WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nordea Bank AB v. Domainsecrecy.com
Case No. D2010-1818
1. The Parties
The Complainant is Nordea Bank AB of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Domainsecrecy.com of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <nordeabk.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2010. On October 28, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On October 28, 2010, Tucows 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” 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 November 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2010.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on December 1, 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, Nordea Bank AB (“Nordea”), 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 Nordea share is listed on the NASDAQ OMX, the exchanges in Copenhagen, Helsinki and Stockholm. In 2010 the Magazine Euromoney awarded Nordea the 2010 prize for the best private bank in the Nordics and in April 2010, Nordea was also awarded the prize for the best bank in Finland by the magazine Global Finance.
The Complainant is the owner of trademark NORDEA, Community Trade Mark (“CTM”) registration No. 1970706, filed on November 24, 2000 and granted on October 15, 2001, covering goods and services in classes 9, 35, 36 and 38.
The Complainant is also the owner of more than 700 domain names containing the term “nordea” (Annex 8 to the Complaint). It is the strict policy of the Complainant that all domain names containing the word “nordea” should be owned by the Complainant.
The disputed domain name was registered on July 30, 2010. On August 13, 2010, the Complainant sent a cease and desist letter to the Respondent, informing of the alleged violation of the NORDEA trademark and requesting the voluntary transfer of the disputed domain name in exchange of the reimbursement of the registration and transfer fee, in an amount not exceeding the out of pocket expenses. The Complainant did not receive any response to its cease and desist letter and subsequent reminder.
For this reason the Complainant decided to file this UDRP Complaint.
5. Parties’ Contentions
According to the Complainant, its trademark is well known in the entire Community, due to its extensive and long-term use and the high production and advertising costs associated with the Complainant’s services marked under the trademark. As such, the NORDEA trademark enjoys extensive protection.
The reputation of the NORDEA trademark has been confirmed in one previous UDRP decision (Nordea Bank AB v. Nordea Securities OYJ, WIPO Case No. D2010-1011).
The disputed domain name is confusingly similar to the NORDEA trademark. The dominant part of the disputed domain name lies in the term “nordea”, which is identical to the Complainant’s trademark. The suffix “bk” does not have any impact on the overall impression of the dominant part of the domain name.
The addition of the suffix “bk” is not relevant and will not have any impact on the overall impression of the disputed domain name. As stated in Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of prefixes and suffixes.
In the present case, the “bk” suffix can be seen as a shortening or a misspelling of the term “bank”. Therefore, the “bk” suffix strengthens the impression that the disputed domain name belongs to, or is affiliated with the Complainant. The combination of a distinctive trademark together with a generic word, relevant to the trademark’s target group creates an immediate potential for false association with the Complainant’s trade mark (see also Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009-1667). The addition of the top-level domains (gTLD) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity of the trademark and the Complainant has adequately proven that the Complainant has rights in the mark.
The Respondent has no trademarks or trade names corresponding to the disputed domain name. It is not the Complainant’s authorized licensee.
The <nordeabk.com> domain name was registered on July 30, 2010. In August 2010, the disputed domain name was connected to a website identical to the Complainant’s official website at “www.nordea.com”, and the same was at the time of the filing of the Complaint (see Annex 9 to the Complaint).
Considering the kind of use of the disputed domain name, it is unlikely that the Respondent was not aware of the Complainant’s trademark rights when it registered the domain name <nordeabk.com>.
As there is no evidence that the Respondent uses “nordeabk” as a company name, or has any other legal right in the name Nordea, the Complainant concludes that the Respondent is trying to sponge off the Complainant’s trademark.
According to the Complainant, the Respondent registered the disputed domain name in bad faith, because the trademark NORDEA is well known throughout Europe. The awareness of the trademark cannot have been unknown to the Respondent at the time of registration of the disputed domain name. The considerable value and goodwill of the mark NORDEA is most likely what made the Respondent register the disputed domain name here.
In the Complainant’s view, when using the disputed domain name, the Respondent appears to have sought to take advantage of typographical errors which can be made when typing website addresses. The Respondent creates a likelihood of confusion with the NORDEA trademark. By having the domain name connected to a website that looks exactly like the official website of the Complainant, the Respondent generates traffic to the site linked to the disputed domain name, and may alter the link at its will without the Complainant having any control of this. It has been stated in earlier UDRP cases that linking a domain name to a website of the Complainant without authorization is to be seen as commercial use of the disputed domain name.
For all the reasons mentioned above, the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for its own commercial gain. Therefore, the Respondent registered and is using the disputed domain name <nordeabk.com> in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <nordeabk.com> is confusingly similar to the Complainant’s trademark NORDEA, because:
- the disputed domain name consists of the identical term “nordea” followed by the suffix “bk”. “Nordea” is the dominant part of the disputed domain name as the two-letter suffix “bk” is certainly not capable of modifying the overall impression of the domain name;
- given the Complainant’s activity (that of a financial institution), the suffix “bk” is likely to be perceived by Internet users as a an abbreviation of the term “bank”, which would strengthen the similarity with the Complainant’s trademark, by creating an immediate potential for false association with the Complainant’s trademark (see Chippendales USA, LLC v. BadModels, Dawid Ozdoba, WIPO Case No. D2009-1667).
