WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DekaBank Deutsche Girozentrale Anstalt des öffentlichen Rechts v. Registration Private, Domains By Proxy, LLC / Fidan Chong
Case No. D2017-0622
1. The Parties
The Complainant is DekaBank Deutsche Girozentrale Anstalt des öffentlichen Rechts of Frankfurt am Main, Germany, represented by Bird & Bird LLP, Germany.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Fidan Chong of Hampton, New Hampshire, United States.
2. The Domain Name and Registrar
The disputed domain name, <dekabank.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 March 27, 2017. On March 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 29, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 30, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. As discussed further below, the Center received an email from an individual named “Jahangir Ali-zada” on April 3, 2017. The Complainant filed an amendment to the Complaint on April 4, 2017.
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 April 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2017. On April 24, 2017, a request was made for an extension of time for the filing of the Response. On the same date, the Center invited the Complainant to submit its comments on this request. On April 25, 2017, the Complainant opposed the requested extension. On the same date, the Center informed the Parties that, in accordance with paragraph 5(b) of the Rules, the Response due date was extended until April 29, 2017. The Response was filed with the Center on April 29, 2017.
The Center appointed Tony Willoughby as the sole panelist in this matter on May 4, 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.
As will be seen from Section 6.B below, an issue has arisen as to the identity of the Respondent. For the reasons given in Section 6.B the Panel treats the second named Respondent, Fidan Chong, as the substantive Respondent and all references herein to the “Respondent” are references to Fidan Chong.
4. Factual Background
The Complainant is a substantial German-based provider of financial services, which has been trading under the name “DekaBank” since 1999. It is the proprietor of a number of trade mark registrations of or including the names “Deka” and “DekaBank”, including by way of example:
European Union Registration No. 01555705 DEKA (word) registered September 10, 2001 (application filed March 14, 2000) in classes 35, 36 and 42 for a variety of financial services;
European Union Registration No. 03772051 DekaBank (device) registered January 24, 2006 (application filed April 19, 2004) in classes 9, 16, 36 and 38 for a variety of financial and telecommunication services.
It is not clear from the evidence precisely when the Respondent acquired the Domain Name. The Complainant has produced evidence unchallenged by the Respondent to the following effect:
For a period up to December 23, 2014 the Domain Name was registered to Jahangir Alizadeh (sic) of Baku, Azerbaijan.
From at least June 7, 2015 to at least July 5, 2016 the Domain Name was registered to Domain Privacy Service FBO Registrant of Burlington, Massachusetts, United States.
From a date unknown to March 27, 2017 the Domain Name was registered to Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States.
As indicated in Section 3 above, on March 29, 2017 the Registrar identified the Respondent as the underlying registrant with an address in New Hampshire, United States.
As to use of the Domain Name the unchallenged evidence of the Complainant (supported by screenshots) is that from December 2014 to September 2016 the Domain Name was linked to a variety of websites including a pay-per-click website, a bank protest website, a Holocaust website and a couple of pornographic websites.
The Domain Name currently redirects to a website at “cleo.mcdir.ru” and features a message reading:
“For all matter regarding your deposits please contact www.ADIF.AZ. Previous version of dekabank.com can be viewed here.
The Financial Market Supervisory Body of the Azerbaijan Republic revoked the licenses of the OJSC “Dekabank” at Resolution # 16 dated July 21, 2016. Regarding to the Article # 22.3.1 of the Law “on deposit insurance” of the Azerbaijan Republic OJSC “Dekabank” withdrawn from the ADIF’s member bank registry and ADIF’s certificates were cancelled.”
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its DEKA and DekaBank registered trade marks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Response is to the effect that the Domain Name was registered in good faith in 2000 by Jahangir Ali-zadeh for and on behalf of DekaBank OJSC, a bank which was originally established in 1989 in the Soviet Union. Following independence of Azerbaijan the bank received its licence from the Central Bank of Azerbaijan. Owing to a severe financial crisis, several of the local depository banks in Azerbaijan had their licences revoked on July 21, 2016. DekaBank OJSC was one of those banks.
Dekabank OJSC is currently undergoing a liquidation procedure “operated by the Azerbaijan Deposit Fund, continues limited operation and expected to restore its activity as a Credit Company later this year”.
The Respondent contends that “the registration of the domain and its current usage of the domain as good faith”.
The Respondent contends that since 2002 there have been several rounds of negotiation between DekaBank OJSC and the Complainant over purchase of the Domain Name by the Complainant. The Respondent annexes to the Response a draft agreement said to have been drafted by the Complainant’s representatives and featuring a purchase price of several hundred thousand euros. The Respondent contends that having agreed all the terms of the agreement the Complainant walked away from the negotiations.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Respondent Identity
The Panel finds it convenient at the outset to deal with the identity of the Respondent. Paragraph 1 of the Rules defines the Respondent as “the holder of a domain-name registration against which a complaint is initiated”. As at March 27, 2017 when the Complaint was filed with the Center, the registrant of the Domain Name identified on the Registrar’s database was the first above-named Respondent, Registration Private, Domains By Proxy, LLC, of Scottsdale, Arizona, United States, a privacy service. Ordinarily, there will be an underlying registrant behind the name of the privacy service and ordinarily on receipt of the registrar verification request from the Center, the name of the underlying registrant will be disclosed. In such circumstances it is common for UDRP panels to treat the underlying registrant as the substantive respondent. On March 29, 2017 the Registrar disclosed in response to the Center’s registrar verification request that the underlying registrant of the Domain Name was the second above-named Respondent, Fidan Chong of Hampton, New Hampshire, United States. In the absence of any special circumstances justifying a different approach, the Panel treats Fidan Chong, the underlying registrant at the time of filing of the Complaint as the substantive Respondent. Henceforth all references to the Respondent are references to Fidan Chong.
