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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Coutts & Co. v. Sande Skalnik, Patrick Harding

Case No. D2015-1590

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 Sande Skalnik of Dimondale, Michigan, United States of America ("United States") and Patrick Harding of Erie, Pennsylvania, United States.

2. The Domain Names and Registrar

The disputed domain names <coutsbonline.com> and <couttsbonline.com> are 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 September 4, 2015. On September 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 8, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceeding commenced on September 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on October 16, 2015.

The Center appointed Anna Carabelli as the sole panelist in this matter on October 23, 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 private unlimited company based in London and focused on private banking and wealth management. Founded in 1692, it is one of the oldest banks in the world. Today it represents the wealth division of the Royal Bank of Scotland Group and offers financial services under the trademark COUTTS.

The mark is protected as a registered trademark in many jurisdictions, including the United States, the United Kingdom and the European Union. The earliest registration of the mark COUTTS dates from 1997.

The complainant also owns the domain names <coutts.com>, <coutts.co.uk> and <coutts-online.co.uk>, which were registered respectively in 1995, 2005 and 1999.

The disputed domain names <couttsbonline.com> and <coutsbonline.com> were both registered on February 7, 2015, as shown by the copies of the registrar's WhoIs database.

According to the evidence submitted by the Complainant, the disputed domain names were originally connected to websites displaying nearly the same content as the Complainant's main website. Currently, the disputed domain names resolve to blank pages.

On July 9, 2015, the Complainant sent by email cease and desist letters to the Respondents and requested a voluntary transfer of the disputed domain names, but the Respondents failed to reply.

5. Parties' Contentions

A. Complainant

The Complainant contends that its Complaint should be allowed against multiple Respondents given the evidence of common control of the disputed domain names present in this case.

The Complainant contends that the disputed domain names are confusingly similar to its registered trademark COUTTS since:

- the disputed domain name <couttsbonline.com> includes the term "coutts", which is identical to the Complainant's registered trademark, with the addition of the single letter "b" and the suffix "online";

- the disputed domain name <coutsbonline.com> includes a misspelling of the term "coutts" with, again, the addition of the single letter "b" and the suffix "online".

Furthermore, the disputed domain names were originally used to display websites identical to the Complainant's main website.

In addition, the Complainant asserts that the Respondents have no rights or legitimate interests in the disputed domain names. According to the Complainant, the Respondents do not have any registered trademarks corresponding to the disputed domain names and there is no evidence suggesting that the Respondents are commonly known by the disputed domain names.

The Respondents were originally using the disputed domain names to pass themselves off as the Complainant through fraudulent websites identical to the Complainant's main one, likely in order to "phish" for financial information of the Complainant's customers. Now, after that the previous websites were taken down on the Complainant's request, the Respondents are using the disputed domain names to redirect Internet users to blank pages.

The Complainant states that the disputed domain names were registered and are being used in bad faith given that:

a) the Respondents cannot have ignored the existence of the Complainant when the disputed domain names were registered, given the strong reputation and notoriety of the Complainant's mark COUTTS in the field of financial services;

b) the disputed domain names were directing Internet users to a website identical to the Complainant's main one;

c) the Respondents used the disputed domain names to pass themselves off as the Complainant and to "phish" for financial information in an attempt to defraud the Complainant's customers;

d) every effort of trying to solve the matter amicably was unsuccessful, since the Respondents did not reply to the cease and desist letters sent by email by the Complainant on July 9, 2015.

B. Respondents

The Respondents did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1. Preliminary Procedural Issue: Consolidation

The Complainant has requested that its Complaint be allowed to move forward against multiple Respondents. For the reasons below, the Panel grants this request and will proceed to consider the merits as to both disputed domain names in this decision.

As recorded in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), UDRP panels have allowed for the consolidation of complaints against multiple respondents where "(i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties." The circumstances of this case clearly point to common control of the disputed domain names: the disputed domain names, which are nearly identical, were registered on the same date through the same registrar and formerly resolved to the same website. They are now both passively held. In these circumstances, consolidation is also fair and equitable to all parties.

Given the evidence of common control in this case, the Panel will refer to a single Respondent for the remainder of the decision.

6.2. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to 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.

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) The disputed domain names are identical or confusingly similar to the Complainant's trademark or service mark; 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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of Policy, paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by respondent, shall be evidence of the respondent's rights to or legitimate interests in the domain name for the purpose of Policy, paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Complainant has shown that it owns trademark registrations for the mark COUTTS in several countries including the United States.

