The Complainant is Nomura International Plc., United Kingdom (“UK”), represented by Potter Clarkson LLP, Sweden.
The Respondent is Name Redacted.1
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2021. On July 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 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 August 2, 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 August 6, 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 August 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2021.
The Center appointed Alistair Payne as the sole panelist in this matter on September 7, 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 key company within the Nomura financial services group. The original Nomura business was founded in 1925 in Osaka, Japan and since that date has grown to have a presence in over 30 countries, employing over 26,000 employees globally. The wider Nomura group has USD 409.2 billion worth of assets under its control as of March 2020, and Nomura Holdings, Inc., the ultimate holding company for the Nomura financial services group, is listed on the Tokyo Stock Exchange. The Nomura group offers a range of financial services across a large number of jurisdictions including asset management, retail banking and investment banking.
The main operating entity of the Nomura group in Australia is Nomura Australia Ltd., which has had a physical presence in Australia for more than 30 years, including offices in Sydney. Nomura Australia Ltd. serves institutional clients in the Australian market offering products such as corporate advisory services, leveraged finance, fixed income sales and trading activities.
The Complainant owns several trade mark registrations for NOMURA, including European Union (“EU”) Trade Mark Number 002615136 registered on August 10, 2005, and UK Trade Mark Number UK00002169140 registered on June 4, 1999. A Nomura group company, Nomura Holdings, Inc. is the registered proprietor of the stylized form of the sign in Australia, with registered Trade Mark Number 1181807 registered on October 22, 2007, and the Complainant, as a Nomura group company, is licensed to use this trade mark. The Complainant and its related companies also own various domain names incorporating its NOMURA mark including
The disputed domain name was registered on May 23, 2021. It does not resolve to an active website but there is evidence on the record that it has been used by the Respondent for the purpose of sending fraudulent emails.
5. Parties’ Contentions A. ComplainantThe Complainant submits that it owns registered trade mark rights for its NOMURA mark as set out above. It says that as the disputed domain name wholly incorporates the Complainant’s NOMURA mark, it is identical or confusingly similar to the Complainant’s mark (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). Although the disputed domain name adds two elements to “nomura” being the word “holdings” and the abbreviation “au”, the Complainant submits that these additions do not preclude a finding of confusing similarity.
The Complainant also submits that the Respondent has no rights or legitimate interests in the disputed domain name. It says that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate or fair use and that the Complainant has not authorised or licensed the Respondent to use its trade marks for the purpose of registering domain names or for use on any website, or otherwise. Instead, asserts the Complainant, by its registration and use of the disputed domain name, the Respondent is capitalizing on the reputation and goodwill of the Complainant’s trade mark for the purpose of committing acts of fraud against the public from email accounts registered under the disputed domain name and this is not consistent with bona fide use of the disputed domain name.
As far as registration and use in bad faith is concerned, the Complainant notes that within 12 days of the disputed domain name being registered, people in Australia had been targeted by emails from the email address based on the disputed domain name. The Complainant has provided copies of certain of those emails and notes that the Respondent aimed to impersonate the Complainant and its related companies in offering specific investment products. More particularly, says the Complainant, the correspondence contained some publicly available information about the Complainant’s business, and aimed to replicate genuine correspondence from the Complainant and its related companies. For example, it notes that the details listed at the bottom of the email including the address, the Australian Business Number, and the Australian Financial Services Licensee Number, are all the correct details for Nomura Australia Ltd. and are therefore likely to confuse the victims of the fraud.
In addition to the text in the email, the Complainant mentions that a PDF document was attached to the same email, which contains what it considers to be a convincing yet fake prospectus for a “Fixed Income Mutual Fund” which it says infringes various of Nomura’s registered and unregistered intellectual property rights. The Complainant notes that on the second page of the prospectus, the Respondent’s email address as in its email is clearly situated in the bottom left corner and next to it is a phone number that is also contained at the base of the Respondent’s email. The Complainant confirms that this phone number is not an official Nomura number and is not linked to the Complainant or any of its group companies.
The Complainant submits that it is clear from the evidence above that the disputed domain name is being used to create email accounts impersonating the Complainant’s business and that the Respondent then contacts members of the public to offer them unofficial and fraudulent financial products which are designed to impersonate products offered by Nomura. The Complainant asserts that there can be no legitimate purpose for such activities, and that based on the substantial similarities between this case and Nomura International Plc v. Name Redacted,WIPO Case No. D2021-0654, which decided earlier this year, the purpose of the Respondent’s registration of the disputed domain name is almost certainly to be fraudulent.
It notes in this regard that in Nomura International Plc v. Name Redacted,WIPO Case No. D2021-0654, the respondent to that complaint had registered domain names at issue with the same Registrar and subsequently used them for email accounts which were created and initially used to make contact with targeted members of the public in Australia. The Complainant notes that in that case, the initial email contained an offer of a financial product, which was further particularized in the attached documentation, in particular a prospectus concerned a “Fixed Rate High Yield Bond”. The Complainant notes that in that case a fraudulent transfer of funds was ultimately requested which caused financial loss to members of the Australian public.
