WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vontobel Holding AG v. WhoisGuard Protected, WhoisGuard, Inc. / World Developers, Worlddev
Case No. D2019-0887
1. The Parties
The Complainant is Vontobel Holding AG, Switzerland, represented by Wild Schnyder AG, Switzerland.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / World Developers, Worlddev, United States of America.
2. The Domain Name and Registrar
The disputed domain name <vontobelcapital.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2019. On April 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 18, 2019, the Registrar transmitted by email to the Center its verification 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 April 24, 2019, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 24, 2019.
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 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2019.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on May 27, 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.
4. Factual Background
The Complainant states that it is an internationally active corporation in the field of banking and finance. It is the holding company for the Vontobel Group of companies (the “Group”) which have activities in the field of private banking, investment banking, asset management and investment solutions with operations in 26 international locations.
As of December 31, 2018, the Complainant held around CHF 171 billion of client assets. The registered shares of the Complainant are listed on the Swiss Stock Exchange. Vontobel families and the Vontobel Foundation continue to hold the majority shares and votes in the company.
Relevant to these proceedings, the Complainant states that the Group has a strong presence in the United Kingdom (“UK”) via the company Vontobel Asset Management UK Holdings Ltd with registered domicile in London, and via registered London branches of Vontobel Asset Management S.A. and of Bank Vontobel Europe AG.
The Complainant also states that it has a strong Internet presence through its primary website “www.vontobel.com” as well as its various social media platforms including Facebook, Twitter, and LinkedIn.
The Complainant is the owner of several trademark registrations across multiple jurisdictions and consisting of, or containing the mark VONTOBEL, including but not limited to:
- Swiss Registration no. 2P-406720 VONTOBEL, registered on November 12, 1993;
- International Registration no. 611299 VONTOBEL, registered on November 12, 1993, and designating Armenia, Australia, Austria, Azerbaijan, Benelux, Bosnia and Herzegovina, Bulgaria, China, Croatia, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Italy, Japan, Kazakhstan, Kyrgyzstan, Liechtenstein, Lithuania, Norway, Poland, Romania, Russian Federation, Singapore, Slovakia, Spain, Sweden, Turkey, Ukraine, UK, and Uzbekistan;
- European Union Registration no. 003260106 VONTOBEL, registered on February 16, 2005;
- UK Registration no. 1566152 VONTOBEL, registered on August 4, 1995.
These are collectively referred to as the “VONTOBEL Mark”.
The Respondent registered the disputed domain name <vontobelcapital.com> on December 10, 2018. At the time, the disputed domain name resolved to a website which offered investment and trading services relating to cryptocurrencies.
5. Parties’ Contentions
The Complainant asserts its rights in the VONTOBEL Mark. The Complainant contends that the disputed domain name is confusingly similar to its VONTOBEL Mark. It states that the disputed domain name incorporates the Complainant’s VONTOBEL Mark in its entirety with the addition of the term “capital” and the generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that the addition of the term “capital” does not eliminate the similarity between the disputed domain name and the Complainant’s VONTOBEL Mark; the term “capital” is widely and commonly used for financial services and its use enhances the risk of confusion since it points to the Complainant’s business area.
The Complainant also contends that the Respondent has no rights in respect of the disputed domain name; the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the VONTOBEL Mark. Further, there is no evidence that the Respondent has been commonly known by the disputed domain name.
The Complainant also contends that the Respondent has no legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent’s use of the disputed domain name is for deceptive and fraudulent purposes to take advantage of the Complainant’s well-established trademark to attract customers to invest in cryptocurrency mining and trading.
Finally, the Complainant contends that the disputed domain name was registered in bad faith and in full knowledge of the Complainant’s rights. The Complainant states that the website corresponding to the disputed domain name lists a company name “Vontobel Capital”, and that it is stated on the website that a company in London has been registered (“To date we have registered company in London. We are in the jurisdictional area of the UK as law-abiding taxpayers; we are in a timely manner accountable for our actions.”).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) That the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its registrations in relation to its VONTOBEL Mark in Switzerland, Europe Union and the UK, as well as other countries worldwide. In addition, the Complainant’s main website for all Internet activities and information services is “www.vontobel.com”. Accordingly, it is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the VONTOBEL Mark and that the VONTOBEL Mark is distinctive with a history of use going back to 1936. The Panel is satisfied that the Complainant is well-known by its VONTOBEL Mark as an “internationally active corporation” in the field of “private banking, investment banking, asset management and investment solutions.”
