WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EFG Bank European Financial Group SA v. Khanh Nguyen
Case No. D2012-0039
1. The Parties
The Complainant is EFG Bank European Financial Group SA of Geneva, Switzerland represented by BCCC Attorneys-at-law, Switzerland.
The Respondent is Khanh Nguyen of Norcross, Georgia, United States of America (“U.S.”).
2. The Domain Names and Registrar
The disputed domain names <bank.eurfgl.com> and <eurfgl.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2012. On January 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 12, 2012, the Registrar 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 January 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2012.
The Center appointed James A. Barker as the sole panelist in this matter on February 13, 2012. 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 is a wholly owned subsidiary of European Financial Group EFG (Luxembourg) SA, the operating parent company of the EFG Group, an international banking group. The Complainant is the parent company of EFG International, a global private banking and asset management group headquartered in Zurich. The EFG International Group has an international presence all over the world, including in the U.S. where the Respondent has his address. It has some 2,500 employees in 30 countries. The majority of the entities in the group have chosen as their corporate name the acronym “EFG” followed by some descriptive terms, including in particular the word “bank”.
The Complainant is the owner of numerous trademarks containing, either as a sole element or in combination with others, in either word or logo form, the element “EFG”. In the U.S., its registered marks include EFG (registered in 2002), EFG GROUP (registered in 2005), and EFG INTERNATIONAL (registered in 2009). The Complainant did not provide direct evidence of its registration of these marks in the Complaint, but provided a list of the marks with relevant registration details, including the registration number.
The Complainant’s subsidiaries conduct their activities online under different domain names, including <efgl.com> that was registered in May 2000.
The Complainant provides evidence that the disputed domain name <eurfgl.com> leads to a file index (it does not revert to an active website). However the Complainant also provides evidence that the disputed domain name <bank.eurfgl.com> is a reproduction of the official website of one of the Complainant’s subsidiaries. That website contains the prominent statement “Welcome to EFG International”. In all respects, that website superficially appears to be an official website relating to an entity associated with the Complainant.
The disputed domain name <eurfgl.com> was registered on September 11, 2011. The disputed domain name <bank.eurfgl.com> was registered on September 6, 2011. The Complainant notes its belief that the latter domain name is technically dependent on the former domain name (that is, that the former domain name cannot be cancelled or transferred separately from the latter).
5. Parties’ Contentions
The Complainant directs its argument primarily against the disputed domain name <bank.eurfgl.com> (which it describes as the “sub-domain”), on the basis that this domain name is, says the Complainant, used for the purpose of a phishing website.
The Complainant claims that the disputed domain names are confusingly similar to its marks. The Complainant claims that any domain name containing the sequence of letters “E”, “F” and “G” will lead any user to make a connection with the Complainant as far as the banking industry is concerned, in spite of the addition of other letters that would not provide any particular meaning to the resulting term: such as “eurfgl”. The Complainant claims that this is particularly true when, as in the present case, the sub-domain contains the term “bank” and the related website is a reproduction of the Complainant’s.
The Complainant refers to an email to its Hong Kong branch from a Mr. Tong, which contained a reference to “an address deceptively labeled under the brand ‘western union’”. The Complainant suggests that this email is evidence of actual confusion created with the disputed domain names. In this connection, the Panel notes that the contact details for the administrative and technical contact for the disputed domain name names contain an email address that includes the terms “western-union”, relating to the well-known financial services company. The Panel has inferred that – as it is not otherwise made clear in the Complaint - that the Complainant has this in mind when it refers to this email as evidence of actual confusion.
The Complainant, secondly, claims that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant says that the Respondent has not relevantly made a bona fide offering of goods or services by using the disputed domain names, is not commonly known by them, and has not been making a legitimate noncommercial or fair use of them. Rather, the Complainant says that the Respondent has used the disputed domain names in connection with a phishing website. The Complainant refers to previous panel decisions which it says found that the unauthorized reproduction of third party trademarks on a website relating to the offering of identical or similar products whose authenticity is in doubt typically amounts to abusive use. For support the Complainant points to e.g., ECCO Sko A/S v. He Shaonan, Lin Zhiyuan, Qinghuo Ou, WIPO Case No. D2010-0650.
The Complainant, thirdly, claims that the disputed domain names were registered and are being used in bad faith. The Complainant says that the Respondent was obviously aware of the Complainant’s trademarks and activities when it registered the disputed domain names and launched a website mirroring the Complainant’s for the purpose of phishing. The Complainant refers to Crédit Industriel et Commercial S.A., Banque Fédérative du Crédit Mutuel v. Michel Dupont, WIPO Case No. D2009-1498. In the context of finding bad faith in relation to such a website, the panel noted that “Phishing is the criminally fraudulent process of attempting to acquire sensitive information such as usernames, passwords and credit card details by masquerading as a trustworthy entity in an electronic communication. Phishing is typically carried out by email or instant messaging, and it often directs users to enter personal or sensitive details on a ‘fake’ website whose look and feel is almost identical to the legitimate website of a company with which the potential ‘target’ users may wish to do business. Recent phishing attempts have targeted the customers of banks and online payment services.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These three elements are discussed as follows, immediately following discussion of a procedural issue regarding the proper name of the Respondent. The Panel notes that it has confined the following discussion to the issues relating to the second-level disputed domain name (<eurfgl.com>), as the result regarding this domain will, as a practical result, necessarily affect the third-level disputed domain name.
