The Complainant is Aktiebolaget Swedbank (Swedbank AB) of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Sweden Photo Bank Inc. of the United States of America.
The disputed domain names <swedbankas.net>, <swed-bank.net>, and <swed-bank.org> (collectively, the “Domain Names”), are registered with eNom, Inc
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2009. On January 7, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 7, 2009, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant of the Domain Names and providing the relevant contact details. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2009. An informal email communication was sent to the Center on February 4, 2009 by the authorized representative of Mr. Allen Beebe, whose name and address had been provided by the Registrar (as the contact for the Respondent) in respect of the Domain Name <swed-bank.net>. The email acknowledged receipt of the Complaint by Mr. Beebe, but asserted that Mr. Beebe was not the registrant of any of the Domain Names, and was not familiar with either the Domain Names or the Respondent.
By email dated February 4, 2009, the Center acknowledged receipt of the email from Mr. Beebe's representative, noting that Mr. Beebe's name and address had been provided by the Registrar in connection with the <swed-bank.net> Domain Name. The Center advised that it would be for the Panel when appointed to determine the proper identity of the Respondent. The Center advised Mr. Beebe's representative that, “unless otherwise advised by you”, it would treat the communication from Mr. Beebe's representative as a Response to the Complaint, and would proceed accordingly to appoint a Panel.
No further communication having been received from Mr Beebe's representative (or on behalf of the Respondent), the Center appointed Warwick Smith as the sole panelist in this matter on February 16, 2009. 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.
In the absence of any substantive Response, the Panel has checked to ensure that the Center has discharged its responsibility under the Rules, paragraph 2(a), to notify the Complaint to the Respondent. The Panel is satisfied that the Center has done so. In respect of the Domain Name <swed-bank.net>, the only address provided by the Registrar was that of Mr. Beebe, and quite clearly he has received a copy of the Complaint. The contact addresses provided by the Registrar for the Domain Names <swedbankas.net> and <swed-bank.org>, both consisted of a post office box apparently held by one Rachel Forest, in Denver, Colorado, and an email address for Ms. Forest. Difficulties were encountered delivering hard copies of the Complaint to Ms. Forest's post office box, and the attempted email transmission to her was also unsuccessful. However, copies of the Complaint were successfully delivered, and transmitted by facsimile, to the Technical and Administrative contact for all three Domain Names..
In the foregoing circumstances, the Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules, to employ reasonably available means calculated to achieve actual notice to the Respondent.
The Complainant is a large financial institution. It has approximately 9 million private customers, and 500,000 corporate customers, primarily in Sweden, and the Republics of Estonia, Latvia, and Lithuania. It has approximately 22,000 employees.
It appears from the Complaint that the Complainant was formed following the merger of two entities, ForeningsSparbanken and Hansabank, to form the Nordic-Baltic Banking Group. The dates of the relevant events are either unstated or confusing, but it appears that a new logo was created at or about the time of the merger, which prominently featured the color orange.
The Complainant is the registered proprietor of the word mark SWEDBANK in various countries, including the United States. The Complainant's American registration of SWEDBANK, on the principal register maintained by the United States Patent & Trademark Office, has been in effect since November 1991.
The Complainant operates its principal website at “www.swedbank.com”. It also holds numerous other “swedbank” domain names.
The Domain Names were registered on the following dates:
<swedbankas.net> November 25, 2008
<swed-bank.net> November 26, 2008
<swed-bank.org> November 28, 2008
The Complainant says that it first became aware of the registration of the Domain Names in late November 2008, when the Complainant's principal website was subjected to a “phishing” attack from a website operated by the Respondent at one of the Domain Names.
The Complainant produced a screen shot from a website at the Domain Name <swed-bank.net> (“the Respondent's website”), but it appears to be in the Swedish language, and the Panel has not been provided with a translation. Nor is the date of the screen shot apparent from the Complaint. However, it is possible to discern from the words “Swedbank Interneto banke finansinius” that the Respondent's website was probably concerned in some way with an Internet banking operation carried out by an enterprise called “Swedbank”. The page from the Respondent's website which the Complainant produced also prominently featured an orange logo, very similar to that which appears on the Complainant's website at “www.swedbank.com”. Within the orange logo on the web page from the Respondent's website, were the words: “Swedbank naujas Hansabanko vardas”. There were two spaces for the site visitor to key in information. Beside one of the spaces were the words “Naudotojo ID”.
