WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ulster Bank Limited v. Ulster Clickasi Albert West

Case No. D2013-1770

1. The Parties

The Complainant is Ulster Bank Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Melbourne IT Digital Brand Services, Sweden.

The Respondent is Ulster Clickasi Albert West of Newcastle, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <ulsterclicks.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2013. On October 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 24, 2013.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2013.

The Center appointed Ian Blackshaw as the sole panelist in this matter on November 19, 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 is a company incorporated in Ireland and is the proprietor of the ULSTER BANK trademark, and all other trademarks used in connection with the famous ULSTER BANK brand.

The Complainant was founded in 1836 and became a fully owned subsidiary of the Royal Bank of Scotland in 2000. Across the Republic of Ireland and Northern Ireland, the Complainant employs over 6,000 people and has around 1.9 million personal and business customers through 236 outlets across the Island of Ireland and a business banking presence in every county.

The Complainant offers its financial services under the mark ULSTER BANK and has spent a significant amount of money promoting and developing this mark. The Complainant also owns a portfolio of registered trademarks for the name ULSTER BANK covering the European Union. The Panel has been provided with a list of the registered trademarks on which this Complaint is based.

The Complainant also operates websites such as <ulsterbank.com> (registered in 2001) and <ulsterbank.co.uk> (registered in 1996), evidence of which has been provided to the Panel.

It is the strict policy of the Complainant that all domain names containing the words “Ulster Bank” should be owned by the Complainant. The Panel has been provided with a list of the Complainant’s portfolio of domain names.

The disputed domain name was registered on July 4, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following assertions:

i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The ULSTER BANK mark is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark ULSTER BANK is considered in large parts of the European Union to be significant.

The dominant part of the disputed domain name comprises the name “Ulster”, which is confusingly similar to the registered trademark ULSTER BANK, which, as mentioned above, has been registered by the Complainant as trademarks and domain names in numerous countries all over Europe.

The addition of the suffix “clicks” is irrelevant and will not have any impact on the overall impression of the dominant part of the name, ULSTER BANK. In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, it was stated that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes.

The addition of the generic Top-Level domain (gTLD) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is, therefore, irrelevant to determine the confusing similarity between the trademark and the disputed domain name.

Anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark ULSTER BANK, there is a considerable risk that the public will perceive the disputed domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation between the Respondent and the Complainant.

By using the trademark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the trademark ULSTER BANK, which may result in dilution and other damage for the Complainant’s trademark.

Summarizing this, the Complainant is the owner of the trademark ULSTER BANK. The disputed domain name is clearly confusingly similar to the Complainant’s registered trademark ULSTER BANK. The suffix does not detract from the overall impression and the disputed domain name must, therefore, be considered to be confusingly similar to the Complainant’s trademark.

ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. According to the WhoIs, the registrant is a “Franchise Ulster”. Considering that the website connected to the disputed domain name has been used for fraudulent purposes, it seems very likely that this is also a false alias. Consequently, the Respondent may not claim any rights established by common usage.

It is also clear, that no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark ULSTER BANK. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 the panel stated that, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.”

The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. Nor is there a disclaimer on the website describing the non-existent relationship with the Complainant. This was stated by the panel as a factor in the finding of non legitimate interest with the Respondent in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.

The Respondent registered the disputed domain name on July 4, 2013. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of that domain name. It is obvious that the Respondent knew of the Complainant’s legal rights in the name “Ulster Bank” at the time of the registration and it is the fame of the trademark that has motivated the Respondent to register the disputed domain name. That is, the Respondent cannot claim to have been using the name ULSTER BANK, without being aware of the Complainant’s trademark rights to it. This, among other facts, proves that the Respondent’s interests cannot have been legitimate. In Deutsche 12 Bank Aktiengesellschaft v New York TV Tickets Inc., WIPO Case No. D2001-1314, it was established that any use of such a trademark in a domain name would violate the rights of the trademark owner. The panel stated that “given the notoriety of the Complainant's Deutsche Bank Mark, any use which the Respondent would make of any domain name, as here, that incorporated the Complainant's Deutsche Bank Mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the Complainant has long held in its mark”. In fact, the Respondent has used the disputed domain name to pass itself off as the Complainant in order to defraud the Complainant’s customers through a fraudulent website identical to that of the Complainant.

The Respondent used the disputed domain name to “phish” for financial information in an attempt to defraud the Complainant’s customers. The Respondent’s attempt to pass itself off as the Complainant and “phish” for customers’ financial information is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, see Vivendi Universal Games v. Ballard, FA 146621 stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”); see also Capital One Fin. Corp. v. Howel, FA 289304 (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).

Further, while the Respondent’s name is Ulster Clickasi, this is most likely made up. In Ulster Bank Limited v. Franchise Ulster, WIPO Case No. D2013-0275, concerning the domain name <ulsterfranchise.com>, the Panel stated that “While the Domain Name is registered to an entity known as “Franchise Ulster”, it is very likely that the name is simply a fake name, designed to give some implied legitimacy to the registrant.” The same reasoning must apply in this case as well.

