WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ally Financial Inc. v. Zeblon Wachion, Manjoo Inc
Case No. D2018-1721
1. The Parties
The Complainant is Ally Financial Inc. of Detroit, Michigan, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Zeblon Wachion, Manjoo Inc of Vecnap, the Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <allyfinancialinc.com> (“Disputed Domain Name”) is registered with REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2018. On July 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 31, 2018, the Registrar transmitted by email to the Center its verification response disclosing 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 the Complainant on July 31, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. The Complainant filed an amended Complaint on August 3, 2018 and requested that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings.
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 the Respondent of the Complaint in both English and Russian, and the proceedings commenced on August 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2018.
The Center appointed Mariya Koval as the sole panelist in this matter on September 12, 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.
4. Factual Background
The Complainant, being founded in 1919 by General Motors Corporation, is a bank holding company, which provides financial services including online banking, car finance, corporate lending, vehicle insurance, mortgages, credit cards, and brokerage firm services. As on 2018, the Complainant is one of the top auto lenders in the United States and reported net revenue of USD 5.8 billion for 2017 for its online banking.
The Complainant has used its ALLY trademark (“ALLY Trademark”) in connection with financial services since 2009.
The Complainant is the owner of the following ALLY Trademarks in different jurisdictions:
- International Registration No. 981147, registered on September 16, 2008 in respect of services in class 36;
- United States Registration No. 3667814, registered on August 11, 2009, in respect of services in class 36;
- United States Registration No. 4264894, registered on December 25, 2012, in respect of services in class 35;
- European Union Trade Mark Registration No. 013056941, registered on November 26, 2014, in respect of services in class 36.
The Complainant has a strong online presence. It operates the domain names <ally.com> (registered on April 27, 1995) and <allyfinancial.com> (registered on July 31, 2007) through which the Complainant promotes its financial services.
The Disputed Domain Name was registered on March 22, 2018. At the date of this decision, the Disputed Domain Name does not resolve to any active website.
5. Parties’ Contentions
The Complainant asserts that the Disputed Domain Name is confusingly similar to its ALLY Trademark. Adding of a descriptive terms “financial inc” to the Complainant’s ALLY Trademark in the Disputed Domain Name only increases the confusing similarity with ALLY Trademark.
The Complainant further contends that the Respondent registered the Disputed Domain Name significantly after the Complainant filed its ALLY Trademark for registration with the World Intellectual Property Organization, United States Patent and Trademark Office and European Union Intellectual Property Office, and significantly after the Complainant’s Trademark first use in commerce in 2009.
The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name since the Respondent is not commonly known by the Disputed Domain Name, the Respondent is not licensed, authorized or permitted to register domain names incorporating ALLY Trademark.
The Complainant also noticed that the Respondent used the Disputed Domain Name to mislead unsuspecting customers of the Complainant by sending fraudulent emails from […@allyfinancialinc.com] and that the Disputed Domain Name was used, at minimum, to illegitimately increase traffic to the Respondent’s website for personal gain, and, at worst, - to “phish” personal information and steal money from the Complainant’s customers.
The Complainant contends that the Respondent has registered and is using the Disputed Domain Name in bad faith in view of the Respondent has created the Disputed Domain Name which is confusingly similar to the Complainant’s ALLY Trademark, as well as to its <ally.com> and <allyfinancial.com> domain names. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business.
The Complainant further contends that the Respondent was previously using the Disputed Domain Name to intentionally pass off its website as belonging to the Complainant as part of the Respondent’s fraudulent scheme, which demonstrates bad faith registration and use under the Policy, paragraph 4(a)(iii).
In addition, the Complainant asserts that the Respondent ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding that may properly be considered as a factor in finding bad faith registration and use of a domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(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 by the Respondent in bad faith.
6.1. Language of Proceedings
Paragraph 11 of the Rules sets out that the language of the proceeding shall be the language of the Registration Agreement unless the Panel in its discretion determines otherwise. Namely, paragraph 11 allows the Panel to determine the language of the proceeding, which differs from the language of the Registration Agreement, depending on the circumstances of the case.
The Registrar informed the Center that the language of the Registration Agreement for the Disputed Domain Name is Russian. The Complainant has submitted the Complaint in English based on the following factors:
(1) the Complainant’s representative is unable to communicate in Russian and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter;
(2) the term ALLY, which is the dominant portion of the Disputed Domain Name, does not carry any specific meaning in the Russian language;
(3) the additional descriptive terms “financial inc” are English words and do not carry any specific meaning in the Russian language;
(4) the content of the fraudulent email was written in English. There is no content in Russian;
(5) the Complainant previously sent cease-and-desist letters to the Respondent, as provided in the Complaint, and the Respondent had ample time and opportunity to respond to such letters and request that communications continue in Russian but he failed to do so;
(6) it would unduly burden the Complainant to have to arrange and pay for translation where the Respondent has demonstrated behavior that disrupts the Complainant’s business and has already required the Complainant to devote significant time and resources to address this instance of abuse.
The Complainant is an American company where English is a de facto national language. The Complainant’s representative is a Swedish company. Therefore, neither the Complainant nor its representative are able to understand and to communicate in Russian. Forcing the Complainant to translate the Complaint and materials attached thereto, would result in unfair additional expenses for the Complainant and would obviously delay this UDRP proceeding.
The Panel also considers that since the fraudulent emails, which have been sent to the Complainant’s customers by the Respondent, were in the English language it clearly demonstrates that the Respondent is very well familiar with the English language.
Furthermore, the Respondent was informed about this proceeding by the Center’s communications in English and Russian, however he did not make any submission with respect to the language of proceeding.
Having considered all circumstances of this case, the Panel concludes under paragraph 11(a) of the Rules that English shall be the language of the proceeding.
6.2. Substantive Matters
A. Identical or Confusingly Similar
The Complainant has provided the evidence demonstrating that it possesses rights in several ALLY Trademarks in different jurisdictions.
The Disputed Domain Name reproduces the Complainant’s ALLY Trademark in its entirety and the Complainant’s Trademark is clearly recognizable in it. Addition of two generic terms “financial” and “inc” to the Complainant’s ALLY Trademark do not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark. ALLY Trademark and mentioned two generic terms constitute all together the complete Complainant’s company name, namely “Ally Financial Inc”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 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.
The generic Top-Level-Domain (“gTLD”) “.com” is typically not taken into account for purposes of considering the first element under the Policy.
The Panel therefore finds that the addition of the generic terms “financial” and “inc” does not avoid confusing similarity, especially talking into consideration the fact that the Complainant offers financial services and operates the website with the similar domain name <allyfinancial.com>.
In light of the above the Panel finds that the Disputed Domain Name is confusingly similar to the ALLY Trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. Consequently, the Panel considers the Complainant satisfied the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy. The Disputed Domain Name was registered significantly after the ALLY Trademark was used in commerce for the first time. The Panel finds that the Complainant has made out a prima facie case. Previous UDRP panels have held that it is sufficient for the Complainant to prove a prima facie case that the Respondent does not hold rights or legitimate interests in the Disputed Domain Name, see e.g. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Respondent has no connection or affiliation with the Complainant and he was not authorized by the Complainant to use of the ALLY Trademark in any way. There are no evidence or reason for suggestion that the Respondent is commonly known by the Disputed Domain Name.
Having considered the evidence provided by the Complainant, the Panel finds that the Disputed Domain Name was registered and used for the purpose of misleading the Internet users, namely for creating fraudulent email address […@allyfinancialinc.com], from which the Respondent was sending fraudulent emails to the Complainant’s client trying to fool out of his money. Such Respondent’s behavior demonstrates that the Disputed Domain Name was not being used by the Respondent in connection with a bona fide offering of goods and services and for the legitimate noncommercial purpose. According to the WIPO Overview 3.0, section 2.13.1 panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can not confer rights or legitimate interests to a respondent.
The Respondent did not respond to the Complainant’s cease and desists letters and to this Complaint and therefore he has failed the possibility to present any evidences which may show his rights or legitimate interests in the Disputed Domain Name.
In view of the above, the Panel concludes that the Complainant has succeeded on the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four non-exhaustive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name.
The Panel finds that since the Disputed Domain Name completely incorporates not only the Complainant’s ALLY Trademark, but also the Complainant’s company name, it makes it clear that the Respondent was well aware about the Complainant, its ALLY Trademark and its business activity.
The Panel also finds that the Respondent was using the Disputed Domain Name for fraudulent scheme, namely for sending fraudulent and misleading emails that demonstrates clear bad faith use. Moreover, it is obvious that the Respondent registered and was using the Disputed Domain Name with the only purpose to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s ALLY Trademark and company name as to the source, sponsorship, affiliation.
At the time of initial filing of the Complaint the Respondent used of a privacy service. In accordance with the WIPO Overview 3.0, section 3.6 where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith.
Further, the Respondent did not respond to the cease and desist letters and reminder emails sent by the Complainant as an attempt to resolve the dispute without initiating of the administrative proceeding, that also evidences the Respondent’s bad faith registration and use of the Disputed Domain Name, see e.g. Inter IKEA Systems B.V. v. PrivacyProtect.org / LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2012-0309.
Therefore the Panel concludes that the Disputed Domain Name was registered and is being used in bad faith within the meaning of the paragraphs 4(a)(iii) and 4(b) of the Policy. Accordingly, the Panel concludes that the third element of the Policy has been satisfied.
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 <allyfinancialinc.com> be transferred to the Complainant.
Date: September 25, 2018