The Complainant says that it attempted to access any websites which the Respondent might have been operating at the Domain Names <swedbankas.net> and <swed-bank.org>, but no active use appears to have been made of either Domain Name. When the Panel checked, neither of the two Domain Names resolved to any active website.
The Complainant asserted in the Complaint that the Respondent “has been providing a website where fraud-related activities take place”, but beyond the general allegation of phishing, and a statement that the Respondent's website was identical to the website originally used by the Complainant, the Complainant did not describe the nature of the allegedly fraudulent activities. The Complainant did not produce a copy of its website in its original form (i.e., the form which is said to have been identical to the Respondent's website).
The Complainant referred also to a previous case it brought under the Policy, ( WIPO Case No. D2008-1023) in which the Respondent had allegedly registered multiple “Swedbank” domain names, and used the websites at those domain names as a log-in portal which could easily retrieve a customer's credentials.
The Complainant's representative sent a “cease and desist” letter to the Respondent on November 28, 2008. When no reply was received, a reminder email was sent to the Respondent on December 4, 2008. The Complainant says that the only response was from the administrative contact for the Domain Names, and that the Complainant repeated to him a request (apparently made earlier) that the cease and desist letter be forwarded to the Respondent. The Complainant did not produce a copy of the reply from the administrative contact; nor did it describe the contents of the reply.
The Complainant contends:
1. The Domain Names are confusingly similar to the Complainant's SWEDBANK mark. The Complainant's SWEDBANK mark is well-known, and there is considerable risk that the trade public will perceive the Domain Names as either domain names owned by the Complainant, or that there is some kind of commercial relationship with the Complainant. There is also a risk of tarnishment of the Complainant's mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Names, having regard to the following:
i. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Names.
ii. The Complainant's SWEDBANK mark became internationally recognized as a famous mark before the registration of the Domain Names.
iii. The Complainant has investigated whether the Respondent has any kind of business registered or in use under the name “Swedbank”. The investigation yielded no result.
iv. The Respondent's website, which was identical to the Complainant's original website, clearly shows that the Respondent was well aware of the Complainant.
v. The Respondent's registration of multiple domain names which are confusingly similar to the Complainant's mark, shows that there has been a pattern of domain name registrations infringing the Complainant's trademark rights.
vi. The Respondent has not been using the Domain Names for any legitimate noncommercial or fair use, or in connection with any bona fide offering of goods or services.
vii. The Respondent has only registered the Domain Names in order to mislead visitors.
viii. The Domain Names have been hosting fraud-related activities.
ix. The Complainant has neither licensed nor otherwise authorized the Respondent to use the trademark SWEDBANK, either in a domain name or in any other connection.
3. The Domain Names were registered and have been used in bad faith, having regard to the following factors:
i. The well-known and reputed status of the Complainant's SWEDBANK mark throughout the world means that the considerable value and goodwill in the mark SWEDBANK cannot have been unknown to the Respondent.
ii. The Respondent registered the Domain Names with the fame and high repute of the Complainant's mark in mind.
iii. The Respondent has no trademarks corresponding with the Complainant's SWEDBANK mark and has received no authorization from the Complainant to use its SWEDBANK mark. Those circumstances alone suggest that the Domain Names were registered in bad faith.
iv. This is a case of opportunistic bad faith, in the sense discussed in the cases SSL International Plc v. Mark Freeman, WIPO Case No. D2000-1080, and Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848.
Except for the email communication from Mr. Beebe's representative, there was no Response to the Complaint.
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g., by failing to file a response), as the Panel considers appropriate.
The Panel is satisfied that the Complainant is the proprietor of the word mark SWEDBANK in the United States. Although no copy of any trademark certificate was produced by the Complainant, and the Complainant produced nothing more than an informal list of its various trademark registrations (i.e., a list apparently not emanating from any national or international trademark registration office), sufficient detail was produced for the Panel to check the online database maintained by the United States Patent & Trademark Office, and to confirm the details of the United States registration. (The Panel should not have been put to that trouble. The obviously relevant registration in this case was the United States registration the Respondent appears to be domiciled in that country and it would have been a simple matter for the Complainant's representative to have produced a copy of the trademark certificate.)
Each of the Domain Names is obviously confusingly similar to the Complainant's SWEDBANK mark. The “.net” and “.org” suffixes are not taken into account in the comparison, and the hyphens do nothing to avoid the confusion which is likely to arise from the strong similarity between the Domain Names and the Complainant's SWEDBANK mark. Similarly, the addition of “as” does nothing to distinguish the Domain Name <swedbankas.net> from the Complainant's SWEDBANK mark. Indeed, the addition of those two letters might well be taken by Danish Internet users as a reference to the incorporated or limited liability status of the Complainant (the Panel understands that those letters denote limited liability company status in Denmark).
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“…a Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, the Complainant has not authorized the Respondent to use its SWEDBANK mark, whether in a Domain Name or otherwise. There is no suggestion of the Respondent being commonly known by the Domain Names, so paragraph 4(c)(ii) of the Policy can not apply. Nor is there any evidence of any of the Domain Names having been used for a fair or legitimate noncommercial purpose, without intent for commercial gain. There appears to have been no use at all of the Domain Names <swedbankas.net> and <swed-bank.org>, and such use as has been made of the Domain Name <swed-bank.net> appears to have been commercial in nature.
In combination, those circumstances sufficiently establish a prima facie case, and the evidentiary onus shifts to the Respondent to show that it has some right or legitimate interest in respect of the Domain Names. As the Respondent has failed to file any Response, the Complainant must succeed on this part of its Complaint.
For completeness, the Panel observes that it is difficult to conceive of any right or legitimate interest the Respondent might have claimed. For the reasons set out in the next section of this decision, the Panel is satisfied that the Respondent acted in bad faith in registering and using the Domain Names, and in those circumstances, the Respondent could not have claimed a right or legitimate interest under Paragraph 4(c)(i) of the Policy (use in connection with a bona fide offering of goods or services, before notice of the dispute).
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line 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.
The Complainant also succeeds on this part of the Complaint. The registration of three Domain Names closely resembling the Complainant's SWEDBANK mark, together with the references to “Swedbank” and “Hansabank” and the use of the orange colored logo on the Respondent's website, make it clear beyond doubt that the Respondent was aware of the Complainant and its SWEDBANK mark when the Domain Names were registered. The only proved use of the Domain Names (the use of the <swed-bank.net> Domain Name as described above) does seem to be consistent with the Complainant's “phishing” allegation. Although the web-page from the Respondent's website was not in English, and the Complainant's allegation that the Respondent's website was identical to the Complainant's own website in its original form was not proved, the Respondent's website did appear to invite site visitors to provide some “ID” details, and it did adopt the orange colored device and include references to “Swedbank” and “Hansabank”. In the absence of a Response, the Panel finds that it is more likely than not that the website briefly established by the Respondent at the <swed-bank.net> Domain Name (i.e., the Respondent's website) was deliberately dressed up to look similar to the website apparently then operated by the Complainant at its principal website at “www.swedbank.com”. The only reason the Panel can think of for anyone to do that, would be for the purpose of obtaining personal information from site visitors who believed that the site was that of the Complainant, with a view thereafter to perpetrating some sort of fraud.
With regard to the Domain Names which do not appear to have been used, namely <swedbankas.net> and <swed-bank.org>, the Panel finds that there has been bad faith use by “passive holding”, in the sense described in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. While that case established that all of the circumstances must be looked at, an important consideration was whether the panel could conceive of any possible use of the disputed domain name by the respondent which would not breach the complainant's rights in some way, or otherwise amount to bad faith use. In this case, the Panel cannot imagine how the Respondent might use the Domain Names <swedbankas.net> and <swed-bank.org>, without misleading Internet users into believing that websites at those Domain Names were owned or sponsored by, or affiliated with, the Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <swedbankas.net> <swed-bank.net> <swed-bank.org>, be transferred to the Complainant.
Dated: March 2, 2009