WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coutts & Co. v. Registration Private, Domains By Proxy, LLC / Anne Wells
Case No. D2015-1509
1. The Parties
The Complainant is Coutts & Co. of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom") represented by CSC Digital Brand Services AB, Sweden.
The Respondents are Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") and Anne Wels of Zurich, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <couttsfinancial.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 August 24, 2015. On August 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 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 August 28, 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 amendment to the Complaint on August 31, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 24, 2015.
The Center appointed Alfred Meijboom as the sole panelist in this matter on October 1, 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
Founded in 1692, the Complainant is one of the world's oldest banks. After several mergers, the Complainant continued to operate independently and is presently the wealth division of Royal Bank of Scotland Group, with clients from over 40 offices in financial centers in the United Kingdom, Switzerland, the Middle East and Asia. The Complainant is the owner of the following trademark registrations:
- UK trademark COUTTS with registration number 1300775 of September 8, 1989 for services in classes 35 and 36, namely business and commercial advisory services and financial services;
- Community trademark COUTTS with registration number 4275971 of April 20, 2006 for goods and services in classes 9, 16, 35, 36, 37, 38, 39, 41, 42 and 45
- Indian trademark COUTTS with application number 1839687 of July 14, 2009 for goods in class 9.
(together the "Trademarks").
The Respondent registered the disputed domain name on April 28, 2014.
5. Parties' Contentions
The disputed domain name is confusingly similar to the Trademarks, as it comprises the Trademarks and only adds the generic term "financial", which does not distinguish the disputed domain name from the Trademarks.
The Respondent has no trademark rights in the disputed domain name and is not commonly known by the disputed domain name. In fact, the Respondent has used the disputed domain name to pass itself off as the Complainant, most likely in an attempt to defraud the Complainant's customers through a fraudulent website highly similar to the Complainant's website. Additionally, the Respondent has used the disputed domain name on an international job search engine. The Respondent used the disputed domain name to confuse and, most likely, deceive unsuspecting visitors to its website and job seekers and presumably "phish" for personal information, such as email addresses and phone numbers, for personal gain. The Respondent's attempt to pass itself off as the Complainant and "phish" for customers' personal information is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy. For these reasons the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant first tried to contact the Respondent through a cease and desist letter. The Complainant advised the Respondent that the unauthorized use of the Trademarks within the disputed domain name violated the Complainant's rights in the Trademarks, and requested a voluntary transfer of the disputed domain name. The Respondent did not reply. Further, the Respondent had employed a privacy service to hide its identity, which serves as further evidence of bad faith registration and use of the disputed domain name. Even if the Respondent's 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.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Respondent did not reply to the Complainant's contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), the consensus view of UDRP panelists is that the respondent's default does not automatically result in a decision in favor of the complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from a respondent's default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(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
It is well established that the generic Top-Level Domains ("gTLDs"), such as ".com", may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds that the disputed domain name is confusingly similar to the Trademarks. The Respondent has taken the Trademarks in their entirety and merely added the descriptive word "financial". The added word is insufficient to differentiate the disputed domain name and the Trademarks, and actually enhances the connection given, at least, the financial services for which the Trademarks are registered and used, and the nature of the Complainant's business.
Consequently, the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel takes note of the various allegations of the Complaint and in particular that there is no affiliation between the Complainant and the Respondent, that no authorization has been given by the Complainant to the Respondent to use or register the disputed domain name, that the Respondent has not been commonly known by the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the disputed domain name resolved to a website which mimicked the Complainant's website with the apparent purpose of committing 'phishing' activities with the intention of defrauding Internet users into providing personal and financial information to the detriment of such Internet users who may have been confused to believe that the website was the Complainant's. Accordingly, the Respondent diverted consumers to the website under the disputed domain name for its own commercial gain so that there was neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use name. As such, the Panel is satisfied that the Complainant showed that the Respondent was involved in 'phishing' activities by using the disputed domain name, which in itself is sufficient to find that the Complainant succeeded in making a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name (e.g. Société Française du Radiotéléphone-SFR contre Madeleine Corvaisier, WIPO Case No. D2011-0225; Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471).
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service offered on the Respondent's website or location.
In the Panel's view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the Trademarks in mind as they had already been registered for many years and actually used by the Complainant for hundreds of years, which is further confirmed by the fact that the Respondent used the disputed domain name to resolve to a website which mimicked the Complainant's website, including the Trademarks. The Panels is therefore satisfied that the Respondent registered the disputed domain name in bad faith.
To the Panel's mind it is further obvious that the use which the Respondent made of the disputed domain name to passing off itself as the Complainant, apparently so as to obtaining personal and financial information from Internet users as a result of the intentionally created confusion between the disputed domain name and the Trademarks constitutes use of the disputed domain name in bad faith (e.g. Visa Europe ltd. contre Sophie Dupont, WIPO Case No. D2014-0119).
Consequently, the third and last element of paragraph 4(a) of the Policy is also met.
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 <couttsfinancial.com> be transferred to the Complainant.
Date: October 14, 2015