WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saxo Bank A/S v. Barak Hirchson, Searchbbm
Case No. D2015-0240
1. The Parties
The Complainant is Saxo Bank A/S of Hellerup, the Kingdom of Denmark, represented by Crowell & Moring, LLP, the Kingdom of Belgium.
The Respondent is Barak Hirchson, Searchbbm of Tel Aviv, the State of Israel ("Israel").
2. The Domain Name and Registrar
The disputed domain name <saxobank.trade> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 16, 2015. On February 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 16, 2015, 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 February 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 17, 2015.
The Center appointed Ms. Zalomiy as the sole panelist in this matter on March 26, 2015. 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 Danish investment bank. The Complainant owns several trademark registrations in the SAXO, SAXOBANK.COM and SAXOBANK trademarks, such as international trademark registration in the mark SAXOBANK no. 767349 dated July 20, 2001 for use in connection with bank activities; financial activities; insurance activities; monetary and exchange activities.
The Respondent registered the Domain Name on September 9, 2014. The Domain Name resolves to a parking website displaying advertising links.
5. Parties' Contentions
A. Complainant
The Complainant claims it is an entity, which is active in the business of banking and finance. The Complainant alleges that it owns several trademark registrations in the marks SAXO, SAXOBANK.COM and SAXOBANK. The Complainant claims that its SAXOBANK trademark is well-known all over the world.
The Complainant claims that the Domain Name incorporates its SAXOBANK in its entirety. The Complainant argues that the addition of generic top-level domain ("gTLD") can be disregarded when comparing the similarities between a domain name and a trademark, so the ".trade" gTLD does not prevent a finding of confusing similarity under the UDRP. Instead, the Complainant claims that the addition of the ".trade" gTLD makes the Domain Name more confusingly similar to its trademark because Internet users could easily link the Domain Name to the Complainant's business.
The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name because the Respondent is not commonly known by the Domain Name. The Complainant claims that the Respondent has not acquired trademark or service mark rights in the Domain Name and his use and registration of the Domain Name was not authorized by the Complainant. The Complainant alleges that the Domain Name resolves to a parking page containing sponsored links and that such use does not constitute a legitimate or fair use of the Domain Name.
The Complainant alleges that at the time when the Respondent registered the Domain Name, it must have known about the Complainant and its trademarks because the Complainant's trademarks are well-known. In the Complainant's view, the Respondent registered the Domain Name under the ".trade" gTLD because trading is one of the Complainant's main businesses, for which it is well-known. Furthermore, the Complainant claims that it registered trademarks in Israel, the country of the Respondent's residence and a simple trademark search at the time of the Domain Name registration would have revealed the Complainant's presence and trademarks. The Complainant argues that knowledge of a corresponding trademark at the Domain Name registration suggests bad faith.
The Complainant argues that the Respondent is using the Domain Name in bad faith because by registering the Domain Name the Respondent has prevented the Complainant from reflecting its trademark in a corresponding domain name. The Complainant claims that the Domain Name resolves to a parking page which contains sponsored links. According to the Complainant, under the circumstances, the passive holding of the Domain Name amounts to bad faith registration and use because it cannot imagine any plausible future active use of the Domain Name by the Respondent that would be legitimate and not infringing on the Complainant's well-known mark.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In this UDRP proceeding, the Complainant must prove, by a preponderance of the evidence1 each of the following UDRP elements2 :
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be "identical or confusingly similar" to a trademark, in which a complainant has rights. The Complainant proved its rights in the SAXOBANK trademark by submitting copies of trademark registrations of the SAXOBANK mark.
The Domain Name, which consists of the SAXOBANK mark and the ".trade" gTLD, is confusingly similar to the Complainant's mark because it incorporates the Complainant's mark in its entirety. It is well-established that the addition of a gTLD as suffix "would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration)" 3 . Here, the Domain Name includes the new gTLD ".trade", which also does not dissipate the similarity between the Domain Name and the SAXOBANK trademark.
