The Complainant is Kroo Ltd, United Kingdom (“UK”), represented by Dentons UK and Middle East LLP, United Kingdom.
The Respondent is Danilova Regina, United Kingdom. The identity of the Respondent was originally unknown and GDPR Masked.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 14, 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 December 14, 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 December 15, 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 December 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2022.
The Center appointed Michael D. Cover as the sole panelist in this matter on January 12, 2022. 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 was incorporated on September 5, 2016 and was previously called B-Social Limited, between that date and March 16, 2020. The Complainant owns and operates a bank under the trademark KROO in the United Kingdom. The Complainant currently offers digital-only e-money accounts available to consumers in the UK. It is regulated in the UK by the Prudential Regulation Authority and the Financial Conduct Authority (FCA). The Complainant operates its website at “www.kroo.com”.
The Complainant is the proprietor of a number of registered trademarks protecting its KROO trademark, including No 3,390,486 in the United Kingdom, filed on April 8, 2019, and registered on June 28, 2019; European Union (“EU”) trademark No 018409276 filed on February 26, 2021; and United States (“US”) trademark No 6104948 filed on May 28, 2019.
The Complainant was notified by the FCA by email that an unauthorized firm, claiming to be called “Kroo Investment Management” was cloning the details of the Complainant, in order to pass itself of as an FCA-authorised firm. This email is at Annex 2 to the Complaint and stated that the unauthorized clone firm operates the Disputed Domain Name. The email from the FCA also provided the contact information for Kroo Investment Management.
The website to which the Disputed Domain Name resolved provided that same contact email address and a telephone number, as well as featured the address of the Complainant. Currently, the Disputed Domain Name does not resolve to an active website.
The Disputed Domain Name was registered on October 25, 2021. The Respondent’s details were originally subject to a privacy shield and were then subsequently confirmed as Danilova Regina, United Kingdom.
5. Parties’ Contentions A. Complainant (a) Identical or Confusingly SimilarThe Complainant states that it is the owner of a number of UK, EU and US trademarks for KROO and sets these out in a table in the Complaint and sets out copies of the relevant trademark registry records at Annex 4 to the Complaint. These trademark registrations include figurative trademarks KROO, which, the Complainant submits, will be read by the public as “KROO”, because the device following “KR” will be visually understood as “OO”.
The Complainant continues that the Disputed Domain Name is
The Complainant then submits that the dominant element of the Disputed Domain Name is therefore KROO and that the Disputed Domain Name is exclusively comprised of a mark which is identical to the Complainant’s trademarks or comprised of a mark which is confusingly similar to the Complainant’s trademarks. The Complainant submits that the Disputed Domain Name incorporates the Complainant’s registered trademark in its entirety and cites Dixons Group PLC v. Purge I.T. and Purge I.T. Ltd,WIPO Case No. D2000-0584 in support of the proposition that the adoption in a disputed domain name as a striking element of the complainant’s name “is inherently likely to lead some people to believe that the Complainant is connected with it”.
The Complainant concludes under this heading that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights and that limb paragraph 4(a)(i) of the Policy has been satisfied.
(b) Rights or Legitimate InterestsThe Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant notes that the Disputed Domain Name was registered by the Respondent on October 25, 2021, several years after the Complainant’s trademark was registered in the UK.
The Complainant continues that it first became aware of the Disputed Domain Name when, as already set out in this Decision, it was notified by the FCA of an unauthorized “clone” firm, Kroo Investment Management, operating via the Disputed Domain Name. The Complainant states that the FCA has put out a notification on its website that the “clone” firm, Kroo Investment Management, and the associated website at the Disputed Domain Name is likely being used to attempt to scam UK consumers, because the use of “clone” firms is a common tactic used by fraudsters.
The Complainant confirms that Kroo Investment Management and the Disputed Domain Name are not authorized by or connected with the Complainant in any way. The Complainant also states that the Complainant is not affiliated with the Respondent and has not licensed or permitted the Respondent to use the trademark KROO.
The Complainant submits that the Disputed Domain Name is therefore not being used in connection with a bona fide offering of goods or services or for any other legitimate purpose and continues that, rather the Respondent is using the Disputed Domain Name to deceive consumers into believing that the website at the Disputed Domain Name is operated by or connected with an FCA-authorised firm, when this is not the case. The Complainant states that this is, at best, in order to sell unauthorised financial products and that it is very likely that the website (to which the Disputed Domain Name resolves) is being used to defraud consumers.
