WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kleinwort Benson Group Limited and Société Générale v. Domain Administrator, See PrivacyGuardian.org / Ryan Yu
Case No. D2016-2579
1. The Parties
Complainant is Kleinwort Benson Group Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom") and Société Générale of Paris, France represented by Nameshield, France.
Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America ("United States") / Ryan Yu of Xiamen, China.
2. The Domain Name and Registrar
The disputed domain name <kleinwort-hambros.com> is registered with NameSilo, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 20, 2016. On December 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response 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 Complainant on December 22, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 28, 2016.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 25, 2017.
The Center appointed Michael A. Albert as the sole panelist in this matter on January 30, 2017. 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
Société Générale is a bank, which acquired the private bank Hambros in 1998. In March 2016, Société Générale bought the private bank Kleinwort Benson. In June 2016, Kleinwort Benson and SG Hambros merged. The entity resulting from the merger is Kleinwort Hambros.
Kleinwort Benson owns the European Union Trade Mark ("EUTM") KLEINWORT, registration no. 8648421, registered on March 30, 2010.
Société Générale owns the EUTM HAMBROS, registration no. 209254, registered on September 23, 1998.
On October 11, 2016, Société Générale filed an application for the trademark KLEINWORT HAMBROS with the European Union Intellectual Property Office ("EUIPO"). On the same day, Respondent registered the disputed domain name.
5. Parties' Contentions
Complainant holds trademark registrations for the marks KLEINWORT and HAMBROS, and has filed an application for the trademark KLEINWORT HAMBROS with the EUIPO.
Complainant contends that the disputed domain name <kleinwort-hambros.com> is confusingly similar to Complainant's trademarks because it contains the entirety of its trademarks KLEINWORT and HAMBROS. Complainant contends that the addition of the generic Top-Level Domain ("gTLD") ".com" and a hyphen "-" is insufficient to differentiate the disputed domain name from Complainant's marks, or to change the impression that Complainant's marks are somehow associated with the disputed domain name. Complainant contends that the incorporation of a registered mark in its entirety in a domain name is sufficient to establish a likelihood of confusion.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that Respondent is not affiliated with Complainant or Complainant's business, nor authorized by Complainant to use the disputed domain name. Further, Complainant asserts that the disputed domain name redirects to a pay-per-click ("PPC") website and argues that Respondent's use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Complainant argues that this is evident from the disputed domain name's confusing similarity to Complainant's trademarks and further evident from Respondent's registration of the disputed domain name on the same day that Complainant filed its trademark application with the EUIPO. Complainant asserts that Respondent was fully aware of the trademark when it registered the disputed domain name. Finally, Complainant contends that Respondent's bad faith is evident from Respondent's use of the disputed domain name to confuse and attract Internet users to a PPC-website for commercial gain.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To prove this element the Complainant must have a trade mark, or service mark, and the disputed domain name must be identical or confusingly similar to the Complainant's trade mark, or service mark.
Complainant has produced copies of its trademarks KLEINWORT and HAMBROS, which it registered before the disputed domain name was registered by Respondent. Complainant also produced a copy of its pending application for the mark KLEINWORT HAMBROS, which Complainant filed on October 11, 2016, the same day as that on which Respondent registered the disputed domain name.
Complainant has shown that it has the requisite rights in the trademarks KLEINWORT and HAMBROS for the purposes of paragraph 4(a)(i) of the Policy. See JSM Capital AB v. Joan Baker, WIPO Case No. D2016-2499 (finding registration of trademarks with EUIPO as sufficient for establishing a complainant's rights).
The Panel finds that the disputed domain name <kleiwort-hambros.com> fully incorporates the verbal elements of Complainant's KLEINWORT and HAMBROS trademarks. Previous UDRP panels have held that when a domain name incorporates in its entirety a complainant's registered trademark, this fact is sufficient to establish confusing similarity for purposes of the Policy. See, e.g., RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150. Further, it is well established that gTLDs such as ".com" should be disregarded in determining whether a disputed domain name is identical or confusingly similar to a complainant's trademark. See, e.g., Diamonique Corporation v. Foley Services, WIPO Case No. D2007-0893.
