WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aldermore Bank Plc v. Hildegard Gruener
Case No. D2016-1617
1. The Parties
The Complainant is Aldermore Bank Plc of Peterborough, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Hildegard Gruener of Vienna, Austria.
2. The Domain Name and Registrar
The disputed domain name <aldermore-com.com> (the "Domain Name") 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 11, 2016. On August 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 12, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 Respondent of the Complaint, and the proceedings commenced on August 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 7, 2016.
The Center appointed Steven Auvil as the sole panelist in this matter on September 14, 2016. 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 United Kingdom-based bank founded in 2009. It is one of the 350 largest companies in the UK by market capitalisation with net lending to SMEs at GBP 2.5 billion and lending to homeowners at GBP 2.9 billion.
The Complainant has owned registered domain names <aldermore.co.uk> and <aldermore.com> since April 3, 2009 and owns more than 100 domain names containing the mark ALDERMORE. The Complainant owns United Kingdom, European Union, and internationally-registered marks for ALDERMORE in a range of classes including in relation to banking services, financial services, savings, current and loan account services. These marks include European Union Trademark No. 1028942 for ALDERMORE, registered on October 26, 2009.
The Respondent registered the Domain Name on August 6, 2015. The website resolves to a parking site that displays "pay-per-click" links related to banking-related products and services. Before this proceeding commenced, the website included descriptive language belonging to the Complainant. Annex 7 to the Complaint. The descriptive language has been removed, but the links to banking-related products and services remain.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's ALDERMORE mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the ALDERMORE mark. It owns United Kingdom, European Union, and internationally-registered marks for ALDERMORE. The Complainant has used its ALDERMORE registered marks continuously since they were registered.
In addition to its registered marks, the Complainant has acquired common law rights in the mark ALDERMORE due to the goodwill and significant reputation it has generated in the areas in which it operates.
The Domain Name consists of the ALDERMORE mark and the connecting term "-com". The use of the ALDERMORE mark leads Internet users to believe that the Domain Name is associated with the Complainant.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. It is very unlikely that the Respondent would have been unaware of the Complainant's legal rights in the ALDERMORE marks at the time of registration of the Domain Name. The Respondent was motivated by the Complainant's reputation in registering the Domain Name. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Complainant has not authorised the Respondent to register the Domain Name or to use it ALDERMORE mark.
The Domain Name was registered and is being used in bad faith. By registering the Domain Name using the Complainant's ALDERMORE mark, the Respondent is attempting to attract, for commercial gain, Internet users to the Respondent's website by virtue of the confusing similarity between the Domain Name and the registered trademarks of the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these 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 Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that the Domain Name is confusing similar to its ALDERMORE mark.
The Domain Name incorporates the mark ALDERMORE in its entirety and, therefore, is "identical or confusingly similar" to the mark.
Numerous UDRP decisions have recognized that incorporating a mark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark.
The Domain Name uses the Complainant's mark, followed by the suffix "com". The Complainant's mark and the suffix are separated by a hyphen, with the addition of the generic Top-Level Domain ("gTLD") ".com", to create <aldermore-com.com>.
The suffixing of a gTLD signifier can be ignored when determining whether the disputed domain name is "identical or confusingly similar" to the trademark for the purposes of paragraph 4(a)(i). Universal City Studios, Inc. v. G.A.B Enterprises, WIPO Case No. D2000-0416.
The addition of the element "-com" within the Domain Name does not dispel any confusing similarity between the Domain Name and the Complainant's mark.
The Panel therefore concludes that Policy paragraph 4(a)(i) has been established.
B. Rights or Legitimate Interests
The Complainant has also established that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Where a complainant establishes a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to establish rights or legitimate interests in the disputed domain name. Grupo Vitalmex, S.A. de C.V. v. Armin Werner, WIPO Case No. D2015-0028.
The mere registration of a domain name does not establish rights or legitimate interests in that domain name. Grundfos A/S v. Arturo Del Castillo, Grundfos, WIPO Case No. D2011-0112.
The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The website found at the Domain Name is used as a parking site that displays "pay-per-click" links to banking services, lending services, and other services of the type the Complainant is engaged in under the ALDERMORE mark.
The evidence of record supports the Complainant's unrebutted allegations that the Respondent has not responded to the Complainant's efforts to make contact, is not authorized to use the ALDERMORE mark, and is not sponsored by or affiliated with the Complainant in any way.
Under such circumstances and in the absence of a reply from the Respondent, the Panel finds that the Complainant has made an unrebutted prima facie case. As a result, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
Finally, the Complainant has established that the Domain Name was registered and is being used in bad faith.
It is highly unlikely that the Respondent was unaware of the Complainant's rights when the Respondent registered the Domain Names on August 6, 2015, since the Complainant had registrations in the ALDERMORE mark since April 3, 2009 and had used the mark extensively.
That the only use made in respect of the Domain Name is in relation to a parking page with pay-per-click links supports the inference of registration in bad faith. See Wal-Mart Stores, Inc. v. John Boland, WIPO Case No. D2014-2052.
The Complainant argues that the Respondent has a pattern of abusive domain name registrations that demonstrates bad faith. Complaint at p. 10. The Panel finds that this demonstrates the Respondent's pattern of bad faith registration under Policy paragraph 4(b)(ii). See iS3, Inc. v. Hulmiho Ukolen, Poste restante / Domain Admin, Whois protection, this company does not own this domain name s.r.o., WIPO Case No. D2016-0933(holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Under the Policy, evidence of bad faith includes "using the disputed domain name, [to] intentionally attempt to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with complainant's mark as to source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
In sum, the Panel finds that the Domain Name was registered and is being used in bad faith. For that reason, the third and last element of paragraph 4(a) of the Policy is met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <aldermore-com.com> be transferred to the Complainant.
Date: October 3, 2016