WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sydbank A/S v. Domains by Proxy LLC / Syd Bank
Case No. D2015-0442
1. The Parties
The Complainant is Sydbank A/S of Aabenraa, Denmark, represented by Bech-Bruun Law Firm, Denmark.
The Respondent is Domains by Proxy LLC of Scottsdale, Arizona, United States of America (“United States”) / Syd Bank of Copenhagen, Denmark.
2. The Domain Name and Registrar
The disputed domain name <sydbank-dk.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 March 12, 2015. On March 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 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 Complainant filed an amendment to the Complaint on March 16, 2015.
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 March 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2015.
The Center appointed Knud Wallberg as the sole panelist in this matter on April 10, 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
Sydbank A/S was established in 1970 and is now nationwide bank with more than 80 Danish branches as well as a number of branches in Germany.
The Complainant has a Danish trademark registration for SYDBANK, registered September 6, 2005, and a Community Trade Mark for SYDBANK, registered March 13, 2007.
Furthermore, the Complainant is the owner of and maintains a website promoting its products and services under the domain names <sydbank.dk>, <sydbank.com> and <sydbank.de>.
The disputed domain name was registered January 26, 2015.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s trademark SYDBANK.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never been commonly known by the disputed domain name; has not used or made demonstrable preparations to use the disputed domain name; and is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The Complainant has not licensed to the Respondent the right to use the SYDBANK trademarks and the Respondent is not otherwise authorized to act on the Complainant’s behalf.
The Respondent has used the disputed domain name to engage in fraudulent activities. The Respondent has contacted customers and employees of the Complainant and has presented itself as an employee of the Complainant in that context, as evidenced by annexes attached to the Complaint, using an email address that reflects the disputed domain name. The Respondent’s fraudulent intention is supported by the fact that the disputed domain name <sydbank-dk.com> has been redirecting users to the Complainant’s website “www.sydbank.com”.
Due to the notoriety of the Complainant and the Complainant’s mark and the longtime use of the mark, the Complainant states that the Respondent was undoubtedly aware of the Complainant when it registered the disputed domain name incorporating the Complainant’s trademark.
Such conduct is evidence of bad faith under Policy paragraph 4(b)(ii).
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with 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 there from as it considers appropriate.
A. Identical or Confusingly Similar
The disputed domain name contains the Complainant’s distinctive and well-known trademark SYDBANK with the addition of the country code “dk” and the “.com” designation. Since the generic top-level domain (“gTLD”) designation “.com” may be disregarded for the purpose of this proceeding, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights.
The Panel therefore finds that the conditions in paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this and the way the Respondent has been using the disputed domain name, makes it inconceivable to the Panel that any rights or legitimate interests may exist.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii), and paragraph 4(c) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration or use in bad faith:
(i) circumstances indicating that the domain name holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the domain name holder has 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 domain name holder has engaged in a pattern of such conduct; or
(iii) the domain name holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the domain name holder has intentionally attempted to attract, for commercial gain, Internet users to the domain name holder’s 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 the holder’s website or location or of a product or service on the domain name holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the distinctive nature of the Complainant’s SYDBANK marks and the longtime use of the mark, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant or without the intention of targeting the Complainant and customers and employees of the Complainant.
The Panel therefore finds that the disputed domain name was registered in bad faith.
As to the use of the disputed domain name, the Respondent is using the disputed domain name for a phishing scam to deceive customers and employees of the Complainant by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s activities. This constitutes bad faith use under the Policy, see, inter alia,Valero Energy Corporation, Valero Marketing and Supply Company v. VEnergy, Valery, WIPO Case No. D2014-0268; National Westminster Bank plc v. Abdelilah Jadron, WIPO Case No. D2013-2232; NES Rentals Holdings, Inc. v. Domains By Proxy LLC and Allison Mills, WIPO Case No. D2013-1812; and Valero Energy Corporation, Valero Marketing and Supply Company v. Maurine flavour seafoods, WIPO Case No. D2013-1849.
Noting that the disputed domain name incorporates a registered and widely known trademark, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <sydbank-dk.com> be transferred to the Complainant.
Date: April 22, 2015