The Panel finds that the disputed domain name contains as a first and dominant element the Complainant’s VONTOBEL Mark, combined with the term “capital” which is descriptive of the services provided by the Complainant. It has been held that use of such generic term does not prevent confusing similarity (See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); Vontobel Holding Ltd. v. Portfolio Brains, LLC, WIPO Case No. D2009-1725). The Panel agrees, finding that use of the word “capital” is likely to mislead consumers into believing that the disputed domain name is related to the Complainant’s business or services in the financial field. The Panel also notes that it is well established that the addition of the gTLD “.com” may be disregarded for the purposes of comparison under the first element.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s VONTOBEL Mark.
Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements:
(i) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) That 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 overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Complainant has stated, and the Panel accepts, that it has not authorized the Respondent to use its VONTOBEL Mark and the Respondent is not a licensee of the Complainant.
The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons:
(i) At the time of registering the disputed domain name, the Respondent must have been aware of the Complainant, its VONTOBEL Mark and associated trademarks, the Complainant’s exclusive rights in those trademarks and the goodwill residing with those trademarks. The Panel accepts the Complainant’s assertion that its VONTOBEL Mark is internationally well-known in the financial field and that the Complainant and its VONTOBEL Mark have a strong presence in the UK where the Respondent states it has established its business.
(ii) Further, paragraph 2 of the UDRP puts a burden on registrants where it states “by applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party … It is your responsibility to determine whether your domain name infringes or violates someone else’s rights.” A most cursory trademark or other online search or any online search of existing domain names prior to the Respondent registering the disputed domain name would have instantly revealed the Complainant and its trademarks. See in this regard section 3.2.3 of the WIPO Overview 3.0.
The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons:
(i) Throughout the website the Respondent is at pains to emphasize that this is an official website (“We welcome visitors on the official website of vontobel capital!”; “We welcome visitors on the official website of World Crypto Miners and Traders!”; “OFFICIALLY REGISTERED COMPANY”). The website further states “When you are choosing vontobel capital, first of all you choose a permanent and reliable partner with whom you will be able to work for the next few years”. In combination, these are designed to indicate to the visitor that the site is part of or connected with the Complainant.
(ii) Further, the website to which the disputed domain name resolves offers investment and trading services relating to cryptocurrencies. There are a number of references to the consumer making a capital gain from cryptocurrency investment. The Panel accepts that the Respondent’s use of the VONTOBEL Mark together with the term “capital” will create a likelihood of confusion with the Complainant’s VONTOBEL Mark and associated trademarks as to the source, sponsorship, affiliation, or endorsement of the website. Consumers visiting the website corresponding to the disputed domain name will be confused, misled or deceived into believing that the website is connected with or a subsidiary of the Complainant.
(iii) The likelihood of confusion is further created by the Respondent’s providing on the website to which the disputed domain name resolves details of their company name (“Vontobel Capital”) and the company’s Certificate of Incorporation. The Complainant has provided in evidence in Annex 13 of the Complaint, a copy of the official incorporation documentation for Vontobel Capital Ltd, UK from the UK Companies Office. The reference to a company name incorporating the Complainant’s VONTOBEL Mark, together with seemingly legitimate documentation is likely to lead consumers to believe mistakenly that they are dealing with either the Complainant or one of its subsidiary or associate companies.
(iv) The Panel is entitled to have regard to the lack of any response from the Respondent. In addition to the Complaint, which is unanswered, the Complainant sent a warning letter to the contact email address provided on the website corresponding to the disputed domain name, but this was never answered.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of 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 <vontobelcapital.com> be transferred to the Complainant.
Andrew Brown Q.C.
Date: June 4, 2019