WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ulster Bank Limited v. Amy Dee
Case No. D2013-2168
1. The Parties
The Complainant is Ulster Bank Limited of Belfast, United Kingdom of Great Britain and Northern Ireland, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Amy Dee of Hohoe, Volta, Ghana.
2. The Domain Name and Registrar
The disputed domain name <ulsterfinance-ie.com> 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 December 13, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on December 13, 2013, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 January 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2014.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on February 4, 2014. 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 Irish company founded in 1836 that 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 trademark ULSTER BANK, which is a registered trademark protected in Europe. It has spent a significant amount of money promoting and developing this mark. The Complainant is the owner of Community trademarks composed with “Ulster Bank”, such as the word CTM ULSTER BANK, No. 004411112.
The Complainant operates websites such as “www.ulsterbank.com” (domain name registered in 2001) and “www.ulsterbank.co.uk” (domain name registered in 1996). It is the strict policy of the Complainant that all domain names containing the word “Ulster Bank” should be owned by the Complainant.
The disputed domain name <ulsterfinance-ie.com> was registered on October 16, 2013 and it has been used to give access to a website using the official logo of the Complainant.
5. Parties’ Contentions
Likelihood of Confusion
The ULSTER BANK trademark is in possession of substantial inherent and acquired distinctiveness. The awareness of the ULSTER BANK trademark is considered in large parts of the European Union to be significant.
The dominant part of the disputed domain name comprises the term “Ulster”, which is confusingly similar to the registered ULSTER BANK trademark, which has been registered by the Complainant as trademarks and domain names in numerous countries all over Europe.
The addition of the suffixes “finance” and “ie” are irrelevant and will not have any impact on the overall impression of the dominant part of the disputed domain name, “Ulster Bank”.. The addition of the said suffixes is rather fitted to strengthen the impression of an association with the Complainant.
The Complainant relies on Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, in which 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.
Given the reputation of the ULSTER BANK trademark, 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, which may result in dilution and other damage for the Complainant’s trademark.
Absence of Rights or Legitimate Interests
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. 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 ULSTER BANK trademark.
The Complainant relies on Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, in which 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.”
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 mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the 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 of the disputed domain name and it is the fame of the trademark that has motivated the Respondent to register the disputed domain name.
The Complainant relies on Deutsche 12 Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, in which it has been stated that any use of such a trademark in a domain name would violate the rights of the trademark owner.
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 the Complainant’s. The Respondent used the disputed domain name to “phish” for financial information in an attempt to defraud the Complainant’s customers. This is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to the Policy.
Bad Faith Registration and Use
The ULSTER BANK trademark is a reputed trademark in the finance industry. The Respondent registered the disputed domain name to illegitimately benefit from this reputation. The Complainant first tried to contact the Respondent and sent a cease and desist letter on November 3, 2013. The Complainant did not receive any response.
This is why the Complainant had to file a UDRP complaint.
By using the Complainant’s registered trademark to resolve to a website copying the Complainant’s official website, Respondent was using the disputed domain name to deceive the Complainant’s customers and manipulate them into divulging sensitive financial information. Thus, the Respondent’s use of the disputed domain name constitutes bad faith registration and use. Even if the website is currently inactive, such passive holding can 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.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To have the disputed domain name transferred to the Complainant, it must prove each of the following (Policy, paragraph 4(a)):
(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.
A. Identical or Confusingly Similar
The Complainant has rights in the ULSTER BANK trademark, protected for banking and insurance services. The Panel underlines that there is no need to communicate the portofolio of all the Complainant’s trademarks. The Complainant has to select and to clearly identify the trademarks on which its Complaint is based and it has to produce a copy thereof. This has to be simple and efficient, according to the principles that govern the UDRP procedure.
The Complaint is mainly based on the word CTM ULSTER BANK, No. 004411112, protected for financial services.
The disputed domain name consists of the distinctive part of the Complainant’s trademark, a descriptive term of the Complainant’s business “finance” and the letters “ie” for Ireland, where the Complainant is domiciled and employs over 6,000 people.
The Panel thus finds that the disputed domain name is confusingly similar to the ULSTER BANK trademark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue”.
The Panel notes that the Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not provided any evidence that it has been commonly known by the disputed domain name. According to the available record, the Respondent has neither used the disputed domain name in connection with a bona fide offering of goods or services, nor used the disputed domain name for a legitimate noncommercial or fair use for the reasons described in Section 6C below.
The Complainant has, therefore, made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not filed a Response, and there is nothing in the case file suggesting that the Respondent might have any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-exhaustive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Respondent chose to register a domain name that consists of the distinctive part of the Complainant’s trademark, a descriptive term of the Complainant’s business “finance” and the letters “ie” for Ireland, where the Complainant is domiciled, and to use the disputed domain name to resolve to a website that is meant to be confused with the Complainant’s official website.
In light of the above, the Respondent cannot have ignored the Complainant’s trademark rights when he registered the disputed domain name.
Therefore, the Panel believes that the Respondent has registered the disputed domain name in bad faith, in the meaning of paragraph 4(b)(iii) of the Policy.
Furthermore, according to the available record, the disputed domain name has been used to divert Internet users to a website that copies the Complainant’s website, in order to create a likelihood of confusion with the Complainant’s official website and to benefit from the Complainant’ trademark goodwill.
In the Panel’s assessment, the Respondent may be using the disputed domain name for phishing purposes.
Accordingly, the Panel finds that paragraph 4(b)(iv) of the Policy is satisfied.
For the above reasons, the Panel finds that paragraph 4(a)(iii) is satisfied in this case and that the registration and use of the disputed domain name has been made 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 <ulsterfinance-ie.com> be transferred to the Complainant.
Date: February 18, 2014