WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nordea Bank AB v. NORDEA SECURITIES OYJ
Case No. D2010-1011
1. The Parties
The Complainant is Nordea Bank AB of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Australia.
The Respondent is NORDEA SECURITIES OYJ of Etelä-Suomenlääni, Finland.
2. The Domain Name and Registrar
The disputed domain name <nordea-securities.com> (the “Domain Name”) is registered with DomainContext, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2010. On June 18, 2010, the Center transmitted by email to DomainContext, Inc. a request for registrar verification in connection with the Domain Name. On June 18, 2010, DomainContext, Inc. 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 Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 June 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2010.
The Center appointed Alfred Meijboom as the sole panelist in this matter on August 12, 2010. 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 asserted and provided evidence in support of the following facts.
The Complainant is a European bank with a leading position in e-banking. The Complainant registered Community and Finnish trademarks for NORDEA in 2002 and 2001, respectively. The trademark NORDEA has acquired the status as well-known trademark within the financial industry.
The Respondent registered the Domain Name on April 17, 2010. The Respondent used a false identity and emails under the Domain Name were sent and used for fraudulent purposes.
5. Parties’ Contentions
The Complainant is a European bank with approximately 10 million customers, 1,400 branch offices and has a leading netbanking position with 6 million e-customers. The Complainant’s shares are listed on different exchanges. In 2010 the Complainant was awarded the 2010 prize for the best private bank in the Nordics and in April 2010, the Complainant was also awarded the prize for the best bank in Finland.
The Complainant is holder of a Community and Finnish trademarks NORDEA, registered in 2002 and 2001, respectively (the “Trademark”). The Trademark has extensive and long-term use on the services of the Complainant and, in connection therewith, by tremendous costs incurred by the Complainant in connection with the production and advertising with respect to the services that are marked by the Trademark acquired the status as well-known trademark within the financial industry. As a result, the services designated by the Trademark are connected to a good reputation. The Trademark registrations took place before the Respondent gained ownership of the Domain Name. The Complainant also operates under the domain names such as <nordea.com>, <nordea.se> and <nordeasecurity.co.uk>.
The Respondent uses a false identity as the genuine Finnish company Nordea Securities Oyj ceased to exist on June 30, 2004 when it merged into Nordea Bank Finland Plc.
The Domain Name is confusingly similar to the Trademark as the dominant part of the Domain Name comprises the word “nordea”, which is identical to the Trademark as anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the Trademark. There is a considerable risk that the public will perceive the Domain Name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. By using “nordea” as a dominant part of the Domain Name, the Respondent exploits the goodwill and the image of the Trademark, which may result in dilution and other damage for the Trademark.
The Respondent has no rights or legitimate interests in respect of the Domain Name because the Respondent has no registered trademarks or trade names corresponding to the Domain Name. No license or authorization of any other kind has been given by the Complainant to the Respondent to use the Trademark.
The Respondent is today not using the Domain Name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trademark to use the Domain Name as the platform for Internet fraud that aims at stealing valuable information from visitors to the website. This has become a serious problem for the financial industry worldwide and thus cannot constitute a bona fide use of the Domain Name. There is no evidence that the Respondent uses the name as a company name, or has any other legal right in the name “nordea”. The Respondent is trying to sponge off the Trademark.
Considering the use of the Domain Name, it is highly unlikely that the Respondent was not aware of the Trademark when it acquired the Domain Name.
The Trademark has a reputation within Europe and predominantly in Scandinavia. The awareness of the Trademark cannot have been unknown to the Respondent at the time of registration. The considerable value and goodwill of the Trademark is most likely what made the Respondent register the Domain Name.
The Complainant contacted the Respondent on April 26, 2010 in regard to the Domain Name advising the Respondent that the unauthorized use of the Trademark within the Domain Name violated the Complainant’s rights in the Trademark. The Complainant requested a voluntary transfer of the Domain. Simultaneously as the letter was sent out attempts to remove the related phishing site were ongoing. On April 29, 2010 the take down of the website under the Domain Name was successful and the phishing content removed. The Domain Name received status “suspended” and can no longer be operated by the Respondent. The Respondent did not respond to the cease and desist letter.
According to the Complainant it is highly unlikely that the Respondent was not aware of the Trademark and the value thereof at the time of the registrations. There is no connection between the Respondent and the Complainant. By using the Domain Name the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain. Consequently the Respondent must be considered to have registered and be using the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the requested remedy can be granted if the Complainant asserts and proves each of the following:
A. that the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
B. The Respondent has no rights or legitimate interests in respect of the Domain Name; and
C. the Domain Name has been registered and is being used in bad faith.
The Complainant bears the burden of proof on each of these elements. The Respondent’s default does not automatically result in a decision in favor of the the Complainant and does not constitute an admission of any pleaded matter. The Complainant must still prove each of the three elements required by Policy, paragraph 4(a) (e.g. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383).
A. Identical or Confusingly Similar
For the purpose of assessing whether the Domain Name is identical or confusingly similar to the Trademark in which the Complainant has rights, the “.com” suffix is disregarded, it being a necessary component.
The Domain Name includes the Trademark entirely, and adds “securities” to it. The word “securities” here is merely descriptive, and as such does not take away the similarity between the trademark and the Domain Name (e.g. Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green, Case No. D2010-0024).
It is, however, not sufficient that the Domain Name is similar to the Trademarks, it should be confusingly similar. The Panel is satisfied with ‘the Complainants’ prima facie evidence of confusing similarity because of the fact that the Trademark is well-known in Europe and more particularly in Finland where Respondent is established, so that the public who visits the website under the Domain Name or received emails from the domain could have believed that the Respondent was one and the same as Complainant or had a link to the Complainant.
Therefore, the Complainant successfully proved the existence of the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy the Complainant should prove that the Respondent has no right or legitimate interests in the Domain Name. According to the consensus view among panels, this condition is met if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests and the Respondent fails to show rights or legitimate interests.
The Complainant has undisputedly contended that it has not licensed or otherwise permitted the Respondent to use the Trademark and the Respondent has not disputed the Complainants’ claim to that effect. Nor could the Panel establish that the Respondent was previously known under the Domain Name as the Complainant undisputedly showed evidence that Respondent adopted a no longer existing name. The Panel could further not establish that Respondent used the Domain Name for bona fide offering of goods or services, or for noncommercial or fair use. For these reasons and in view of the use of the Domain Name as described below, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Complainant showed that it has registered the Trademark long before the Respondent registered the Domain Name and it undisputedly alleged that the Trademark had a reputation at the time the Respondent registered the Domain Name. Further, the Complainant submitted evidence showing that the Respondent adopted a false identity when it registered the Domain Name with the apparent purpose of letting the public believe that it is related to the Complainant. The Panel considers it obvious that the Respondent could only have registered the Domain Name if it was familiar with the Trademark, and therefore finds that the Domain Name was registered in bad faith.
The Complainant further submitted evidence of the Respondent’s use of the Domain Name for fraudulent activities, which in itself qualifies as use of the Domain Name in bad faith.
Consequently, the Panel finds that the Complainant has satisfied the third element of paragraph 4(a) of the Policy as well.
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 name <nordea-securities.com> be transferred to the Complainant.
Dated: August 26, 2010