ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Banca del Ceresio SA v. freshgwag freashgwag Case No. D2023-4555 1. The Parties Complainant is Banca del Ceresio SA, Switzerland, represented by M. Zardi & Co SA, Switzerland. Respondent is freshgwag freashgwag, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 2, 2023. On November 2, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2023, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 3, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 3, 2023. 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 Respondent of the Complaint, and the proceedings commenced on November 14, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 6, 2023. The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on December 20, 2023. 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. page 2 4. Factual Background Complainant is BANCA DEL CERESIO SA ("Ceresio Investors"), a Swiss banking group specialized in the management of assets, custody for private and institutional clients and corporate advisory, owner of the trademarks CI CERESIO INVESTORS and BC BANCA DEL CERESIO. Complainant operates a website using the domain name in which promotes and offers its services. Some examples of Complainant's trademark registrations can be found below: Registration No. Trademark Jurisdictions International Class Registration Date 1469452 European Union ("EU"), United Kingdom ("UK"), Ireland, Benelux, Italy, Monaco 36 April 5, 2019 725708 Switzerland 36 December 28, 2018 771237 EU, UK, Germany, Spain, France, Italy, Monaco 36 November 16, 2001 The disputed domain name was registered on July 28, 2023, and resolves to an error webpage without content. 5. Parties' Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, Complainant contends that the disputed domain name is almost identical and confusingly similar to the registered trademark CI CERESIO INVESTORS, since it incorporates Complainant's trademark CI CERESIO INVESTORS without the abbreviation "CI" and minus the final letter "S". Complainant affirms that the disputed domain name is confusingly similar to Complainant's official website as the disputed domain name merely suppresses the final letter "S", going against Complainant's earlier trademarks rights. page 3 Therefore, according to Complainant, the disputed domain name is confusingly similar with Complainant's trademark CI CERESIO INVESTORS, fulfilling paragraph 4(a)(i) of the Policy and paragraphs 3(b)(viii) and 3(b)(ix)(1) of the Rules. In addition, Complainant states that Respondent would not have any rights or legitimate interests in respect of the disputed domain name, nor is Respondent commonly known by the disputed domain name. Further, Respondent has not been authorized, or licensed to use Complainant's trademark CI CERESIO INVESTORS as a domain name nor is Respondent associated with Complainant. Complainant observes that Respondent would have registered the disputed domain name for the purpose of exploiting Complainant's rights and well-known reputation of the CI CERESIO INVESTORS trademark, using the disputed domain name for a phishing message and afterwards offering to sell the disputed domain name to Complainant, which would not constitute a bona fide offering of goods and services, nor represent a legitimate noncommercial or fair use of the disputed domain name. This way, Complainant states that no legitimate use of the disputed domain name could be reasonably claimed by Respondent, thus paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules have been fulfilled. Finally, Complainant states that (i) Respondent was well aware of the existence of the trademark CI CERESIO INVESTORS, and is intentionally sending phishing emails - which led Complainant to the conclusion that the disputed domain name would potentially mislead consumers to fraudulent schemes; (ii) Respondent offered to resell the disputed domain name to Complainant; (iii) Respondent engages in a "typosquatting" behavior as registered a domain name very similar to Complainant's; and (iv) the trademark CI CERESIO INVESTORS is a coined term with no inherent meaning, associating Respondent's registration of the disputed domain name as intentional. Thus, according to Complainant, the requirements for the identification of a bad faith registration and use of the disputed domain name have been fulfilled, pursuant to paragraph 4(b)(iv) of the Policy. Accordingly, Complainant requests transfer of the disputed domain name to Complainant. B. Respondent Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings To succeed in a UDRP complaint, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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. The burden of proving these elements is upon Complainant. Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, in the absence of exceptional circumstances, the panel's decision shall be based upon the complaint. page 4 A. Identical or Confusingly Similar 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 Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7. Based on the available record, the Panel finds Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel notes that the disputed domain name contains sufficiently recognizable aspects of the relevant mark as merely suppresses the abbreviation "CI" and the last letter "S" of Complainant's trademark CI CERESIO INVESTORS, corresponding to a typosquatting behavior. WIPO Overview 3.0, section 1.9 The disputed domain name consists also of the generic Top Level Domain ("gTLD") ".com". The applicable gTLD in a domain name, such as ".com" in this case, is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1 Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel notes that Complainant suspects that the disputed domain name is used for phishing schemes to obtain payments, as supported by emails that have been sent via the disputed domain name (Annex 10 to the Complaint). Panels have held that the use of a domain name for illegal activity (e.g. phishing, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Based on the available record, the Panel finds the second element of the Policy has been established. page 5 C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that Respondent has registered the disputed domain name that is confusingly similar to Complainant's trademark Complainant's trademark CI CERESIO INVESTORS - as explained above in 6.A - as merely suppresses the abbreviation "CI" and the last letter "S", which does not disclose Respondent's lack of any relationship to Complainant nor is significantly distinctive to avoid confusion. The Panel finds that it was duly demonstrated that Respondent was aware of Complainant's rights to the trademark CI CERESIO INVESTORS at the time of the registration - as Complainant enclosed emails sent by servers related to the disputed domain name offering the disputed domain name for sale (Annex 14 to the Complaint). The Panel concludes the registration and use is in bad faith under paragraph 4(b) of the Policy as the disputed domain name creates a 4(b)(i) registration to sell the domain name to the complainant at a profit; and 4(b)(ii) pattern of bad faith conduct. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the composition of the disputed domain name is highly similar to Complainant's trademark CI CERESIO INVESTORS, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Panels have held that the use of a domain name for illegal activity (e.g. phishing, impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds Respondent's registration and use of the disputed domain name to send emails asking for payments (Annex 10 to the Complaint) constitutes bad faith under the Policy. Section 3.4 of the WIPO Overview 3.0 establishes that "Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. [.] Many such cases involve the respondent's use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant's actual or prospective customers." The UDRP panel in Twitter, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Support, WIPO Case No. D2015-1488 came to a similar conclusion: "The Panel notes that Respondent's use of the website at the Domain Name which incorporates Complainant's trademark in its entirety indicates that Respondent possibly registered the Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, as per paragraph 4(b)(iv) of the Policy. Furthermore, the Panel accepts Complainant's undisputed submission that bad faith registration and use of the Domain Name is further indicated by the fact that there is strong suspicion of Respondent using the Domain Name in an elaborate common phishing scam." page 6 The Panel finds that the circumstances of the present case allows a finding of bad faith in the registration and use of the disputed domain name, considering that (i) Respondent would likely obtain commercial gain by using a confusingly similar name to Complainant's trademark; and (ii) Complainant operating an almost identical domain name, such that Respondent most likely knew (or should have known) of its existence, taking advantage of the confusion caused on the public by its use in the disputed domain name. Moreover, the Panel finds it relevant that Respondent has not provided any evidence of good faith registration or use, or otherwise participated in this dispute. Complainant has put forward serious claims regarding the apparent bad faith use of the disputed domain name that the Panel would expect any legitimate party would seek to refute. Based on the available record, the Panel finds that Complainant has established the third element of the Policy. 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 be transferred to Complainant. /Gabriel F. Leonardos/ Gabriel F. Leonardos Sole Panelist Date: January 3, 2024
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