Therefore, the Panel finds that the Complainant has satisfied the first UDRP element by proving that the Domain Name is confusingly similar to the SAXOBANK trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
To satisfy the second UDRP element, the Complainant is "required to make out a prima facie case that the respondent rights or legitimate interests"4 in the Domain Name.5
The Panel finds that the Complainant has made out a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name. First, the Respondent is not commonly known by the Domain Name (See Crocs Inc. v, Alex Xie, WIPO Case No. D2011-1500, finding that the respondent did not have rights in a domain name where there was no evidence submitted to show that the respondent had been commonly known by the domain name). Here, the evidence on record shows that the Respondent is not commonly known by the Domain Name. According to the WhoIs information, the Respondent's name is Barack Hirchson and his organization's name is "searchbbm". Second, the Complainant alleges and the Respondent does not dispute that the Complainant has no trademark or service mark rights in the Domain Name. Third, the Complainant neither authorized, nor licensed the Respondent to use the SAXOBANK trademark or to register the Domain Name incorporating the SaxoBank trademark. Finally, the Domain Name is used to link to a parking page containing sponsored links, which appear to be based on the SaxoBank trademark's value. Such use is considered an unfair use resulting in misleading diversion6 and does not confer rights or legitimate interests arising from a "bona fide offering of goods or services".
There is a consensus view amongst UDRP panelists that "[o]nce [a] prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name".7 If the respondent fails to offer such appropriate allegations or evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.8 By failing to respond to the Complainant's contentions, the Respondent failed to satisfy its burden of production. Therefore, the Panel finds that the Complainant has satisfied the second UDRP element.
C. Registered and Used in Bad Faith
To satisfy the third UDRP element, the Complainant must prove that the Domain Name was registered and is being used in bad faith.9
The Complainant claims that at the time of the Domain Name registration, the Respondent knew about the Complainant and its trademarks because (i) the Complainant's trademarks are well-known; (ii) the Complainant registered its trademarks in Israel, the country of the Respondent's residence; (iii) the Domain Name was registered under the ".trade" gTLD and trading is one of the Complainant's businesses; and (iv) a simple Internet search would have revealed information about the Complainant and its trademarks. The evidence in this case shows that a Google search for "saxo bank" returns 4,920,000.00 results. All first Google search page results relate to the Complainant. Because sites listed on the first Google search results page generate 92% of all traffic from an average search10 , the presented evidence shows that the Complainant's mark is well-known. It is, therefore, likely that the Respondent knew about the Complainant's SAXOBANK trademark at the time of registration. Knowledge of a corresponding mark during registration of the domain name suggests bad faith. (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).
The Panel also finds that the Respondent is using the Domain Name in bad faith because he uses the Domain Name to resolve to a pay-per-click website and he probably derives gain from such use. Such behavior constitutes bad faith registration and use under paragraph 4(b)(iv) of the UDRP whereby the Domain Name is used for intentionally attempting to attract, for commercial gain, Internet users to a website, by creating likelihood of confusion with the Complainant's SAXOBANK trademark. It is well-established that "It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or "commercial gain" was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant."11
In addition, it is difficult to imagine any plausible future active use of the Domain Name by the Respondent that would be legitimate and not infringing on the Complainant's well-known mark. Therefore, the Respondent is using the Domain Name in bad faith.
Therefore, the Panel finds that the Complainant has satisfied the third UDRP element.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <saxobank.trade> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: April 8, 2015
1 Paragraph 4.7, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
2 Paragraph 4(a) of the UDRP.
3 Id.
4 Paragraph 2.1, WIPO Overview 2.0.
5 Paragraph 4(a)(ii) of the UDRP.
6 Paragraph 2.6, WIPO Overview 2.0.
7 Paragraph 2.1, WIPO Overview 2.0.
8 Id.
9 Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
10 https://chitika.com/google-positioning-value