The Complainant is Wirecard AG of Aschheim, Germany, represented by Wragge & Co. LLP, Germany.
The Respondent is Helo Holdings LTD of Amsterdam, The Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with SIDN through Premium Registrations Sweden AB. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2012. On January 26, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On January 27, 2012, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 27, 2012. In accordance with the Regulations, article 7.1, the due date for Response was February 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2012.
The Center appointed Tobias Cohen Jehoram as the panelist in this matter on March 5, 2012. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
The Complainant was founded on May 6, 1999. Since then, the Complainant has grown into one of the leading providers of payment systems with integrated risk management services, including banking and financing services as well as corresponding technical services. Its services are provided worldwide.
The Complainant is operating its main official website under its domain name , created on June 15, 1998. Furthermore the Complainant has registered several other domain names containing the word “Wirecard”, amongst others, , and . Wirecard Bank AG, which is a 100% subsidiary of the Complainant, is the owner of the domain name , created on January 27, 2005.
The Complainant is the owner of the Community trademarks CTM 004825998 WIRECARD, filed on December 26, 2005, and registered on July 2, 2007, and CTM 004862744 WIRECARD (word/figurative), filed on January 19, 2006, and registered on December 21, 2006.
From 2010 onwards, Wirecard Bank AG has been using the brand “mywirecard” to market and sell its products. This is a prepaid credit card in The Netherlands and several others countries of the European Union. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to its WIRECARD trademarks. The Complainant argues that the distinctive part of the Complainant’s trademark WIRECARD is identical to the distinctive part of the disputed domain name . Therefore the informed user will recognize the term “my” to be a simple prefix and the Top Level Domain (TLD) “.nl” as a necessary part of the disputed domain name. The Complainant states that WIRECARD is a famous trademark and that the use of the disputed domain name is likely to lure away customers to any offerings made under this domain name, because users will erroneously believe that this is a domain name of the Complainant.
The Complainant argues that the Respondent has no rights or legitimate interests to use the disputed domain name . From the Complainant’s point of view the Respondent has no legitimate reasons why the Respondent should have a right or a valid cause to choose the Complainant’s brand “mywirecard” as a “.nl” domain name.
The Respondent has not been licensed or authorized in any other way by the Complainant, to use the disputed domain name. The Respondent is not known to the Complainant and is not a genuine reseller. It only re-directs consumers to various websites for credit card products and other services. The word “wirecard” is a creation without any meaning, and thus the use of the term “Wirecard” can only refer to Complainant
The Complainant contends that the Respondent has registered the disputed domain name in bad faith, due to the Complainant’s earlier rights in the trademark WIRECARD and taking into account the Complainant’s use of the brand name “mywirecard” for its prepaid credit card products in The Netherlands, and because of the reputation and distinctiveness of the trademark WIRECARD. The Complainant argues that the registration in bath faith is further evidenced by the website to which the disputed domain name resolves, on which diverse credit card products and services are offered. Also, the disputed domain name itself is offered for sale. The Complainant argues that the disputed domain name is used in bad faith for the Respondent’s own commercial gain and thereby disrupting the business of the Complainant by free riding and thereby damaging the reputation of the Complainant and its well-reputed trademarks.
The Complainant has tried to contact the Respondent to settle this matter, but has been unsuccessful, since the Respondent did not respond to the Complainant. A warning letter has been sent to the Respondent on September 7, 2011. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
A. the domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name mentioned in article 2.1 sub a (II) of the Regulations; and
B. the respondent has no rights to or legitimate interests in the domain name; and
C. the domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
The trademark WIRECARD is entirely encompassed in the disputed domain name . In relation to the disputed domain name , the only difference is the “.nl” TLD. The Complainant has registered several domain names which comprise the word “wirecard”, sometimes together with another word, for example “my”, like the disputed domain name does.
In Pfizer Inc v. The Magic Islands,WIPO Case No. D2003-0870 the panel said in relation to the issue of confusing similarity, “[t]he similarity of the trademark and the domain name depends on many factors, including the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin”.
In Automobiles Peugeot v. PrivacyP / Domain Administrator, Domain Tech Enterprises,WIPO Case No. D2011-1002 the panel stated that the domain name is virtually identical to the complainant’s CLIC PEUGEOT mark. The only difference is the “.com” TLD and the use of a “-“ to represent a space. Further, the panel accepted that the domain name is confusingly similar to complainant’s PEUGEOT marks. The addition of the word “clic” and “-“ did not so detract from the term “Peugeot” included in the second level of the domain name as to prevent a finding of confusing similarity.
In the present case, the Panel accepts that the disputed domain name is confusingly similar in relation to the Complainant’s WIRECARD marks. The addition of the word “my” does not so detract from the term “wirecard” included in the second level of the disputed domain name as to prevent a finding of confusing similarity. See, e.g., The Coca-Cola Company v. MyFanta Network, S.L.,WIPO Case No. D2011-2063. The prefix “my” is commonly used in an online environment to indicate the direct link between a user or consumer and the branded good or services (my T-Mobile, my ASICS, my Yahoo!, etc). This prefix is devoid of distinctive character and does not distract from the trademark followed by this prefix. This is also shown by the Complainant itself, using the domain name .
The Complainant has accordingly made out the first requirement of article 2.1 of the Regulations. B. Rights or Legitimate Interests
The Complainant would be able to satisfy its burden under article 2.1(b) of the Regulations if it makes out a prima facie case which shows the Respondent’s lack of rights or legitimate interests. The burden then shifts to the Respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.1
The Panel is of the view that the Complainant has satisfied the requirements of article 2.1(b) of the Regulations. The Respondent has not filed any Response in this case by which it could have sought to establish its rights to or legitimate interests in the disputed domain name. In the absence of any evidence which shows that the Respondent has rights to or legitimate interests in the disputed domain name, the Panel therefore finds in favor of the Complainant on this issue under article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith
Article 3.2 of the Regulations sets out non-exhaustive circumstances that may evidence bad faith registration or bad faith use of a domain name. Article 3.2(d) of the Regulations says in this regard “the domain name has been or is being used for commercial gain, by attracting internet users to a website of the registrant or other online location through the likelihood of confusion which may arise with the trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation registered in the Netherlands as to, for example, the source, sponsorship, affiliation or endorsement of the website of the registrant or other online location(s) or of products or services on the domain registrant's website or another online location”.
The Respondent’s website does not itself offer goods for sale. It only re-directs Internet users to various websites for credit card products and other services such as “” and “”. The disputed domain name itself is also offered for sale.
The Respondent may obtain revenue from this click-through advertising but it is not necessary that it does so in order to satisfy the criterion that it has registered and is using the disputed domain name in bad faith. In Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912 the panel rejected the argument that bad faith could not exist because the respondent had not taken money from its use of the domain name.
The Respondent has registered and used the disputed domain name for commercial gain, by attracting Internet users to its website or other online location through the likelikhood of confusion which may arise with the Complainant’s WIRECARD trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or other online location. The Panel finds that it is highly likely that the Respondent had the Complainant’s WIRECARD trademarks in mind when registering the disputed domain name and its use of it, which leads Internet users to the Respondent’s website, constitutes use in bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the disputed domain name be transferred to the Complainant.
Tobias Cohen Jehoram
Panelist
Dated: March 19, 2012
1 The Panel notes that the mechanism of the Regulations is comparable to the Uniform Domain Name Dispute Resolution Policy (UDRP), see Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002.
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