In view of the foregoing, anyone who sees the disputed domain name is likely to perceive it as a domain name belonging to the Complainant or to an entity related to the Complainant. Therefore, the disputed domain name <nordeabk.com> is likely to give rise to a likelihood of confusion with the earlier Complainant’s trademark NORDEA.
Hence, the Panel is satisfied that the first condition under the Policy is met.
B. Rights or Legitimate Interests
Proving through direct evidence a negative fact, such as the lack of rights or legitimate interests in a domain name, is often impossible. Therefore, for the purpose of the UDRP, it is sufficient for the complainant to make reference to a series of circumstances that provide a prima facie evidence of the respondent’s lack of rights or legitimate interests in the domain name. It is then up to the respondent to provide arguments to establish that, contrary to the complainant’s contentions, there exist rights or legitimate interests to register and maintain the domain name.
The Complainant has stated that:
- the Respondent does not own any trademark or company name consisting of or containing the term “nordea”;
- the Complainant has not licensed its trademark to the Respondent, nor has the latter been authorized to use the Complainant’s trademark in any way whatsoever;
- the <nordeabk.com> domain name leads to a website, which is identical to the Complainant’s website, both from a point of view of its contents and from a graphic point of view.
The Panel, in accordance with the powers conferred under paragraph 10 of the Rules, deemed appropriate to investigate further on the use of the <nordeabk.com> domain name. The Panel has thus ascertained that by typing the Internet address “www.nordeabk.com”, one leads to a website which is the exact copy of the Complainant’s official website. The home page even depicts in a very clear way the Complainant’s trademark. By clicking on several links active from the home page of the ”www.nordeabk.com” website, one accesses other sub-pages, always below the disputed domain name, still identical to those of the “www.nordea.com” official website. It thus appears that the Respondent has framed the Complainant’s website, as one can also ascertain from the Windows Explorer appropriate source command button.
In addition, a few links redirect to the “www.nordea.com” website.
In this Panel’s view, unauthorized framing is a clear violation of the Complainant’s rights and, as far as bank and credit institutions are concerned, may also cause serious damages to Internet users who ingenuously provide to a third party their sensible data to access their personal bank accounts.
The Respondent is in fact falsely presenting itself to Internet users, through a domain name confusingly similar to the Complainant’s trademark, as if it were the Complainant, or an entity belonging to the Complainant’s group, or somehow related to the Complainant. It would be quite difficult for an Internet user not to believe that the website it has accessed belongs to, or is endorsed by the Complainant. This is even more so, considering that the “www.nordeabk.com” website also contains unauthorized links to the Complainant’s original website.
Based on the above, the Panel agrees with the Complainant’s statement that the Respondent is not making any bona fide use of the disputed domain name that could demonstrate the Respondent’s rights or legitimate interests.
The Panel therefore concludes that the Complainant has discharged its burden of proof of the circumstance set forth by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has proved that the NORDEA trademark is well known, at least in some Northern European countries. In 2010 the magazine Euromoney awarded Nordea the 2010 prize for the best private bank in the Nordics and in April 2010, Nordea was also awarded the prize for the best bank in Finland by the magazine Global Finance. The reputation of the NORDEA trademark has already been assessed by another panel, in Nordea Bank AB v. Nordea Securities OYJ, supra, and has not been objected to by the Respondent.
Moreover, according to the Complainant’s website, Nordea owns several branches in Europe, including in the United Kingdom, which is where the Respondent originates from.
In the absence of any objection from the Respondent, the Panel is inclined to believe that the addition of the suffix “bk” to the NORDEA mark in the disputed domain name refers to the term “bank”, and therefore designates the Complainant’s activity.
Finally, immediately after the registration of the disputed domain name, <nordeabk.com> was used to lead to a website which is identical to the Complainant’s website.
For all the reasons mentioned above, the Panel concludes that the disputed domain name <nordeabk.com> was registered in bad faith.
As to the use of the disputed domain name, as thoroughly discussed above, the domain name leads to a website which is an exact copy of the original one. The Respondent was advised, through a cease and desist letter sent less than one month after the registration of the domain name <nordeabk.com>, of the Complainant’s earlier rights and of the need to immediately transfer the disputed domain name to the Complainant. However, the Respondent failed to reply to both the cease and desist letter and the subsequent reminder.
Given the circumstances of this case, it is clear, in the Panel’s view, that the Respondent’s use of the disputed domain name cannot be considered in good faith. The Respondent is not making a bona fide offering of services through its website, but is rather using it for the purpose of attempting to attract Internet users to its website for its personal interest, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
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 <nordeabk.com> be transferred to the Complainant.
Date: December 14, 2010