WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wirecard AG v. Wang Degui
Case No. D2013-0391
1. The Parties
The Complainant is Wirecard AG of Aschheim, Germany, represented by Wragge & Co., Germany.
The Respondent is Wang Degui of Nanjiang, China.
2. The Domain Name and Registrar
The disputed domain name <wirecard.mobi> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2013. On February 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2013, 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 March 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2013.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on April 11, 2013. 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 was founded in 1999 in Munich, Germany, and since then is known under its commercial name “Wirecard AG” and the trademark WIRECARD.
The Complainant is nowadays one of the leading providers of payment systems with integrates risk management services, including banking and financing services as well as all corresponding technical services.
The Complainant’s website was registered by the Complainant in 1998 and is located at “www.wirecard.com”. The Complainant also owns more than ninety (90) other domain names encompassing the word “wirecard”.
The disputed domain name was created on June 20, 2012.
The Panel accessed the disputed domain name on April 19, 2013, but the requested URL could not be retrieved.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The Complainant owns several WIRECARD trademarks registered in Germany, the United States of America and the European Community. The disputed domain name is identical with the marks owned by the Complainant mentioned above. The trademark WIRECARD is entirely encompassed on the disputed domain name <wirecard.mobi>. The only difference between the disputed domain name and the trademark WIRECARD is the adoption of the generic Top-Level Domain (gTLD) “.mobi”, which is not considered to be enough to disqualify the accomplishment of the first requirement of the paragraph 4(a) of the Policy;
(ii) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not known to the Complainant. The Complainant fails to see any legitimate reasons why the Respondent should have a right or a good and valid cause to choose the Complainant’s brand and company name “wirecard” as the disputed domain name;
(iii) The Respondent registered and is using the disputed domain name in bad faith. The Respondent’s intention was to hijack the disputed domain name in order to prevent the Complainant to register it, or to use it for illegitimate activities. It cannot be excluded that the Respondent currently uses the email function of the disputed domain name. The Respondent could mislead recipients of his emails by causing the impression that it was sent by the Complainant. Due to the fame and distinctiveness of the WIRECARD trademark, the registration of the disputed domain name qualifies as being made in bad faith per se.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Annex 7 to the Complaint shows registrations of WIRECARD trademarks in several countries since at least 2000.
The trademark WIRECARD is wholly encompassed within the disputed domain name.
Finally, it is already well established that the addition of a gTLD extension such as “.mobi” is irrelevant when determining whether a domain name is confusingly similar to a registered trademark.
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and there is no indication that the Respondent is commonly known by the disputed domain name. Further, the present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location
When the disputed domain name was registered in 2012, the trademark WIRECARD was already tightly connected to the Complainant’s services, which had been offered for many years online on very similar strings at the other major gTLDs, such as <wirecard.com>, <wirecard.net> and <wirecard.org>, as well under ccTLDs such as <wirecard.de> and <wirecard.it>.
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent - at the time of the registration of the disputed domain name - could have not been aware of the Complainant’s trademark and financial services, and that the use of the expression “wirecard” was a mere coincidence.
The Respondent had at least two opportunities to justify why he had chosen the peculiar term “wirecard” to register as a domain name: first, when initially notified by the Complainant through the address informed in the domain name registration; and later, during the present proceedings. However, the Respondent’s address was insufficiently/incorrectly informed, and he apparently preferred to keep silent and non-collaborative when electronically notified by the Complainant and the Center.
It is true that at least presently the disputed domain name does not resolve to any active website. However, UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2 at https://www.wipo.int/amc/en/domains/search/overview2.0/index.html#32; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005).
The passive and non-collaborative posture of the Respondent, (a) not using the disputed domain name, (b) not indicating any intention to use it, and (c) not at least providing justifications for the use of a third party trademark that is registered in several countries, certainly can not be used in benefit of the Respondent in the Panel’s opinion.
Such circumstances, associated with (d) the lack of any plausible interpretation for the adoption of the expression “wirecard” by the Respondent, are enough to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the Complainant has also satisfied the third element 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 <wirecard.mobi> be transferred to the Complainant.
Dated: May 6, 2013