The Complainant adds that there is nothing to suggest that the Respondent has at any point been commonly known by the Disputed Domain Name or that it owns any trademarks associated with the Disputed Domain Name. Instead, says the Complainant, the Respondent is using the Disputed Domain Name to misleadingly divert consumers from the Complainant’s legitimate website and business to that of a “clone” firm, allegedly providing financial services but without proper authorisations and submits that this is not a legitimate use of the Disputed Domain Name.
The Complainant concludes that it is clear that the Respondent does not satisfy any of the indicative factors of legitimate interests identified in paragraph 4(c) of the Policy and that, for the purposes of paragraph 4(a)(ii) of the Policy, the Respondent therefore has no legitimate rights or interests in the Disputed Domain Name.
(c) Registered and Used in Bad FaithThe Complainant notes that the Disputed Doman Name is associated with a “clone” of the Complainant that appears to have been deliberately created to deceive consumers into believing it is associated with an FCA-authorised firm, when this is not the case. The website to which the Disputed Domain Name resolves, continues the Complainant, purports to offer a range of financial services and uses the Complainant’s logo and in the same colours as on the Complainant’s legitimate website, together with the Complainant’s address and is designed to give the false impression that it originates from the Complainant. The Complainant draws the attention of the Panel to Annexes 6 and 7 to the Complaint.
The Complainant submits that the use of the Disputed Domain Name and the associated website is clearly designed to create a false association with the Complainant and is dishonestly using the Complainant’s reputation and status as an FCA-authorised firm, in order to supposedly sell unregulated financial products and, more likely, to defraud consumers.
The Complainant therefore submits that, by using the Disputed Domain Name, the Respondent is intentionally attempting to attract for commercial gain, by supposedly selling unauthorized financial products and possibly defrauding consumers, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website. The Complainant submits that this is indicative of a registration in bad faith and refers to paragraph 4(b) of the Policy.
The Complainant concludes that, in light of the Complainant’s status as an FCA-authorised firm, the fact that the Respondent is a “clone” firm about which the FCA has put out a specific warning, the fact that the Disputed Domain Name appears to being used to make money supposedly selling illegitimate financial products but is likely being used to defraud consumers and the arguments submitted in the Complaint are all factors combined as clear evidence of registration and use of the Disputed Domain Name in bad faith in accordance with paragraph 4(b)(iii) and (iv) of the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Complainant must establish on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel accepts and finds that the Complainant has established registered rights in its trademark KROO and those registered rights go back some years before the registration of the Disputed Domain Name in 2021.
The Panel also accepts and finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark KROO, in which the Complainant has established rights. The Disputed Domain Name incorporates the Complainant’s KROO trademark in which the Complainant has rights in full and, in assessing confusing similarity, it is well established that the incorporation of an additional, non-distinctive element, such “group”, as in this case, does not prevent a finding of confusing similarity. It is also well established that the addition of a generic Top Level Domain (“gTLD”), such as “.com”, as here, does not avoid a finding of confusing similarity.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark KROO, in which it has rights, and that the provisions of the Policy, paragraph 4(a)(i) have been met.
B. Rights or Legitimate InterestsThe Panel accepts and finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel accepts and finds that the Respondent is not affiliated with or licensed by the Complainant to use the Complainant’s KROO trademark nor has the Respondent been commonly known by the Disputed Domain Name.
C. Registered and Used in Bad FaithThe Panel accepts that the Disputed Domain Name has been registered and used in bad faith.
It is a reasonable inference from the attempts of the Respondent to pose as an FCA-authorised company and use the Disputed Domain Name and the associated website that the Respondent knew of the Complainant’s trademark KROO when the Respondent registered the Disputed Domain Name.
The Panel finds that the Respondent has registered and used the Disputed Domain Name for the purpose of attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s KROO trademark as to source or affiliation. This is supported by the fact that the Disputed Domain Name resolved to a website which featured the Complainant’s address and telephone contact details.
The Panel accordingly finds that the provisions of the Policy, paragraph 4(a)(iii) have been met
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,
Michael D. Cover
Sole Panelist
Date: January 20, 2022