WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Citibank Privatkunden AG & Co. KGaA v. Janice Liburd / Moniker Privacy Services
Case No. D2011-0559
1. The Parties
Complainant is Citibank Privatkunden AG & Co. KGaA of Düsseldorf, Germany represented by Meyer & Partenaires, France.
Respondent is Janice Liburd of Panama City, Panama / Moniker Privacy Services of Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <targobank-de.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2011. On March 30, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On April 4, 2011, Moniker Online Services, LLC. 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on April 4, 2011providing the registrant and contact information disclosed by Moniker Online Services, LLC, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 5, 2011.
The Center verified that the Complaint together with the amendment to 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 April 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2011.
The Center appointed Eduardo Machado as the sole panelist in this matter on May 3, 2011. 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
Complainant owns trademark registrations for the marks TARGO BANK since 2009, in Germany, where the Complainant is located, and abroad. Complainant also owns registrations for the following domain names <targobank.com>, <targobank.org>, <targobank.net>, <targobank.de>, <targobank.co.uk> and <targobank.fr>.
Complainant was established in 1926 in Düsseldorf, Germany and has to date about 3,4 millions clients, with 6600 employees.
Complainant is a commercial bank which provides personal and business banking services to corporations, government agencies, financial institutions and consumers in Germany. The company also offers various deposit products, including savings and checking accounts, certificates of deposits, and individual retirement accounts. It also provides credit cards, real estate loans, and mortgage loans, as well as online banking, financial consulting, retirement planning, and estate planning services.
As of December 5, 2008, Complainant operates as a subsidiary of Group Crédit Mutuel – CIC, the second French banking Group, which has nowadays about 18,7 millions clients and more than 65 000 employees with a network of 5619 branches in France.
On February 22, 2010, Complainant has changed its trade name into Targo Bank AG & Co. KGaA (reason why some of their above cited domain names have already been registered under their new trade name).
Complainant currently operates a web site under the “www.targobank.com”, dedicated to its products and services and providing information to the public about financial products.
A few weeks ago, Complainant was informed that a company named Moniker Privacy Services apparently located in United States, had registered on January 25, 2011 the disputed domain name.
Complainant investigations about Moniker Privacy Services revealed that it is the current owner of 138 domain names.
The disputed domain name is pointing to a sponsored links parked webpage whose links are in the field of banking or financial credit activities. By clicking on any of those links, the Internet user is directed to other parked pages that divert it to the website of competing companies.
5. Parties’ Contentions
Complainant contends that it is the owner of the trademark consisting in or including the wording “targo bank” and that it owns many registrations for these marks worldwide, which were filed on 2009.
Complainant informs that it has registered the domain names <targobank.com>, <targobank.org>, <targobank.net>, <targobank.de>, <targobank.co.uk> and <targobank.fr>.
Complainant asserts that the generic extensions “.com” has not to be taken in account while comparing the disputed domain name with the claimed trademark, as they are technical and necessary part of the domain names with no distinguishing feature nor legal significance.
Complainant alleges that the disputed domain name is confusingly similar to its trademarks TARGO BANK. Indeed, the trademark TARGO BANK is entirely reproduced in the disputed domain name.
Complainant also alleges that the addition of a hyphen and the letters “de” at the end of the disputed domain name which suffix reminds the ccTLD .de or the iso de country code for Germany, where Complainant is located and is making business, is also not sufficient to avoid likelihood of confusion in consumers’ mind.
Complainant informs that it has not licensed or otherwise authorized Respondent to make any use, or apply for the disputed domain name and that there is no relationship between Complainant and Respondent.
Complainant also informs that Respondent has never been known under the wordings “targobank” or ”targo bank” or ”targobank-de” and has no trademarks rights on these wordings once that the four existing TARGO BANK trademarks are registered under Complainant’s name.
Complainant asserts that the disputed domain name directs to a parking page to which the disputed domain name resolves and that this cannot be considered as fair use. Furthermore, the Respondent’s use cannot be considered as “non commercial” as the links which are displayed on the webpage are undoubtedly sponsored links whose sole purpose in to generate income to the holder of the domain name.
Complainant further asserts that the intent of the Respondent is clearly to divert Internet users to its website for its own commercial gain and therefore does not make a legitimate noncommercial, or fair use of the disputed domain name as already decided in several similar cases.
Complainant argues that, once the trademarks TARGO BANK have a great reputation, notably in Germany in the field of banking and financial services, in particular through its online services, it is difficult to imagine that Respondent could have ignored it all at the time it applied for the disputed domain name <targobank-de.com>.
Complainant also argues that the notoriety of the TARGO BANK trademarks has been confirmed by a previous UDRP decision.
Complainant informs that although Respondent is located in United States and Panama, where the TARGO BANK trademarks may be less known, it notes the use of a privacy protection service which function is to hide some real registrant. Complainant asserts that the effective registrant was certainly aware of Complainant, its trademarks, business, and of the following infringement and that is why Respondent wanted to remain unknown.
Complainant also informs that the fact that Respondent combined the “targobank” wording with the abbreviation “.de” for Germany cannot be place of the account of fortuity and it is inconceivable that it was unaware of Complainant and its business in Germany while registering this combination as a domain name.
Complainant argues that it is reasonable to conclude that only someone who is familiar with the TARGO BANK trademarks and with its business in Germany is likely to have registered the disputed domain name and, as a consequence, Respondent’s awareness of Complainant’s trademarks and business is evidence of registering the disputed domain name in bad faith.
Complainant asserts that Respondent has registered 138 other domain names.
Complainant contends that it is obvious that Respondent reserved and used the disputed domain name in bad faith for the following reasons:
- Because of the well-known character of the name and marks of Complainant in Germany, Respondent could not ignore the existence and the notoriety of the trademarks TARGO BANKS, owned and used by Complainant. The inclusion of the mark TARGO BANK in the disputed domain name cannot be considered coincidental.
The fact that the website of the domain name <targobank-de.com> is a parking page confirms Respondent’s bad faith, as a parking website cannot be considered as a bona fide exploitation of the domain name.
By using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to its website.
The reason for choosing a domain name which incorporates well-known trademarks can only be to take advantage of Complainant’s reputation and goodwill in the mark.
Complainant argues that, in view of its scope of activities, the disputed domain name could be used in any moment for phishing attacks, which is potentially a criminal activity using social engineering technique. In addition, it informs that, phishing is the act of sending an e-mail to a user falsely claiming to be an established legitimate company in an attempt to scan the user into surrendering privacy information that will be used for identify theft.
Complainant also argues that, the Bank Groups, like Credit Mutuel – CIC group to which Complainant is related, are often victim of fraudulent online activities. Complainant further asserts that there is a serious suspicion of phishing attempts and Respondent’s bad faith seems to be undisputable in this way.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the 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 respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
According to Complainant’s arguments and to the exhibits attached to the Complaint, it is proved that Complainant has intellectual property rights over the expression TARGO BANK.
The Panel finds that Complainant’s registered TARGO BANK trademarks are well-known in its field of activity and have a strong reputation in many countries. The Panel finds that the disputed domain name is confusingly similar with Complainant’s TARGO BANK trademark. The only difference between Complainant’s registered trademark and the disputed domain name is the addition of the generic and non-distinctive expression “.de”.
The Panel finds that the difference pointed above is not enough to characterize the disputed domain name as being distinct from Complainant’s registered trademarks. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0090 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”). Moreover, the Panel finds that adding the expression “.de”, which is equivalent to the ccTLD .de and/or to the iso de country code for Germany, where Complainant is located and is making business, is likely to increase the possibility of confusion amongst consumers.
The Panel finds that this similarity can mislead Internet users who search for Complainant’s services and divert them to the disputed domain name.
The Panel, therefore, finds that Complainant has established the first condition of the paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Taking into consideration that Respondent has failed to respond to Complainant, the Panel finds that Respondent lacks rights and legitimates interests in the disputed domain name.
As a matter of a fact, Complainant has made a prima facie case in support of its allegations and, due to this, the burden of production shifts to Respondent to show that it does have rights or legitimates interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared 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.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
In fact, Complainant has demonstrated that Respondent is using the disputed domain name to hold a parking page, which offers links to products and services in competition with Complainant. This is not a bona fide offering of goods or services.
So, in view of the above, the Panel finds that Complainant has established the second condition of the paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site.
Respondent has intentionally registered the disputed domain name which totally reproduces Complainant’s well-know trademark TARGO BANK. By the time the disputed domain name was registered, it is unlikely that Respondent did not have knowledge of the Complainant’s rights on the trademark TARGO BANK and this is reinforced by that the fact that Respondent added the expression “.de”, which refers to Complainant’s country of origin and used the disputed domain name to host a parking page where products and services competing with Complainant’ services.
Complainant’s allegations of bad faith are not contested. The evidence provided by Complainant confirms that it had long been using its TARGO BANK registered trademark when the disputed domain name was registered. Moreover, Complainant submitted consistent evidence that its trademark is well-known. The Panel finds that Respondent must have been aware of Complainant’s rights in the mark and, further, that Respondent knowingly infringed Complainant’s trademark when it registered the disputed domain name.
Also as stated above, under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.” Policy paragraph 4(b)(iv). Respondent used Complainant’s well-known trademark to attract Internet users to a parking website offering products and services that compete with Complainant. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondent’s website.
In light of these, the Panel finds Respondent registered and used the disputed domain name in bad faith. Complainant has established the third element of the paragraph 4(a) of the Policy.
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, <targobank-de.com> be transferred to Complainant.
Dated: May 16, 2011