels have held that the awareness of a Complainant’s mark at the time of registration of a disputed domain name that is confusingly similar to that mark is evidence of bad faith” (see also the cases therein cited to similar effect).
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
7. DecisionFor 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
Nick J. Gardner
Sole Panelist
Date: October 13, 2021