For completeness the Panel addresses an unusual circumstance, which has arisen. An earlier registrant of the Domain Name was Jahangir Ali-zadeh of Baku, Azerbaijan. On April 3, 2017 Jahangir Ali-zadeh emailed the Center asking that the registration details for the Domain Name be amended to reinstate him as the registrant of the Domain Name. On April 24, 2017 Jahangir Ali-zadeh requested an extension of time for the filing of the Response and as can be seen above the Center granted an extension until April 29, 2017. A Response filed by Jahangir Ali-zadeh was received by the Center on April 29, 2017. The Response named Jahangir Ali-zadeh and Fidan Chong as joint Respondents and named Jahangir Ali-zadeh as the Respondents’ representative. Nonetheless, as indicated, the Respondent for the purpose of this proceeding is Fidan Chong, not Jahangir Ali-zadeh, but the Panel accepts the Response as the Response of Fidan Chong filed by Jahangir Ali-zadeh in his stated capacity as Respondent’s representative. Jahangir Ali-zadeh is not a party to this proceeding.
C. Identical or Confusingly Similar
The Domain Name comprises the name by which the Complainant is known and the “.com” generic
Top-Level Domain (“gTLD”) identifier. In assessing identity and confusing similarity for the purpose of paragraph 4(a)(i) of the Policy it is permissible for panels to ignore the gTLD identifier where, as here, it serves no purpose other than the technical one.
The Panel is satisfied that the Complainant has registered trade mark rights in respect of its name (see Section 4 above) and that the Domain Name is confusingly similar to those trade marks.
D. Rights or Legitimate Interests
A fundamental defect in the Response is that while it establishes to the satisfaction of the Panel that the Domain Name might have been at one point registered on behalf of a DekaBank trading originally in the Soviet Union and latterly in Azerbaijan, it fails to make any mention of the Respondent, Fidan Chong. The only references to the Respondent are to be found in the heading of the Response and under the Respondent’s contact details. There is nothing in the Response to link the Respondent resident in the United States with the Azerbaijani DekaBank on whose behalf the Domain Name might have been originally registered.
Moreover, while the Respondent contends that “the Respondent is making a legitimate fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”, no attempt is made to answer the Complainant’s evidence as to the uses made of the Domain Name between December 2014 and September 2016 (see Section 4 above), which on any basis were not the uses of a genuine bank.
Furthermore in July 2016, the Complainant contacted the Azerbaijan Deposit Insurance Fund, the proprietor of the domain name <dekabank.az> and the organization referred to in the notice currently appearing on the webpage to which the Domain Name is connected, regarding the Domain Name. At that time the Domain Name was linked to the German subdomain of the pornographic website at “www.pornhub.com”. The response from the Risk Management Specialist at Azerbaijan Deposit Insurance Fund was in these terms: “The content of the website is a damage to our reputation. We will make an effort to contact the owner and close the domain. Unfortunately, Mr. Jahangir Ali-zadeh is no longer the owner of the domain… ”.
In any event, a respondent’s claimed rights or legitimate interests are typically assessed with a view to the circumstances prevailing at the time of the complaint filing, and in the absence of any substantive information as to the Respondent’s identity and the nature of his connection with the Domain Name (other than as the named registrant) the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
Since at least June 2015 the Domain Name has been registered to an entity or entities other than Jahangir Ali-zadeh, he being the individual who appears to have originally registered the Domain Name apparently on behalf of the Azerbaijani Deka Bank OJSC. The Response provides no information on the changes of ownership of the Domain Name since December 2014, when on the evidence before the Panel Jahangir Ali-zadeh was the registered owner of the Domain Name. Clearly, there have been changes of ownership and, in the absence of any evidence linking the parties to those transactions, each transfer is to be treated as a new registration or acquisition of the Domain Name.
The Panel observes that if the Jahangir Ali-zadeh who filed the Response is the same Jahangir Ali-zadeh who was the registrant of the Domain Name up to December, 2014, he is particularly well-qualified to provide the missing information. The fact that he did not do so indicates to the Panel that either he is keen for some reason that that information should be concealed from the Panel or that an unauthorised third party is using his name as a cover.
The subsequent uses of the Domain Name have been inconsistent with the usage one would expect of a reputable bank. For the most part they have been commercial uses and have had German links, whether by inference (the link to the Holocaust website) or the nationality of the operating site (e.g., the German Blockupy website or the pornographic German subdomain of the “www.pornhub.com” website). They have not been uses by or on behalf of the Azerbaijani DekaBank OJSC and they have clearly on the evidence before the Panel been abusive, bad faith uses targeting the reputation and goodwill of the Complainant. If the Respondent had been a good faith registrant/acquirer of the Domain Name, the Response could very easily have answered the Complainant’s allegations and distanced the Respondent from the bad faith uses in question.
In the absence of any explanation from the Respondent as to his involvement, the Panel finds that he acquired the Domain Name aware of the usage made of the Domain Name since December 2014 and either was directly responsible for those uses as the underlying registrant behind Domain Privacy Service FBO Registrant or has allowed his name to be used as a cover for the person responsible.
The Panel finds that the Domain Name was registered and is being used in bad faith.
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, <dekabank.com>, be transferred to the Complainant.
Date: May 18, 2017