WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aareal Bank AG v. Protection of Private Person / Kwin Amuch

Case No. D2018-2006

1. The Parties

The Complainant is Aareal Bank AG of Wiesbaden, Germany, represented by Squire Patton Boggs (US) LLP, Germany.

The Respondent is Protection of Private Person of Moscow, Russian Federation / Kwin Amuch of Bunbury, Western Australia, Australia.

2. The Domain Name and Registrar

The disputed domain name <aarealbnk.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2018. On September 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2018, 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 September 7, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email communication to the Parties in English and Russian in regard to the language of the proceedings. The Complainant filed an amendment to the Complaint on September 17, 2018 and requested English to be the language of the proceedings. The Respondent did not reply on the language of the proceedings.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2018

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on October 19, 2018. 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 an international specialist property bank incorporated in Germany. The Complainant is the owner of trademark registrations across various jurisdictions including:

- the European Union trade mark registration for AAREAL, goods and services in class 36, registered on August 13, 2004 (No. 002528016);

- the International registration for AAREAL, goods and services in class 36, registered on March 21, 2002 under No. 781005.

The Complainant maintains an Internet presence through its primary website at “www.aareal-bank.com”.

The disputed domain name was registered on May 11, 2018. The disputed domain name resolves to a website which mirrors the Complainant’s website at “www.aareal-bank.com”.

5. Parties’ Contentions

A. Complainant

Firstly, the Complainant contends that the disputed domain name is confusingly similar to the AAREAL mark. In the Complainant’s opinion, the addition of letters “bnk” does not distinguish the disputed domain name from its registered mark.

Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant alleges that the Respondent is not commonly known by the disputed domain name. The Complainant also claims that the Respondent does not use the disputed domain name in connection with bona fide offering of goods or services as the Respondent aims at obtaining sensitive consumer information. According to the Complainant, one of its clients informed it that he coincidently used the disputed domain name and thought he was using the original one.

Thirdly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent appears to have knowledge about its marks which shows that the disputed domain name was intentionally registered to benefit unfairly from the goodwill of the Complainant’s mark. The Complainant claims that the Respondent’s webpage, using the disputed domain name, copies its webpage up to a small aspect in its entirety and the only difference is the contact information. This, in the Complainant’s opinion, means that the Respondent wants the customers to think that his website, which is used as a pishing site, is original.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Complaint was filed in English. The Complainant requests English to be the language of the administrative proceeding. The Complainant contends that the Respondent is apparently located in Western Australia which makes it probable that the Respondent can communicate in English. The Panel further notes that the content of the website at the disputed domain name is in English, which supports the inference that the Respondent has knowledge of English.

Taking all the circumstances into account, including the Respondent’s failure to comment on this issue, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules.

6.2. Merits of the Case

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:

(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 the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The requested remedy may only be granted if the above criteria are met.

A. Identical or Confusingly Similar

The disputed domain name <aarealbnk.com> contains the AAREAL mark in its entirety, with an addition of “bnk”. These letters do not serve to render the disputed domain name dissimilar to the Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the AAREAL mark and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also WIPO Overview 3.0, section 2.1 and cases cited therein).

The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) there is no evidence that the Respondent has been commonly known by the disputed domain name; (b) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; (c) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. In particular, a use of a domain name, including a registered mark, for the purpose of creating a website that uses this mark and copyrighted materials of the mark’s owner to impersonate that mark owner cannot be qualified as a bona fide offering of goods or services.

Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.

Firstly, the AAREAL mark was registered over 10 years before the disputed domain name. The website linked to the disputed domain name mirrors the Complainant’s website. In the light of these circumstances, the Panel concludes that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name.

Secondly, the Respondent has also used the disputed domain name in bad faith which is evidenced by the screenshots of the Respondent’s website described above. This is clearly an attempt to mislead Internet users by impersonating the Complainant, presumably for illicit financial gain. Moreover, the Internet users can associate letters “bnk” in the context of the Complainant’s mark as standing for “bank” which can even increase the risk of confusion. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, or endorsement of or affiliation with the website.

In the light of above, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied.

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 disputed domain name, <aarealbnk.com> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist
Date: November 1, 2018