ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Banque et Caisse d'Epargne de l'Etat, Luxembourg v. Taha Abdollah Case No. D2024-4622 1. The Parties The Complainant is Banque et Caisse d'Epargne de l'Etat, Luxembourg, Luxembourg, represented by Office Freylinger S.A., Luxembourg. The Respondent is Taha Abdollah, Germany. 2. The Domain Name and Registrar The disputed domain name is registered with West263 International Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2024. On November 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 2024, 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 13, 2024, 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 November 20, 2024. 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 November 21, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2024.
page 2 The Center appointed Marilena Comanescu as the sole panelist in this matter on December 16, 2024. 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 Background The Complainant is a Luxembourgish company established in 1989 and internationally active in the banking services. The Complainant owns trademark registrations for S-NET, such as the following: - the Benelux trademark registration number 644249 for S-NET (word), filed on April 12, 1999, registered on August 1, 1999, covering services in International class 36; and - the European Union trademark registration number 009110644 for S-NET (word), filed on May 17, 2010, registered on July 1, 2012, covering services in International classes 35, 36, 38, and 41. The disputed domain name was registered on October 8, 2024, and, at the time of filing of the Complaint, it resolved to an error page. According to evidence in the Annex 5 to Complaint, the disputed domain name was listed for public sale on the website of a third party registrar, for the amount of USD 1,039.99. The name of the Respondent revealed by the Registrar corresponds to an individual involved in at least three UDRP proceedings decided against it1. See QlikTech International AB v. Taha Abdollah, WIPO Case No. D2024-4208; Lenovo (Beijing) Limited v. Taha Abdollah, WIPO Case No. D2024-3911; and Meta Platforms, Inc., Meta Platforms Technologies, LLC v. Taha Abdollah, WIPO Case No. D2023-3297. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that it is well known in the bank sector and it is widely exploiting the trademark SPUERKEESS for banking, insurance and financial services; the disputed domain name is at least identical to its trademark S-NET as it reproduces it precisely and entirely; the Respondent has no rights or legitimate interests in the disputed domain name; the Respondent has registered and is using the disputed domain name in bad faith, since the S-NET trademark is generally known by the public in Luxembourg and refers to the Complainant’s application used in relation to its financial and banking services and offered on the Complainant’s website at “www.spuerkeess.lu”; the Complainant has a history of 160 years (since 1856) and has therefore acquired, through the years, a standing experience and reputation in the international financial markets, the Complainant being ranked among the 10 safest banks in the world in 2019; the S-NET trademark is well-known by the Benelux and European Union public; the Respondent is using the domain name which is almost identical to the Complainant’s trademark S-NET, at least to the dominant verbal element of the Complainant’s device trademarks, and leads to strongly believe that he will use it for phishing purposes; it is more likely that the Respondent’s primary motive in registering 1 See Panel’s powers to undertake limited independent searches. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.8.
page 3 and using the disputed domain name was to capitalize on the Respondent’s reputation – by phishing; furthermore, it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name or to try to sell it. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under the Policy, the Complainant is required to prove on the balance of probabilities that: (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. 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 the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The 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 S-NET 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. Although the omission of the hyphen composing the mark, may bear on assessment of the second and third elements, the Panel finds the omission of such element, a misspelling of the mark, does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.9. 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 the 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.
page 4 Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the 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 the composition of the disputed domain name which reproduces the Complainant’s trademark S-NET with a minor alteration (the removal of the hyphen) which may not be perceived by the Internet users and remains phonetically identical to the Complainant’s trademark. Further, the disputed domain name was offered for public sale on a third party’s website and the Respondent has been involved in past UDRP disputes decided against it. These facts, together with the other circumstances in this case, including a lack of any explanation for the choice of disputed domain name by the Respondent, do not amount to a bona fide offering or legitimate noncommercial or fair use. The Panel finds the second element of the Policy has been established. 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 the disputed domain name was registered in bad faith, with knowledge of the Complainant and its trademark particularly because it reproduces the Complainant’s mark with a minor alteration, and the trademark S-NET predates the registration of the disputed domain name by about 25 years. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. At the time of filing of the Complaint, the disputed domain name was not actively used. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel notes the composition of the disputed domain name; the Respondent’s failure to respond in the present proceedings; the Respondent’s use of false or innacurate contact details in the WhoIs (as the written communication couldn’t be delivered); the implausibility of any good faith use to which the phonetically identical disputed domain name may be put by the Respondent that would not imply association to the Complainant, 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. WIPO Overview 3.0, section 3.3. Paragraph 4(b)(i) of the Policy provides the circumstance when the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name. The Panel finds that, registering a domain name highly similar to the Complainant’s trademark and offering it for sale to the public at large, for the amount of USD 1,039.99, is evidence of bad faith behavior in the circumstances of this case. WIPO Overview 3.0, section 3.1.1. Paragraph 4(b)(ii) of the Policy provides another circumstance of bad faith registration and use when the respondent 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. The Respondent’s involvement in at least another thee UDRP disputes, as listed under Section 4 above, enforces such finding. WIPO Overview 3.0, section 3.1.2.
page 5 The Panel finds that the 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 the Complainant. /Marilena Comanescu / Marilena Comanescu Sole Panelist Date: December 23, 2024
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