WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dukascopy Bank SA v. Domain Admin, Whois Privacy Corp.
Case No. D2018-0478
1. The Parties
The Complainant is Dukascopy Bank SA, Mr. Laurent Bellières, International Center of Cointrin (ICC) of Geneva, Switzerland, represented by Walder Wyss SA, Switzerland.
The Respondent is Domain Admin, Whois Privacy Corp. of Bahamas.
2. The Domain Name and Registrar
The disputed domain name <dukascopy.pro> (the “Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2018. On March 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 5, 2018, 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 March 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2018.
The Center appointed Olga Zalomiy as the sole panelist in this matter on April 9, 2018. 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.
On April 11, 2018, the Complainant sent an unsolicited email to the Center stating that “a swift decision of the Panelist is crucial given the continuous misbehavior of the Respondent.” Paragraph 10 of the UDRP Rules vests the panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. “Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel.”1 Moreover, “the party submitting … unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance).” Because the Complainant’s unsolicited filing contained no material information, the Panel disregarded it.
4. Factual Background
The Complainant is a Swiss bank, which owns trademark and service mark registrations for the DUKASCOPY mark, such as:
- International Trademark Registration for the DUKASCOPY mark, No. 752642, registered on January 30, 2001.
- Swiss Trademark Registration for the DUKASCOPY mark, No. 585516, registered on April 20, 2009.
The Respondent registered the Domain Name on August 10, 2017 and initially used it to direct to a website criticizing the Complainant’s services and promoting services of the Complainant’s competitor. Currently, the Domain Name redirects users to a website “www.dukascopy-obman.com”.
On October 6, 2017, the Complainant sent the Respondent a cease-and desist letter. The letter informed the Respondent about the Complainant’s trademark rights and about the Respondent’s infringement of the Complainant’s trademarks. The next day, in response to the Complainant’s email, the Respondent sent an email informing the Complainant that it uploaded a response to the Complainant’s contentions on the website “www.dukascopy.pro”.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to the trademarks and service marks of the Complainant because it is comprised of the Complainant’s trademark DUKASCOPY.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant claims that the Domain Name directs to a website in Russian, which is highly critical of the Complainant’s services and which promotes services of StForex, a competitor of the Complainant. The Complainant alleges that it has not given any consent to the Respondent to use its trademark and corporate name or for any other purpose. The Complainant argues that the content of the Respondent’s website is libelous.
The Complainant contends that the Respondent registered and is using the Domain Name in bad faith. The Complainant alleges that the Respondent registered the Domain Name after launch of the Complainant’s websites and that the Respondent was aware of the Complainant’s websites, which enjoy great popularity among users of online financial services. The Complainant claims that the Respondent expressly refers to the Complainant and the Complainant claims that the Respondent’s website heavily criticizes and defames the Complainant and its business. The Complainant claims that the Respondent is using the Domain Name to divert users to the Respondent’s website and StForex competing services and to disrupt the Complainant’s business. The Complainant claims that the Respondent’s registration of the Domain Name with a privacy service, indicates bad faith because of the manner in which such service is used. The Complainant claims that the Respondent used the privacy service to mask its identity and avoid being contacted or sued by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); 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.
A. Identical or Confusingly Similar
To prove this element, the Complainant is required to establish that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The Complainant has established its rights in the DUKASCOPY trademarks and service marks by submitting copies of the registered DUKASCOPY marks. Pursuant to Section 1.2.1 of the WIPO Overview 3.0, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.
It is well established that “[w]here a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”2
Here, the Domain Name consists of the Complainant’s DUKASCOPY trademark, and generic Top-Level Domain (“gTLD”) suffix “.pro”. The Domain Name incorporates the Complainant’s trademark in its entirety. The addition of the gTLD “.pro” is disregarded under the confusing similarity test. Therefore, the Domain Name is identical or confusingly similar to the DUKASCOPY trademark.
Thus, the Complainant proved the first element of the UDRP.
