WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telenor ASA v. Rade Mackovic
Case No. D2017-1922
1. The Parties
The Complainant is Telenor ASA of Fornebu, Norway, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Rade Mackovic of Belgrade, Serbia.
2. The Domain Name and Registrar
The disputed domain name <telenorbank.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 October 2, 2017. On October 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2017, 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 October 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2017.
The Center appointed Adam Samuel as the sole panelist in this matter on November 16, 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
The Complainant provides a variety of media communication services. It owns a number of trademarks for TELENOR, including United States of America registration no. 2086746 registered on August 12, 1997. It offers its services through a number of domain names, notably <telenor.com>, registered on October 9, 1998.
The disputed domain name was registered on April 10, 2014. The website at the disputed domain name currently resolves to a parking page.
5. Parties’ Contentions
The Complainant has been operating in the Respondent’s home country since 2006 when it acquired Serbia’s first mobile phone operator which is now a leading mobile phone operator there. In creating the disputed domain name, the Respondent has added the generic descriptive term “bank” to the Complainant’s TELENOR trademark.
The Respondent is not commonly known by the disputed domain name. The Respondent is using the disputed domain name to host a parked webpage with click-through advertisements for various companies and products. The Complainant and its TELENOR trademark are known internationally with trademark registrations in numerous countries including Serbia.
By registering a domain name that incorporates a generic descriptive term “bank” at the end of the Complainant’s TELENOR trademark, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business.
The presence of third-party, pay-per-click links at the dispute domain name’s website is evidence of bad faith registration and use. The Respondent either registered the disputed domain name and thereafter took no further action to use the disputed domain name or the Respondent proactively elected to participate in the Registrar’s “CashParking” service in order to receive revenue from the links placed on the website. Either approach represents bad faith registration or use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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
The disputed domain name consists of the Complainant’s trademark which is a made-up name and two additional elements: the generic word “bank” and the generic Top-Level Domain (“gTLD”) “.com”. The gTLD is irrelevant here because it does not affect the meaning of the disputed domain name. The word “bank” is also immaterial under this test because its generic nature does not prevent the key or predominant part of the disputed domain name from being the Complainant’s trademark. This case comes firmly within section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which says:
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is not called “Telenorbank” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademark. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s trademark is a made-up name and is known in the Respondent’s country as a famous brand. This suggests that the Respondent knew of the Complainant’s activities when the Respondent registered the disputed domain name.
In this Panel’s view, without a Response, one is left with three possible motives for the Respondent’s decision to register and use the disputed domain name even in the apparently passive way that it has utilized it: to disrupt the Complainant’s relationship with their customers or potential customers, to attract Internet users to the disputed domain name for potential gain or persuade the Complainant to buy the disputed domain name from him for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith. The Respondent’s motivation may have been more than one of these and perhaps all three.
For these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith for the purposes of the Policy. The Panel does not need to reach a decision on any of the other allegations made by the Complainant.
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, <telenorbank.com>, be transferred to the Complainant.
Date: November 18, 2017