WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LGT Gruppe Stiftung v. Domain Administrator, See PrivacyGuardian.org / Otto James Nanoh
Case No. D2019-0942
1. The Parties
The Complainant is LGT Gruppe Stiftung, Liechtenstein, represented by Isler & Pedrazzini AG, Switzerland.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Otto James Nanoh, United States.
2. The Domain Name and Registrar
The disputed domain name <lgt-online.net> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2019. On April 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 26, 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. The Center sent an email communication to the Complainant on April 29, 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 a first and second amended Complaint, both on May 7, 2019.
The Center verified that the Complaint together with 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, and the proceedings commenced on May 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2019.
The Center appointed John Swinson as the sole panelist in this matter on June 20, 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 is LGT Gruppe Stiftung, a company incorporated in Liechtenstein. The Complainant is a member of the LGT group, a provider of financial services.
The Complainant is the owner of a number of trade marks for LGT, the earliest of which is United States registered trade mark number 2,188,693 registered on September 15, 1998 (“Trade Mark”). The Complainant is also the owner a domain name which incorporates the Trade Mark, being <lgt.com> which was registered on March 3, 1998.
The Respondent is Otto James Nanoh, an individual of the United States. No response was received from the Respondent and therefore little information is known about the Respondent. The Disputed Domain Name was registered on June 25, 2018. The Disputed Domain Name currently resolves to a website displaying pay-per-click (“PPC”) links relating to online banking. Before notice of the dispute, the Disputed Domain Name resolved to a website which replicated the Complainant’s website.
5. Parties’ Contentions
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of the word “online”. The addition of “online” does not diminish the risk of confusion.
Rights or Legitimate Interests
The Respondent does not have rights in the Disputed Domain Name because:
- The Respondent is not commonly known by the term “LGT” and does not have any trade marks registered for LGT.
- There is no prior business relationship between the parties and no affiliation between the Respondent and the Complainant. The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Name.
- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services as the website just displays a PPC page.
Registered and Used in Bad Faith
The Respondent is currently using the Disputed Domain Name in order to operate a website that tries to create the impression that it is associated with the Complainant. The website is almost an exact copy of the website operated by LGT Group under the domain name <lgt.com>.
The website at the Disputed Domain Name also included a section titled “Online Account”, where customers entered in confidential information, including their name and password. The Respondent is engaged in a phishing scam to obtain these details. The Respondent has created the Disputed Domain Name to disrupt the business of the Complainant and to create a danger of confusion with the Complainant’s Trade Mark as to the source and affiliation of the website.
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 enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 onus of proving these elements is on the Complainant even though the Respondent failed to submit a response.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of the word “online”. Where the relevant trade mark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In this case the term “online” does not dispel such similarity, as this is a descriptive term.
The Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant has provided evidence that the website at the Disputed Domain Name has previously resolved to a website which replicated the Complainant’s website. This does not amount to a bona fide use.
- The Panel accepts the Complainant’s submission that the Complainant has not authorised or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The website at the Disputed Domain Name currently resolves to a PPC link page, from which the Respondent presumably derives profit. The Complainant has also provided evidence that the Disputed Domain Name previously resolved to a website, which replicated the Complainant’s website and potentially in connection with a phishing scam. Use in connection with a phishing scam can never confer rights or legitimate interests (see section 3.1.4 of the WIPO Overview 3.0).
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Respondent registered the Disputed Domain Name on June 25, 2018. This is 23 years after the Complainant registered the Trade Mark and commenced operating their business.
In the past, the website at the Disputed Domain Name closely reproduced the Complainant’s website (the Complainant has provided screenshots of this). The Respondent’s website used the Complainant’s Trade Mark and featured the same graphical layout and colour scheme as that used by the Complainant. If a consumer found this website, they likely would have believed that the website was operated by the Complainant.
Given the Complainant’s reputation, and the content displayed on the Respondent’s website, the Panel is convinced that the Respondent was aware of the Trade Mark at the time the Respondent registered the Disputed Domain Name.
The Panel also finds relevant in making this conclusion the Complainant’s submission that the website at the Disputed Domain Name was used in connection with a phishing scheme as the Respondent was collecting personal information. This use is further evidence of bad faith on the part of the Respondent.
The Panel finds that, in reproducing the Complainant’s website in the manner outlined above, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s trade marks as to the source of the website (see paragraph 4(b)(iv) of the Policy, and see, e.g., Karen Millen Fashions Limited v. Leonie Helena, WIPO Case No. D2013-0001).
In light of the above, the Panel finds that the Complainant has succeeded on the third element 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, <lgt-online.net> be transferred to the Complainant.
Date: July 4, 2019