WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nomura International Plc and Nomura Holdings, Inc. v. Whois Privacy Protection Service, Inc. / PUK SERVICES
Case No. D2015-2036
1. The Parties
The Complainants are Nomura International Plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) and Nomura Holdings, Inc. of Tokyo, Japan, represented by Wildbore & Gibbons LLP, United Kingdom.
The Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America (“United States”) / PUK SERVICES of Kuala Lumpur, Selangor, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <nomuralabuan.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2015. On November 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2015, the Registrar 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 November 16, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 19, 2015.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2015.
The Center appointed Andrew F. Christie as the sole panelist in this matter on December 21, 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 Complainants are both members of the Nomura group of companies, a global financial services group originating in Japan in 1925, with offices throughout Asia, North America and Europe. Nomura Holdings, Inc. is the group’s Japanese financial holding company and Nomura International Plc is the group’s United Kingdom-based subsidiary. Both companies are in the business of the provision of financial services including banking, brokerage, financing, securities, investment management and asset management.
Each of the Complainants owns many trademark registrations for the trademark NOMURA (word form) and the trademark NOMURA (stylized form) – together, “the NOMURA trademark” – in various countries, the earliest of which dates from June 11, 1998. Nomura International Plc also owns various domain names incorporating the NOMURA trademark.
The disputed domain name was registered on October 31, 2014. The Complainants have provided evidence that the disputed domain name has been used to resolve to a website at “www.nomuralabuan.com”, which purports to be the website of “Nomura Investment Bank Labuan”, “owned and run by Nomura Holdings”. The trademark NOMURA (stylized form) is shown in the top left hand corner of the homepage in the same stylized manner in which it is used and has been registered by the Complainants. The disputed domain name currently resolves to a webpage stating “Upgrade in progress, Please check back later”.
5. Parties’ Contentions
The Complainants contend that the disputed domain name is confusingly similar to a trademark in which they have rights because it contains their NOMURA trademark in its entirety and adds to it the word “Labuan”. Labuan is a geographical reference to a federal district of Malaysia, off the coast of Borneo in East Malaysia, where the Complainants operated a bank from July 2010 until October 2015. The addition of the word “Labuan” does not provide the disputed domain name with its own distinctive character; rather, the disputed domain name is likely to be perceived as being associated with the Complainants and relating to their bank in Labuan, Malaysia.
The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) they have not given any permission for their NOMURA trademark to be used in the disputed domain name; (ii) the Respondent has not used the disputed domain name in connection with a bona fide offering of any goods or services; and (iii) the Respondent has used the disputed domain name to set up a phishing website in order to mislead customers or potential customers of the Complainants and of the Nomura group.
The Complainants contend that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent is located in Malaysia and is likely to have been aware of the Complainants’ bank in Labuan by virtue of publicity for it; (ii) the Respondent’s sole use of the disputed domain name has been in relation to the website at “www.nomuralabuan.com” which purports to be the website of “Nomura Investment Bank Labuan”, “owned and run by Nomura Holdings”; however, the website is not owned or operated by either of the Complainants or by any of the other companies within the Nomura group; (iii) in October 2015, the Complainant’s security provider reported that the disputed domain name points to an IP address which has a known reputation for being used to deliver malware and serve fraudulent websites in order to facilitate phishing, and that the likely purpose of the website to which the disputed domain name resolves is to harvest banking credentials that can subsequently be used in fraudulent transactions or sold via black market websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainants’ registered trademark NOMURA (word form), followed by the word “labuan” and the generic Top-Level Domain (“gTLD”) identifier “.com”. The Panel finds the addition of the descriptive word “labuan”, which denotes a district of Malaysia, does not lessen the inevitable confusion of the disputed domain name with the Complainants’ trademark. This is especially so given that the Complainants operated a bank in that district from July 2010 until October 2015. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights.
B. Rights or Legitimate Interests
The Respondent has not been authorized by the Complainants to use their NOMURA trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainants shows that the disputed domain name was used to resolve to a website purporting to be the website of “Nomura Investment Bank Labuan”, “owned and run by Nomura Holdings” when, in fact, it had no connection with the Complainants. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered many years after the Complainants first registered their NOMURA trademark. The evidence on the record provided by the Complainants with respect to the use of their trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent knew of the Complainants’ trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainants with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s trademark as to the affiliation of that website. For all these reasons, the Panel is satisfied that the disputed domain name has been registered and is being used in bad faith.
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 <nomuralabuan.com> be transferred to the Nomura International Plc (this being the co-Complainant to whom the Complainants requested transfer of the disputed domain name).
Andrew F. Christie
Date: January 3, 2016