The Complainant submits that while the prospectus in this case appears to be slightly different, the overall modus operandi is the same and it appears that the Respondent’s intention in registering the disputed domain name is most likely to induce members of the Australian public into providing sensitive information to the Respondent and/or to deceive those individuals into transferring substantial funds to parties not associated with Nomura, under the false belief that the victims were being contacted by the Complainant. Although the Complainant says that it is not currently aware of any individuals who have sent funds to the Respondent following correspondence from email accounts associated with the disputed domain name, it seems most likely, based upon Nomura International Plc v. Name Redacted,WIPO Case No. D2021-0654, that this is the Respondent’s intention and that this has the potential to cause significant damage to both the Complainant’s group and the victims of the Respondent’s fraudulent activity, including reputational damage to Nomura and substantial financial damage to victims of the fraud. The Complainant notes that it has already sent a fraud notification out on June 4, 2021, to alert members of the public to the risk of fraud associated with the disputed domain name.
The Complainant has investigated the bona fides of the Respondent and has submitted evidence that the details registered for the Respondent are false. In particular, it has submitted that the address details in Toronto are false and that according to the Canadian Company Register and LinkedIn, there is a registered company in Canada with the same name as the Respondent, and its director has the same name as indicated in the Respondent’s email address. However, both this company and its director are in Montreal. Therefore, the evidence suggests that the Respondent’s identity has been stolen for the purpose of registering the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has demonstrated that it owns EU Trade Mark Number 002615136 registered on August 10, 2005, and UK Trade Mark Number UK00002169140 registered on June 4, 1999 for its NOMURA word mark as set out above. The disputed domain name wholly incorporates the Complainant’s NOMURA mark and is therefore confusingly similar to it (see WIPO Overview 3.0, section 1.7). Although the disputed domain name adds two elements to “nomura”, being the word “holdings” and the abbreviation “au”, the Panel finds that these additions do not preclude a finding of confusing similarity.
Accordingly, the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate InterestsThe Complainant has submitted that the Respondent has no rights or legitimate interests in the disputed domain name. It has asserted that the Respondent is not using the disputed domain in connection with a bona fide offering of goods or services or a legitimate or fair use and that the Complainant has not authorised or licensed the Respondent to use its NOMURA trade mark for the purpose of registering domain names, or for use on any website, or otherwise.
The Panel notes that the disputed domain name does not resolve to an active website but that there is evidence on the record that it has been used by the Respondent for the purpose of sending fraudulent emails ostensibly in the name of the Complainant group of companies. The Complainant has submitted that by its registration and use of the disputed domain name, the Respondent is capitalizing on the reputation and goodwill of the Complainant’s trade mark for the purpose of committing acts of fraud against the public from email accounts registered under the disputed domain name and that this is not consistent with bona fide use of the disputed domain name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which case has not been rebutted by the Respondent. For this reason and in light of the Panel’s finding of fraudulent conduct by the Respondent, as described under Part C below, the Panel finds that the Complaint also succeeds under this element of the Policy.
C. Registered and Used in Bad FaithThe disputed domain name was registered on May 23, 2021, many years after the registration of the Complainant’s trade mark rights. The Complainant’s Nomura brand is very well reputed in a number of countries, at least amongst the professional and sophisticated investing public.
Although the disputed domain name does not resolve to an active website, the Complainant has provided evidence that it has been used by the Respondent for the purpose of sending fraudulent emails and prospectuses, ostensibly in the name of the Complainant group of companies, with the apparent aim of fraudulently soliciting investment funds from targeted members of the Australian public. It is apparent that in order to mount such an elaborate scheme, in the name of the Complainant’s NOMURA mark, that the Respondent was certainly well aware of the Complainant’s business and mark when it registered the disputed domain name.
It is clear from the evidence provided by the Complainant that the disputed domain name is being used to create email accounts impersonating the Complainant’s business and that the Respondent then contacts members of the public to offer them unofficial and fraudulent financial products which are designed to impersonate products offered by Nomura, most likely with a view to obtaining their investment funds, or at least their personal information. The Complainant has brought the Panel’s attention to the very similar recent circumstances described by the panel in Nomura International Plc v. Name Redacted,WIPO Case No. D2021-0654, in which indeed a fraudulent transfer of funds was requested by the respondent. Although, that case appeared to involve a different respondent, the panel in that case made an order to redact the respondent’s name on the basis that the registrant on the WhoIs record had most likely had their identity stolen by the real respondent. In the present case, it seems very likely, based on the circumstances and evidence of false contact and address details, that the Respondent also stole the third party’s name and details in an identity theft conceived expressly for the purpose of the registration of the disputed domain name. For that reason, the Panel also orders in this case that the Respondent’s name in the current case should be redacted.
Conduct involving the fraudulent use of a trade mark in a sophisticated scheme calculated to obtain funds or at least personal information fraudulently, as appears to be the case here, amounts to registration and use of the disputed domain name in bad faith. The Panel therefore finds that the Respondent has both registered and used the disputed domain name in bad faith, and that the Complaint also succeeds under this element of the Policy.
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
Alistair Payne
Sole Panelist
Date: September 28, 2021
1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel orders that the Respondent’s name be redacted from this decision. The Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision should not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.