WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Raiffeisen Centrobank AG v. Domains By Proxy, LLC / Levan Asatiani, Joshua Development LTD
Case No. D2018-2911
1. The Parties
The Complainant is Raiffeisen Centrobank AG of Vienna, Austria, internally represented.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Levan Asatiani, Joshua Development LTD of Roseau, Dominica.
2. The Domain Name and Registrar
The disputed domain name <centrobanc.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 December 20, 2018. On December 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2019, 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. On January 11, 2019, the Complainant submitted an amendment to the Complaint. On January 14, 2019, the Center sent an email communication to the Complainant on providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a second amendment to the Complaint on January 16, 2019.
The Center verified that the Complaint together with the amendments 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 January 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2019.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 13, 2019. 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 February 19, 2019, the Panel issued the Procedural Order No. 1 requesting the Complainant to submit a copy of the trademark certificate demonstrating rights in the CENTROBANK trademark as well as evidence of the claimed well-known status of said mark in Europe.
On February 22, 2019, the Complainant submitted to the Center by email a copy of the European Union trademark registration certificate for CENTROBANK as well as 14 documents mentioning awards received by the Complainant and 88 documents reproducing mentions of the Complainant in various economic media mediums such as Financial Times and APA Economic News Services. The Respondent did not submit any comments on the evidence submitted by the Complainant.
4. Factual Background
The Complainant is an Austrian bank and leader in the structured products market. It is the owner of the European Union registration No. 005665005 of December 21, 2007 for the word mark CENTROBANK in class 36 for “financial affairs; monetary affairs”.
The disputed domain name <centrobanc.com> was registered on March 1, 2018 and currently resolves to an active webpage trading Foreign Exchange (Forex), cryptocurrency, and PAMM (Percentage Allocation Management Module).
5. Parties’ Contentions
The Complainant asserts to be a registered and supervised credit institution, headquartered in Austria, providing financial services in Europe, part of the “Raiffeisen Group”, with its CENTROBANK brand being the main distinctive feature that differentiates it from the other entities within the group.
Moreover, the Complainant claims to be well known in Europe, in particular in Austria and the Central and Eastern European Countries (Albania, Bulgaria, Croatia, the Czech Republic, Hungary, Poland, Romania, Slovakia, Slovenia, and the three Baltic States: Estonia, Latvia and Lithuania).
The Complainant further asserts that the disputed domain name is confusingly similar to its registered CENTROBANK trademark, especially in view of the offering of financial services under the disputed domain name.
As to the Respondent’s lack of rights or legitimate interests, the Complainant contends that the Respondent (i) has no intellectual property rights over CENTROBANC; and (ii) is offering financial services without a license or registration to do so, according to the Austrian and Liechtenstein financial market authorities (Annexes 3 and 4 to the Complaint).
Lastly, the Complainant alleges that the disputed domain name was registered and is being used in bad faith since the Respondent is using it to offer financial services, “hop[ing] that investors might confuse [the disputed domain name] with the name and trademark of the Complainant” and requests that the disputed domain name be transferred.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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 in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present so as to have the disputed domain name transferred, according to the Policy.
A. Identical or Confusingly Similar
The Complainant has established rights in the CENTROBANK trademark.
The disputed domain name only differs from the Complainant’s trademark in view of the substitution of the consonant “k” for “c”. Given, however, that such letters are here phonetically equivalent the Panel finds the disputed domain name confusingly similar with the Complainant’s CENTROBANK trademark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In spite of the Complainant’s extremely brief and undetailed submissions (Complaint and reply to the Procedural Order No. 1), that the Austrian and Liechtenstein financial market authorities have issued an “investor warning” stating that the owner and/or operator of the website at the disputed domain name is not authorized (Annexes 3 and 4 to the Complaint) to offer financial services in such countries is a strong indication of the Respondent’s lack of a bona fide offering of goods or services.
Also, there is no indication in the record that the Complaint might have licensed or otherwise authorized the Respondent to use the CENTROBANK trademark.
Furthermore, the absence of any indication that the Respondent has rights in a term corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate the Panel’s finding of the absence of rights or legitimate interests.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found when “(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other 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”.
In the present case, the Respondent’s conduct, while offering financial services, does not provide any physical address or details relating to where it would be established, indicates a clear lack of bona fide offering of goods or services, creating a likelihood of confusion with the Complainant’s mark and potential tarnishment of the Complainant’s mark.
For the reasons stated above, the Respondent's conduct has to be considered, in this Panel's view, as bad faith registration and use pursuant to 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 <centrobanc.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: March 4, 2019