B. Rights or Legitimate Interests
To prove the second UDRP element, the Complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant claims that there is no evidence of the Respondent’s use of the Domain Name in connection with a bona fide offering of goods or services. Instead, the Complainant claims that the Respondent exploits the Complainant’s name and trademark to direct Internet users to its website in attempt to steer away Complainant’s clients to the Respondent’s benefit.
Paragraph 4(c) of the UDRP gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, including this one on which the Respondent relies:
“(iii) the Respondent is making a legitimate noncommercial or 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.”
As a previous Panel stated: “is clear that the requirements that must be satisfied for a respondent to be able to demonstrate rights or legitimate interests in a domain name under paragraph 4(c)(iii) of the Policy are: (i) the respondent’s use of the domain name must be legitimate; (ii) that legitimate use must be either a noncommercial use or a fair use; and (iii) the effect of that use must not be commercial gain through either misleadingly diverting consumers or tarnishing the complainant’s trademark”3.
Here, the evidence shows that the website connected to the Domain Name used to promote services of StForex, a competitor of the Complainant and contain criticism of the Complainant’s services. Currently, the Domain Name redirects to a website “www.ducascopy-obman.com”. The “www.ducascopy-obman.com” also promotes other competitors of the Complainant: BullTraders and HQBroker and contains links to their websites. It is more likely than not that the Respondent’s activities are commercial in nature and that the Respondent obtains commercial gain from diverting users competitors of the Complainant. The Panel, therefore, finds that the Respondent’s criticism is not noncommercial.
Even if the Respondent’s criticism website is genuinely noncommercial, its right to legitimate criticism doesn’t extend to use the Domain Name identical to the Respondent’s DUCASCOPY trademark. It is well-established that “a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., <trademark.tld> (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech”4. In such situations, UDRP “panels tend to find that this creates an impermissible risk of user confusion through impersonation”5. Here, the Respondent is using the Domain Name to falsely convey an association with the Complainant in order to divert Internet users to websites of third parties. Such use is not a legitimate.
The Panel finds that the Complainant has made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name shifted to the Respondent. Because the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
Because the Respondent has failed to rebut the Complainant’s case, the Panel holds that the second element of the UDRP has been satisfied.
C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
Pursuant to paragraph 4(b) of the UDRP, any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant contends that the Respondent’s website contains defamatory statements. The Panel notes that it does not have to make a determination as to truth or falsehood of the disparaging statements made on the Respondent’s websites. Such determination is outside the scope of the limited UDRP proceeding. The Panel has to determine only whether the Respondent’s criticism site supports finding of the Respondent’s bad faith registration and use of the Domain Name.
It is likely that the Respondent registered the Domain Name to disrupt business of a competitor. The Respondent registered the Domain Name identical to the Complainant’s trademark to direct to a website, which criticizes the Complainant’s services and promotes services of its competitors. The Domain Name contains no indication that it is not associated with the Complainant or that it resolves to a criticism website.
It is likely that it will mislead users into believing that the Domain Name resolves to a website, which is endorsed by or associates with the Complainant, in order to thereby divert users who are searching for the Complainant, to a website, which disparages the Complainant. This conclusion is supported by the fact that the Respondent failed to submit a response in this case or to provide any evidence of the Domain Name good faith registration and use.
The Panel also finds that the Respondent’s use of a privacy service to register the Domain Name supports finding of bad faith registration and use. While use of the privacy service per se is not illegitimate6, it is an indication of bad faith when it is “employed to prevent the complainant and panel from knowing the identity of the actual underlying registrant of a domain name”7. Here, the Respondent registered both the Domain Name and the <ducascopy-obman.com>, to which the Domain Name currently redirects, using the same privacy service to disrupt the Complainant’s business and to misleadingly divert the Complainant’s customers.
All these factors cumulatively produce an overwhelming inference of bad faith registration and use. The Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the UDRP.
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 <dukascopy.pro> be transferred to the Complainant.
Date: April 20, 2018
1 Section 4.6., the Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).