The disputed domain names <couttsbonline.com> and <coutsbonline.com> are confusingly similar to the Complainant's trademark, as they entirely incorporate, respectively, the term "coutts" and a misspelling of the term "coutts". According to previous UDRP panel decisions, the omission of a single letter does not prevent a domain name from being considered confusingly similar to a trademark (Thierry Mugler v. Registration Private, Domains By Proxy, LLC / Online Management, WIPO Case No. D2013-2011; Voicestream Wireless Corporation v. Phayze 1 Phayze 2; Phayze Inc.,WIPOCase No. D2002-0636; VoiceStream Wireless Corporation v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2002-0146).

It is also an established principle that the mere addition of a letter ("b" in this case) cannot be considered sufficient to avoid confusion between a domain name and a trademark (Vertu Corporation Limited v. David Szn and Jun Luo, WIPO Case No. D2015-0185; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPOCase No. D2000-1219; Toshiba Corporation v. Distribution Purchasing & Logistics Corp, WIPO Case No. D2000-0464).

Likewise, the addition of generic terms (such as "online") does not prevent the disputed domain names from being confusingly similar to the Complainant's trademark (National Westminster Bank plc v. PrivacyProtect.org / Michael Switalski, WIPO Case No. D2012-1717; Goyard St-Honoré v. Domain ID Shield Service / Arif Cahyono, WIPO Case No. D2012-1158; Sanofi- Aventis v. Conciergebrain.com, WIPO Case No. D2005-0660; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc, WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp, WIPO Case No. D2000-0464).

On this issue, the Panel further notes that the term "online" is plainly descriptive and generic if used for a website and can likely be associated with the Complainant, considering that the Complainant is very active online. Therefore, the combination with COUTTS (or a misspelling thereof) is clearly confusing (Coutts & Co. v. Agus Santoro – Ptmanias DRI-110160, WIPO Case No. D2014-1526; National Westminster Bank plc v. PrivacyProtect.org / Michael Switalski, WIPO Case No. D2012-1717; Christian Dior Couture v. Carl Lim, WIPO Case No. D2008-1038, Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627).

In the light of the above and of the fact that the addition of the generic Top-Level Domain ".com" has typically no legal significance when comparing a domain name and a trademark, the Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There is no evidence that the Complainant has authorized, licensed or permitted the Respondent to use the trademark COUTTS and that the Respondent has been or is commonly known by the disputed domain names.

Furthermore, the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services and it has never made a legitimate noncommercial or fair use of the disputed domain names, particularly because it was using the disputed domain names to redirect Internet users to a website imitating the Complainant's website, in an attempt to pass itself as the Complainant and fraudulently acquire financial information from the Complainant's customers.

On the other hand, by not submitting a Response, the Respondent has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy or otherwise.

Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The evidence shows that the websites formerly at the disputed domain names imitated the Complainant's main website and were used to "phish" for financial information from the Complainant's customers. Considering this fact, together with other evidence before the Panel, the Panel finds that the disputed domain names were registered in bad faith.

The fact that at present the disputed domain names do not resolve to a website and do not appear to be used online otherwise, does not affect the grounds for the Complaint. According to Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which was followed by several consistent UDRP decisions, "the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith."

The Panel finds that the Respondent's present passive holding of the disputed domain names meets the requirement of paragraph 4(a)(iii) that the disputed domain names are being used in bad faith by the Respondent based on the following circumstances:

(i) the Complainant's trademark is well known in the financial field and firmly associated with the Complainant;

(ii) the Respondent has failed to submit an answer to rebut the evidence submitted by the Complainant;

(iii) the former use of the disputed domain names made by the Respondent shows the Respondent's intent to deceive the Complainant's customers and attract, for commercial gain, Internet users to the Respondent's websites;

(iv) the Respondent has no rights or legitimate interests in the disputed domain names, as established under Section 6.B above and as a consequence, the Respondent could not possibly make any plausible actual or contemplated active use of the disputed domain names other than illegitimate use.

Finally, according to previous UDRP panel decisions, the failure of the Respondent to reply to a cease and desist letter is further evidence of bad faith (see, e.g., Citrix Systems, Inc. v. Domains by Proxy, LLC / Sirishareddy Idamakanti - Sirisha Idamaknti, WIPO Case No. D2015-0017; E. & J. Gallo Winery v. Oak Investment Group, WIPO Case No. D2000-1213; Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330)

Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(iii) of the Policy.

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 names <couttsbonline.com> and <coutsbonline.com> be transferred to the Complainant.

Anna Carabelli
Sole Panelist
Date: November 4, 2015

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