A. Name of the Respondent
Under the Rules, the Respondent “means the holder of a domain-name registration against which a complaint is initiated.” The Complaint was filed against “Khan Nguyen”. However, the Registrar, in its verification response, indicated that the name of the Respondent is “Khanh Nguyen”. On its face therefore, the name of the Respondent identified in the Complaint is slightly different to the name of the named Respondent confirmed by the Registrar.
Despite this difference however, the Panel considers that the Complaint was sufficiently filed against the registrant of record. The contact details confirmed by the Registrar are in all other respects identical to those identified by the Complainant. The slight difference in the spelling of the Respondent’s name between the Complaint and that identified by the Registrar is trivial. There is no doubt that the Complaint proceeds against the Respondent as confirmed by the Registrar.
B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. While the Complainant has not provided direct evidence (such as a copy of a trademark certificate) evidencing its registered rights, it has otherwise provided summary details, including registration numbers, of its marks. Its EFG marks have also been recognized in previous decisions under the Policy: EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036. In addition, the Complainant’s rights have not been contested by the Respondent. In these circumstances, the Panel considers that the Complainant’s has sufficiently established that it “has rights” in its EFG mark.
The issue is then whether the disputed domain name is confusingly similar to the Complainant’s EFG mark (it is self-evidently not identical). The threshold test for determining confusing similarity is described in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) as involving:
a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms…typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.
Applying this test, and considering all the evidence, the Panel does not consider that the disputed domain name is confusingly similar to the Complainant’s EFG mark. (While the Complainant has rights in other marks, the Complainant appears to rely on only its EFG mark to establish confusing similarity.)
The Complainant’s primary argument that there is confusing similarity is that the sequence of letters “E”, “F” and “G” will lead any user to make a connection with the Complainant. This argument is weak. The Complainant’s mark is not reproduced in the disputed domain name. While the letters comprising the Complainant’s mark appear in the disputed domain name, they are interspersed with other letters, such that the Complainant’s mark is not distinguishable as such.
There are many examples of previous cases, decided under the Policy, where minor changes to the letters comprising a mark (including the order in which those letters appear, or by substituting letters) have nevertheless being found to establish confusing similarity: see e.g., Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707; CareerBuilder, LLC v. Azra Khan, WIPO Case No. D2003-0493; The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145; Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323; Hobsons, Inc. v. Peter Carrington a/k/a/ Party Night Inc., WIPO Case No. D2003-0317; Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362. In these cases, the various complainants’ marks remained apparent in the disputed domain name.
In this case however, the differences are more than minor. The disputed domain name is not phonetically similar to the Complainant’s mark. The level of visual similarity, on a side by side comparison, is also limited. Neither the Complainant’s mark, nor that portion of the disputed domain names which the Complainant appears to consider relevant to its mark (“eurfgl”), have any inherent meaning. The Complainant’s EFG mark, as a string of three letters, could have a number of potential associations. Neither is the disputed domain name similar to the Complainant’s mark in overall impression. In these circumstances, the Panel does not consider that the Complainant’s mark is recognizable as such within the disputed domain name.
Although the Complainant has provided evidence of what it says is an example of actual confusion, it is not clear that this example relates to confusion regarding the Complainant’s EFG mark. A more plausible explanation is that the confusion relates to the apparently fraudulent nature of the Respondent’s website.
It is apparent that the disputed domain name incorporates an abbreviated version of the Complainant’s name (“eurfgl”, which may perhaps be an acronym for “European Financial Group Luxembourg”). But the Complainant provided no evidence of having trademark rights in EURFGL. It is also not self-evident that this element of the disputed domain name is, in fact, such an abbreviation. The Panel has inferred it from the evidence in this case. There was no evidence in this case that this abbreviation (EURFGL) is similar to a mark in which the Complainant has rights, such that an Internet user would be relevantly confused as to that association.1
In these circumstances, the Panel finds that the Complainant has not proven that the disputed domain name is confusingly similar to a mark in which it has rights.
C. Rights or Legitimate Interests; Registered and Used in Bad Faith
To succeed in this proceeding, the Complainant must demonstrate all three elements set out in paragraph 4(a)(i) – (iii) of the Policy. Having failed to establish the first element, it is not necessary for the Panel to address in detail the other two. But had the Complainant demonstrated confusing similarity with a mark in which it has rights, the evidence outlined above would suggest to the Panel that the Respondent lacks rights or legitimate interests in the disputed domain name, and registered and used it in bad faith.
Nevertheless, while the Respondent’s activity might reasonably be viewed as deceptive, it is not a practice that is within the scope of the Policy to resolve. For this reason, this decision should not be read as sanctioning the Respondent’s conduct in any general sense. Neither do the Panel’s findings in this proceeding affect any right the Complainant may have to submit the dispute to a court of competent jurisdiction.
For the foregoing reasons, the Complaint is denied.
James A. Barker
Dated: February 27, 2012
1 The Panel considered issuing a Panel Order in this case, but decided against it. The Complainant is professionally represented, is a large corporate entity, and has had as much time as it has wanted to prepare its Complaint. The Complainant has filed evidence of a large number of marks, and none of them correspond to the relevant acronym. If the Complainant had any such rights, it has had ample opportunity to provide them. The Panel thinks it would inconsistent with the expeditious nature of the Policy to provide further time for the Complainant to file any additional evidence.