Referring to the above, the Respondent has no rights or legitimate interest in respect of the disputed domain name.

iii. The disputed domain name was registered and is being used in bad faith

The trademark ULSTER BANK in respect of financial services belonging to the Complainant has the status of a reputed trademark with a substantial and widespread reputation in the finance industry. The considerable value and goodwill of the mark ULSTER BANK is, most likely, a large contribution to this and also what made the Respondent register the disputed domain name.

The Complainant first tried to contact the Respondent on September 2, 2013 through a cease and desist letter, sent by email, a copy of which has been provided to the Panel. The Complainant advised the Respondent that the unauthorized use of the ULSTER BANK trademark within the disputed domain name violated the Complainant’s rights in the said trademark. The Complainant requested a voluntary transfer of the disputed domain name. Despite a reminder sent, no response was received. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process.

It has been mentioned in earlier disputes that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith, see News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.

As stated previously, the Respondent used the disputed domain name to engage in a phishing scam. By utilizing the Complainant’s registered trademark, the Respondent was using the disputed domain name to deceive the Complainant’s customers and manipulate them into divulging sensitive financial information. Thus, Respondent’s use of the disputed domain name constitutes bad faith registration and use. See Juno Online Servs., Inc. v. Iza, FA 245960 (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use). The website is currently not used but it is still “in the hands” of the Respondent and the Complainant will not be able to rest until the disputed domain name is removed entirely.

Even if the website is currently inactive, such passive holding could still constitute an act of bad faith and any realistic use of the disputed domain name by the Respondent would constitute “passing off” and/or trademark infringement. In Koc Holding A.S. v. KEEP B.T., WIPO Case No. D2009-0938 where the domain name resolved to an inactive website, the Panel stated “there is no evidence or suggestion that the Respondent has any intention of using the domain name for any purpose or legitimate activity consistent with good faith use. Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”) states the lack of active use of the domain name does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. The Complainant's well-known registered and unregistered trademark and the impossibility of conceiving a good faith use of the domain name are indicative of bad faith. The Panel infers bad faith use considering the circumstances surrounding registration”. In the current case, surrounding circumstances would definitely be the Respondent’s use of the disputed domain name to a fraudulent site.

To summarize, ULSTER BANK is a famous trademark within the financial industry. It is obvious that the Respondent was aware of the rights the Complainant has in the trademark and the value of the said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the disputed domain name for fraudulent purposes the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is committing a criminal offence and misleadingly diverting consumers for his own commercial gain.

Consequently, by referring to the above, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.

B. Respondent

The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.

6. Discussion and Findings

To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(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 respect of the disputed domain name; and

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

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, the panel must not decide in the complainant’s favor solely based on the respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP decisions that, where the domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name incorporates as a dominant part of it the name “Ulster”, which is confusingly similar to the well-known and widely registered trademark ULSTER BANK. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information for the Complainant and its financial services marketed under its well-known and widely registered trademark ULSTER BANK.

The Panel agrees with the Complainant’s contention that the addition of the suffix “clicks” to the disputed domain name is irrelevant and will not have any effect to avoid confusion, given that the dominant part of the disputed domain name is the word ULSTER. See Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066.

Likewise, the addition of the generic Top-Level domain (gTLD) “.com” to the disputed domain name does not constitute an element in the disputed domain name so as to avoid confusing similarity for trademark purposes. Its use is purely for Internet technical registration purposes. See The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.

In view of all the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known and widely registered trademark ULSTER BANK, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has prior rights in and commercial use of the same.

The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

There is no evidence either before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known and widely registered trademark ULSTER BANK. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known and widely registered trademark ULSTER BANK, which the Panel considers, as asserted above by the Complainant, was not by chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its services. Further, the Panel finds that the Respondent is consequentially tarnishing the Complainant’s well-known and widely registered trademark ULSTER BANK and also the valuable goodwill that the Complainant has established in this trademark through prior commercial use, as evidenced above, without any right or legal justification for doing so.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

Therefore, for all the above reasons and those advanced above by the Complainant, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [its] web site or location.”

Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name incorporating as a dominant part thereof the name ULSTER, is trading unfairly on the Complainant’s valuable goodwill established in its well-known and widely registered trademark ULSTER BANK.

Also, the effect of such conduct on the part of the Respondent is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided in the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Furthermore, see also Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.

Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name by chance, but, as noted above, on the basis of clearly being aware of the notoriety of the Complainant’s well-known and widely registered trademark ULSTER BANK and its prior commercial use.

Also, the Panel finds that the Respondent’s use of the disputed domain name which has the effect of redirecting Internet users interested in the Complainant’s services to its own website for presumed commercial gain, not only does not constitute legitimate noncommercial or fair use; but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd./Mr.Cartwright, WIPO Case No. D2007-0267.

Again, the failure by the Respondent to answer the Complainant’s cease and desist letter and its reminder, as mentioned above, is also evidence of the Respondent’s bad faith. See America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460 and the UDRP cases therein cited. See also Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003.

Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent (see Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, as well as all the other arguments advanced by the Complainant in its contentions, as set out above, including “phishing”, and supported by the previous UDRP decisions cited above by the Complainant, with which the Panel agrees, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

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 <ulsterclicks.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist
Date: November 19, 2013