WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lloyds Bank Plc. v. Perfect Privacy, LLC / Lloyds Private Finance Fund
Case No. D2015-0149
1. The Parties
The Complainant is Lloyds Bank Plc. of the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Crowell & Moring, LLP, Belgium.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America / Lloyds Private Finance Fund of Belize City, Belize, self-represented.
2. The Domain Names and Registrar
The disputed domain names <lloydscommercialfinance.com> and <lloydscommercialfinance.info> are registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint concerning the disputed domain name <lloydscommercialfinance.com> was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 29, 2015. On January 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 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 February 5, 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 February 9, 2015, also adding the domain name <lloydscommercialfinance.info> to the dispute. On February 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with this disputed domain name and on the same day the Registrar confirmed that the Respondent is listed as the registrant and provided the contact details.
The proceeding was suspended on February 13, 2015 and reinstituted on March 5, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2015. The Response was filed with the Center on March 30, 2015.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on April 14, 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 Complainant is a subsidiary of the Lloyds Banking Group offering financial services.
The Complainant is the owner of the trademark LLOYDS BANK registered in the United Kingdom under Nos. 1286876, filed on October 1, 1986 and registered on May 17, 1991, in class 36 (annex 5.a) and 2548791, filed on May 28, 2010 and registered on November 5, 2010, in classes 9, 35 and 36 (annex 5.b to the Complaint).
The disputed domain names <lloydscommercialfinance.com> and <lloydscommercialfinance.info> were registered on November 23, 2010 and April 8, 2014, respectively. Currently an active webpage on which financial services are offered resolves from the first disputed domain name, whereas the second disputed domain name redirects users to the first disputed domain name.
5. Parties' Contentions
The Complainant asserts that it is a subsidiary of the Lloyds Banking Group, owner of the well-known LLOYDS BANK trademark, actively promoted and used by it throughout the world.
In addition to the domain name <lloydsbank.com>, the Complainant is also the owner of the domain names <lloydsbankcommercialfinance.com> (registered on January 27, 2012) and <lloydsbankfinance.co.uk> (registered on April 21, 2010).
The disputed domain names are, according to the Complainant, confusingly similar to the Complainant's well-known trademark, creating a likelihood of confusion, given that its trademark's distinctive element is reproduced in them with the addition of the generic terms "commercial" and "finance" which relate to the Complainant's activities and domain names.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names given that:
(a) the Respondent is not commonly known by the disputed domain names;
(b) the Respondent has not acquired trademark or service rights and the Respondent's use and registration of the disputed domain names was not authorized by the Complainant, owner of the well-known trademark depicted in them;
(c) the Respondent is using the disputed domain names in connection with a website that appears to offer financial services, however no authorization from a regulatory authority, which is mandatory to offer financial services, is made;
(d) the Respondent appears to have referred to an office location of the Complainant at a previous version of its website which shows a clear intention to make unjustified profits or lead Internet users into revealing personal or proprietary information to the Respondent, which does not constitute a legitimate or fair use of the disputed domain names.
As to the registration of the disputed domain names in bad faith the Complainant asserts that the Respondent knew or should have known of the Complainant's trademark rights given that its trademark is well-known all over the world and especially in English-speaking countries; and considering that the Respondent is offering the same services as the Complainant, it is clear that the Respondent registered the disputed domain names in bad faith.
Lastly, also according to the Complainant, the use of the disputed domain names similar to the Complainant's trademark suggest at the very least endorsement of, or affiliation with the Complainant, which is not true.
Furthermore, a previous version of the Respondent's webpage mentioned the physical address of the Complainant's New York office, in an attempt at luring Internet users into contacting the Respondent and furnishing potentially sensitive information to it, which can lead to fraudulent use of the disputed domain names. Such a risk is further endorsed by the fact that the Respondent's website has already been flagged as "almost certainly a scam" by Internet users.
Thus, according to the Complainant, the Respondent is unfairly seeking to capitalize on the goodwill and fame of the Complainant's trademark by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website, making Internet users believe that the website is associated, endorsed or recommended by the Complainant, which is not true.
On February 10, 2015 the Respondent sent an email to the Complainant stating that "the ownership group behind the [disputed domain names] is ready, willing and able to proceed with the transfer of the [disputed domain names] to LLOYDS BANK".
On February 13, 2015 the proceedings were suspended so that the parties could pursue an amicable settlement. On March 4, 2015 the Complainant requested the proceedings to be reinstituted given that the Respondent did not give warranties with regard to the transfer of the disputed domain names. On March 5, 2015, the Center reinstituted the proceedings. Several emails were exchanged between the parties until March 12, 2015 as to the remittance of the necessary authorization codes so that the transfer of the disputed domain names could take place, which did not happen.
