WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Raiffeisen Schweiz Genossenschaft v. Fundacion Private Whois
Case No. D2012-1579
1. The Parties
Complainant is Raiffeisen Schweiz Genossenschaft of St. Gallen, Switzerland, represented by Bratschi Wiederkehr & Buob, Switzerland.
Respondent is Fundacion Private Whois of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <raiffeisench.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed (in German) with the WIPO Arbitration and Mediation Center (the ”Center”) on August 6, 2012. On August 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and confirming that the language of Registration Agreement was English.
The Center sent an email communication to Complainant on August 8, 2012, providing the language of the registration agreement being English disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint, by either 1) giving satisfactory evidence of an agreement between Complainant and Respondent to the effect that the proceedings should be in German; or 2) submit the Complaint translated into English; or 3) submit a request for German to be the language of the administrative proceedings. Such request shall include arguments and supporting material (to the extent not already provided in the Complaint) as to why the proceedings should be conducted in German.
Complainant submitted a request to the Center on August 17, 2012, for German to be the language of the administrative proceedings.
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 Respondent of the Complaint, and the proceedings commenced on August 23, 2012, in dual language, English and German. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 12, 2012.
On October 12, 2012, due to the file size of the Annexes to the Complaint, the Center noted that the e-mail communication (including the Notification of Complaint, the Complaint and Annexes) had not been successfully delivered to Respondent.
Accordingly, in abundance of caution, the Center re-notified the Complaint, including further e-mail addresses for Respond’s administrative and technical contact that had come to the Center’s attention.
The new date for Response was November 1, 2012. Respondent did not submit any response. The Center notified Respondent’s default on November 2, 2012.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on November 6, 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
Complainant is a Swiss banking corporation with legal domicile in St. Gallen, Switzerland.
Complainant has submitted evidence that it is the registered owner of the following national (Swiss) trademarks relating to the designation “Raiffeisen”:
- Word mark RAIFFEISEN, Swiss Federal Institute of Intellectual Property, Registration Number: P-411923, Registration Date: October 25, 1993; Status: Active;
- Word/design mark RAIFFEISEN, Swiss Federal Institute of Intellectual Property, Registration Number: 543754, Registration Date: October 17, 2005; Status: Active.
Complainant, furthermore, has submitted evidence of its ownership in the domain name <raiffeisen.ch>, registered already since December 31, 1995 and redirecting to a website at “www.raiffeisen.ch” under which Complainant promotes its business and banking services.
The disputed domain name <raiffeisench.com> was registered on April 1, 2012; it directs to a website at “www.raiffeisench.com” which is a typical PPC website redirecting in turn to commercially active websites of numerous third parties.
Complainant requests the disputed domain name to be transferred to Complainant.
5. Parties’ Contentions
Complainant claims to be the third largest banking company in Switzerland and the market leader in the retail business.
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s RAIFFEISEN trademarks because (1) the disputed domain name uses the almost exact wording as Complainant’s RAIFFEISEN trademarks with the mere addition of the components “ch” and “.com” which are not capable of generating distinctiveness, especially given the fact that Complainant is known also outside of Switzerland and among its foreign customers and (2) Respondent is making use of the disputed domain name in a way very similar to Complainant’s RAIFFEISEN trademarks in terms of visual appearance as well as in relation to the kind of services protected by Complainant’s trademarks and being promoted by Respondent.
Complainant further suggests that Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) Complainant has registered its domain name <raiffeisen.ch> many years before the registration of the disputed domain name took place and there are no reasons apparent to Complainant why Respondent should have legitimate rights in an almost exact domain name, (2) Respondent is using the disputed domain name on the Internet in a way so similar to how Complainant is using its domain name <raiffeisen.ch> that it becomes obvious that Respondent is not making use of the disputed domain name in a bona fide manner and (3) Respondent apparently wishes to generate “hits” on the website at “www.raiffeisench.com”, thus is using the domain name for a non-legitimate commercial purpose in order to attract and confuse Internet users.
Finally, Complainant claims that the disputed domain name was registered and is being used in bad faith, because Respondent apparently attempted to attract for commercial gain Internet users on its website and further onto other online addresses, which in the eyes of Complainant is sufficient evidence of a registration and use of the disputed domain name by Respondent in bad faith according to paragraph 4(b)(i)–(iv) of the Policy.
Complainant has requested that German be the language of proceedings because (1) the language of the Registration Agreement of Complainant’s domain name <raiffeisen.ch> registered in 1995 was German, (2) Complainant is exclusively making use of the German language in its everyday business affairs, e.g. on its website at “www.raiffeisen.ch” or when communicating with its legal representative and (3) Respondent is hiding its true identity behind a privacy shield but still must be a person being aware of the German language since the website at “www.raiffeisench.com” is apparently programmed in German.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That 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.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
Language of Proceedings
For the following reasons, the Panel decides that English be the language of proceedings:
The Registrar has confirmed on August 8, 2012 that the language of the Registration Agreement of the disputed domain name is English. As a general rule, paragraph 11 of the Rules provides that the language of proceedings is the language of the Registration Agreement, unless otherwise agreed by the parties or subject to the Panel’s authority. Paragraph 11 of the Rules obviously intends to ensure that any respondent is given a fair and just opportunity to defend himself/herself in UDRP proceedings in a language which he/she determined himself/ herself when registering the disputed domain name. In the case at hand, the Panel does not see sufficient reasons to find against this principle set forth by paragraph 11 of the Rules. The language of the Registration Agreement of Complainant’s own domain name <raiffeisen.ch> is certainly irrelevant in that respect as it is totally within Complainant’s control what domain names in what language to register; very much the same applies to the preferred language in which Complainant communicates, e.g. with its legal representative because this again is exclusively determined by Complainant. On the contrary, Complainant has not provided any evidence of e.g. (pre-procedural) German correspondence with Respondent or any other person acting on Respondent’s behalf. The fact that the PPC website at “www.raiffeisench.com“ is set up in German (at least from the point of view of Internet users from German speaking countries such as Switzerland) might be interpreted in a way that Respondent is not totally unaware of the German language; however, this fact alone has not enough weight to deprive Respondent in the case at hand from its basic right that an UDRP proceeding be led against it in the language that governs the Registration Agreement of the disputed domain name. Therefore, the Panel has decided to render this decision in English.
Nevertheless, at the same time the Panel has also decided to accept the Complaint in the German language and will not request Complainant to submit an English translation thereof. Respondent has been duly notified by the Center on October 12, 2012, both in the English as well as in the German language that an UDRP Complaint has been filed against Respondent in regard of the disputed domain name <raiffeisench.com> and that Respondent had 20 calendar days to submit a Response in case it wished to defend itself against Complainant’s allegation set forth in the Complaint. Respondent obviously did not reply to the Center whatsoever and did not indicate in any way that it wanted to object (e.g. by informing the Center that Respondent could not properly respond unless it was provided with a Complaint in the English language). As pointed out earlier, Paragraph 11 of the Rules intends to ensure that any respondent is given a fair and just opportunity to defend himself/herself in a language which he/she determined himself/ herself when registering the disputed domain name. A respondent, however, who has clearly demonstrated that he/she does not wish to do so, has deliberately given up this privilege. Therefore, in the case at hand it would have constituted mere formalism and thus a superficial and unfair disadvantage to Complainant to request the Complaint to be translated from German into English.
Having said so, the Panel now renders the following decision:
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <raiffeisench.com> is confusingly similar to the RAIFFEISEN trademarks in which Complainant has shown to have rights.
The disputed domain name incorporates the RAIFFEISEN trademark in its entirety. Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the geographical term “ch” as a country code for “Switzerland” is not at all capable to dispel the confusing similarity arising from the incorporation of Complainant’s RAIFFEISEN trademark into the disputed domain name.
Therefore, the first element under the Policy as set forth in paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate noncommercial or fair use without intent for commercial gain. It must be derived from Complainant’s allegations that Respondent obviously has not been authorized to use Complainant’s RAIFFEISEN trademarks neither as a domain name nor on Respondent’s website or in any other way. Respondent, however, is using the disputed domain name to resolve to a typical PPC website, redirecting in turn to commercially active websites of third parties with the obvious intent to generate pay-per-click commissions. Therefore, in the absence of any other reasonable explanations for Respondent’s need to rely on the disputed domain name, such use of the disputed domain name may neither be deemed legitimate nor noncommercial or fair. Respondent did not deny Complainant’s assertions in any way, nor did it come forward with any arguments that might have thrown a different light on Respondent’s possible rights or legitimate interests in the disputed domain name. Accordingly, Respondent, who did not reply to the Complaint, duly notified by the Center on October 12, 2012, did not overcome the shifted burden of production of proper allegations or evidence demonstrating to the contrary (see “WIPO Overview 2.0”, paragraph 2.1).
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the direction of the disputed domain name, which is confusingly similar to Complainant’s RAIFFEISEN trademarks, to a typical PPC website is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s RAIFFEISEN trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website or a product thereon. Such circumstances are evidence of the registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, the Panel has also taken into account that Respondent d/b/a “Fundacion Private Whois” has been confirmed to be the factual registrant of the disputed domain name without any so-called “underlying registrant” being disclosed after notification of the Complaint to the Registrar. It is a consensus view among panelists that, although the use of a privacy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith (see “WIPO Overview 2.0”, paragraph 3.9). In the case at hand, the Panel takes the view that Respondent is either hiding its true identity for no justifiable reasons behind a privacy service or Respondent only pretends from its name to offer a privacy service while registering domain names on its own behalf and in its own name. Both scenarios, however, are indicators that Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Panel finds that also the third element under the Policy as set forth in paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <raiffeisench.com> be transferred to Complainant.
Stephanie G. Hartung
Dated: November 20, 2012