The Complainant is BKS Bank AG, Austria, represented by Schonherr Rechtsanwalte GmbH, Austria.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Mikell Karo, Nigeria.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2021. On September 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 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 October 6, 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 October 11, 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 October 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2021.
The Center appointed Marilena Comanescu as the sole panelist in this matter on November 24, 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 bank founded in 1922 and headquartered in Klagenfurt, Austria. The Complainant is a member of the “3 Banks Group” (along with Oberbank AG and Bank fur Tirol und Vorarlberg AG) and since 1986 it is a listed company. In 2020, the Complainant’s balance sheet total assets were EUR9,9 billion, it employed 1,133 people and operated 64 bank branches through Austria, Slovenia, Croatia and Slovakia, serving 192,400 customers globally.
The Complainant holds trademark registrations for or including BKS, such as the following:
- the International Registration No. 1229364 registered on September 9, 2014 for BKS (word), covering services in International Classes 35, 36; and
- the International Registration No. 821772 registered on March 8, 2004 for BKS BANKS (words), covering goods and services in International Classes 16, 35, 36.
The Complainant owns domain names that include the mark BKS, such as
The disputed domain name
According to Annexes N and O to the Complaint, most of the remaining content and structure of the website under the disputed domain name was copied from a website of a bank headquarted in the United States of America.
The Respondent named “Mikell Karo” was involved in at least two previous disputes, initiated by the Complainant. See WhoisGuard Protected, WhoisGuard, Inc. / Mikell Karo, dineroQ / Mack John, wikina / John Terry, Georgia Group Of Company,WIPO Case No. D2021-0538 regarding the domain names
The Complainant contends that the disputed domain name is confusingly similar to its famous BKS trademark incorporating the mark with a slight ortographical alteration -the substitution of letter “s” with the visually similar digit “3”, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Respondent was involved in prior UDRP disputes decided againt it.
The Complainant requests the transfer of the disputed domain name to it.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn view of the absence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant holds rights in the BKS trademark.
The disputed domain name
In accordance with section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), it is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. Panels view the first element as a threshold test concerning a trademark owner’s standing to file a complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the second and third elements.
Further, numerous UDRP panels have considered that the addition of other terms (whether geographical wording, descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name or a domain name which consists of a common, obvious, or intentional misspelling of a trademark are not sufficient to escape a finding of confusing similarity for purposes of the first element. See sections 1.8 and 1.9 of the WIPO Overview 3.0.
It is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.site”, “.info”, “.shop”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the trademark BKS, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate InterestsThe Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark BKS, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.
In fact, at the time of filing the Complaint the disputed domain name resolved to a website providing services similar to those provided by the Complainant, was featuring the Complainant’s trademark, official information and images without any approval, and was inviting Internet visitors to register accounts on such website. The Respondent has used the disputed domain name in an attempt to obtain valuable customer information for its own fraudulent purposes. These are definitely not activities falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain name, nor an activity from which rights or legitimate interests could arise.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad FaithThe Complainant holds trademark rights for BKS since at least 2003.
Previous UDRP panels have found the Complainants’ mark to have reputation. See WhoisGuard Protected, WhoisGuard, Inc. / Mikell Karo, supra.
The disputed domain name was registered in 2020 and incorporates the Complainant’s mark written with ortographical alteration and together with other word elements, “zon”, “3” and “group”, closely associated with the Complainant’s activity, i.e. the Complainant is a member of the “3 Banks Group”.
Further, as listed under section 4 above, the Respondent registered several other domain names comprising the Complainant’s trademark and used them in a scheme virtually identical to that in this proceeding. As in the present matter, the other cases involved four domain names comprising the Complainant’s BKS trademark and additional terms with misspellings of the mark or of the additional terms.
Paragraph 4(b)(ii) of the Policy lists the situation when the respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. Paragraph 3.1.2 of the WIPO Overview 3.0 explains that a pattern of conduct may include a scenario where the respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
Given that the disputed domain name incorporates the Complainant’s trademark and the website operated under the disputed domain name displays the Complainant’s trademark, official information and images, offers identical services, indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name who may be confused and believe that the website is held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain.
Furthermore, according to the evidence provided in the Complaint and unrefuted by the Respondent, the Respondent was using the disputed domain name to request Internet visitors to create accounts on such website, in an attempt to obtain confidential information from third parties. This is a classic phishing scheme and establishes bad faith use and registration. See section 3.4 of the WIPO Overview 3.0.
Further, the Respondent registered the disputed domain name under a privacy service, provided inaccurate contact information in the WhoIs and refused to participate in the present proceedings in order to put forward any arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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
Marilena Comanescu
Sole Panelist
Date: December 8 2021