Here, the verbal elements of Complainant's trademarks, "Kleinwort" and "Hambros," are both equally prominent features of the disputed domain name. Respondent has combined the two marks in a single domain name. Although the disputed domain name does not recite either of the two marks to the exclusion of other words, this alone is insufficient to dispel the confusing similarity. As an initial matter, previous UDRP panels have found confusing similarity existed even where other words were included in a domain name that incorporated in its entirety a complainant's trademark. See, e.g., F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323 (finding confusing similarity where the domain name incorporated both the complainant's trademark and word associated with a rival brand). The rationale of previous panel decisions which found the inclusion of trademarks of other parties in a single domain name insufficient to mitigate the likelihood of confusion applies with even greater force here, where the two marks pertain to two merged entities. Indeed, Complainant widely disseminated information relating to the merger of the two entities that hold Complainant's trademarks KLEINWORT and HAMBROS, a fact which reinforces the association between the two marks, and thus also the likelihood of Internet user confusion. See, e.g., Harry Winston Inc. and Harry Winston S.A. v. Jennifer Katherman, WIPO Case No. D2008-1267 ("[T]he panel believes it quite likely that people (not merely morons in a hurry) glancing at the Domain Name may well not notice the difference and believe they are looking at [the Complainant's trademark]").
Accordingly, the Panel finds the disputed domain name, <kleinwort-hambros.com>, to be confusingly similar to the trademarks KLEINWORT and HAMBROS. Complainant meets the first required element under the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Although Respondent has not filed a response, Complainant must still make a prima facie case that Respondent has no rights or legitimate interests in connection to the disputed domain name. See, i.e., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Complainant bears the "general burden of proof" under paragraph 4(a)(ii) of the Policy, which shifts to Respondent once Complainant makes a prima facie showing that Respondent lacks rights or legitimate interests. See Neusiedler Aktiengesellschaft v. Vinayak Kulkarni, WIPO Case No. D2000-1769; see also Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704.
The Panel finds that Complainant has shown, prima facie, that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy on the basis of several uncontested facts. Complainant asserts it has no relationship whatsoever with Respondent and has never authorized Respondent to use the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd, supra (identifying the absence of a relationship between the parties as a relevant factor in assessing the respondent's interests). Further, there is no indication that Respondent is known under the disputed domain name. Finally, Complainant has submitted evidence tending to show that the disputed domain name directs to a PPC-website with content related to Complainant's business. Use of a domain name that is confusingly similar to a trademark is not a bona fide offering of goods and services nor a legitimate noncommercial or fair use.if the domain name serves only as "bait" to attract customers to Respondent's website, luring them away from Complainant's services.
Accordingly, the Panel finds that Complainant has met its burden and made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. There is no evidence on record rebutting Complainant's prima facie case. Thus, the Panel finds that the Complaint meets the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where "by using the domain name, [registrant has] intentionally attempted to attract, for commercial gain, Internet users to [registrant's] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [registrant's] website or location or of a product or service on [registrant's] website or location."
As an initial matter, the disputed domain name is confusingly similar to the Complainant's trademarks. Previous UDRP panels have found that where there is a likelihood of confusion, Internet traffic is inevitably diverted "from the Complainant's site to Respondent's site". See Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095. Further, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP. Crédit Agricole S.A. v. Donghui, WIPO Case No. D2015-0472.
Complainant submitted evidence showing that the confusingly similar disputed domain name directs to a website that appears to host links to services related to Complainant's business. It may be presumed that Respondent operates this website for commercial gain. Previous UDRP panels have found that the use of domain names to direct Internet users to PPC websites may constitute bad faith use pursuant to paragraph 4(b)(iv). See Crédit Agricole S.A. v. Donghui, supra. The Panel further notes that bad faith use may also be found where a domain name is parked and a respondent neither controls the content of the website nor receives revenue from the displayed links.
Complainant submitted evidence that Respondent registered the disputed domain name on the same day as Complainant submitted its application of the trademark KLEINWORT HAMBROS. Moreover, Complainant submitted evidence that it had disseminated information relating to the Kleinwort-Hambros merger several months before Respondent registered the disputed domain name, and argues that the merger and name of the resulting entity were publicly known. The timing of a disputed domain name's registration is relevant to the question of Respondent's bad faith. See Crédit Agricole S.A. v. Donghui, supra (finding complainant's earlier trademark registration suggestive of Respondent's bad faith in registering disputed domain name). Respondent's registration of the disputed domain name probative of Respondent's intention and indicative of its bad faith, given that the new entity's formation was publicly known.
For the foregoing reasons, the Panel finds that Complainant has adequately shown that Respondent registered and used the disputed domain name in bad faith pursuant 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 name <kleinwort-hambros.com> be transferred to Complainant.
Michael A. Albert
Date: February 13, 2017