Finally, on March 30, 2015, the Respondent, signing as "LLOYDS PRIVATE FINANCE FUND", formally replied to the Complainant's contentions, stating that:
(i) the disputed domain names are not identical or confusingly similar to the Complainant's trademark;
(ii) LLOYDS COMMERCIAL FINANCE is a duly registered legal body existing for 11 (eleven) years, the name "LLOYD" being based on the owner's name, Lloyd;
(iii) therefore it has the right to register and use domain names that are identical to its registered business name;
(iv) the disputed domain names have been registered and used in good faith without the risk of confusing or misleading association with the Complainant and its trademark;
(iv) the services rendered by the Respondent are not being offered to the general public but rather only to private clients;
(v) none of the services offered by the Respondent are identical or confusingly similar to the Complainant's services.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain names transferred to it, according to paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established rights in the LLOYDS BANK trademark duly registered in several countries around the world (Annexes 5.a, 5.b and 5.c to the Complaint).
In this case, the substitution of the generic term "bank" for the also generic and related expressions "commercial" and "finance" do not avoid a likelihood of confusion, more so considering the Complainant's activities and domain names also incorporate such terms (namely <lloydsbankcommercialfinance.com> (registered on January 27, 2012) and <lloydsbankfinance.co.uk> (registered on April 21, 2010)).
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademark. The first element of the Policy has been established.
B. Rights or Legitimate Interests
The Panel notes that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production has therefore shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests.
The Panel notes that the Respondent's communication with the Center clearly indicated that it was willing to transfer the disputed domain names to the Complainant, which appears to have not been achieved due to problems with the transfer procedure or the lack of the Respondent's action to comply with it.
As decided in past similar UDRP cases where "an exchange of e-mails between the Center and the Respondent subsequent to the initiation of the dispute and at a time when the Respondent had been served with the Complaint" in which "exchange of e-mails the Respondent makes no claim whatsoever to rights or legitimate interests in the domain name", the Panel can establish "on the balance of probabilities that the domain name in issue can only refer to the Complainant's […] trademark and that the Respondent has no rights or legitimate interests in the domain name in issue". (Produits Berger v. Matthew Shewchuk, WIPO Case No. D2004‑1083).
In this case, however, in its last communication with the Center, the Respondent states that its corporate name is LLOYDS COMMERCIAL FINANCE and that it is a "duly registered legal body…existing for eleven (11) years". Strangely enough no evidence to support this assertion has been submitted by the Respondent.
Another curious fact, to say the least, is that throughout the proceedings the Respondent signed all its communications as "LLOYDS PRIVATE FINANCE FUND", but not a single time with its supposed corporate name, "LLOYDS COMMERCIAL FINANCE".
Furthermore, the Respondent has not produced any evidence to support its assertion that the "Llloyd" in its name would be that of its owner's name. Nowhere on the website related to the disputed domain names is there a mention as to this individual or to the actual existence of the group.
Further, the Respondent did not rebut the claim that the prior version of its website contained reference to one of the Complainant's offices in New York, which led the Panel to be suspicious as to the veracity of the address depicted on the Respondent's current website - "125 Park Avenue, New York". A call made to the building's management office ("www.125parkavenue.info") confirmed that no company named "LLOYDS COMMERCIAL FINANCE" is located there.1
Lastly, contrary to what the Respondent states, the services being advertised or offered at the website available at the disputed domain names are similar, if not the same, as those rendered by the Complainant which can create a likelihood of confusion among Internet users.
Therefore, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names. The second element of the Policy has also been met.
C. Registered and Used in Bad Faith
This case presents the following circumstances which indicate bad faith registration and use of the disputed domain names given that:
a) the Complainant's trademark is registered worldwide and is well known;
b) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names;
c) the Respondent has taken active steps to conceal its true identity, by choosing to operate under a privacy shield/privacy protection service;
d) the Respondent evidently was aware of the Complainant and its trademarks in view of the contents of the website that resolves from the disputed domain names;
e) there are indications that the disputed domain names have been used for scams;
f) the Respondent used to mention the Complainant's office address in New York at a previous version of the website that resolved from the disputed domain names, which could create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of such website, making Internet users believe that the website is associated, endorsed or recommended by the Complainant, which is not true.
For the reasons above, the Respondent's conduct has to be considered, in this Panel's view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) 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 names <lloydscommercialfinance.com> and <lloydscommercialfinance.info> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: April 22, 2015
1 In this regard the Panel refers to paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), which records the consensus view that "[a] panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision."