WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dukascopy Bank SA v. Domain Admin, Whois Privacy Corp.
Case No. D2019-1459
1. The Parties
The Complainant is Dukascopy Bank SA, Switzerland, represented by Walder Wyss SA, Switzerland.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and Registrar
The disputed domain names <dukascopy-obman.com> and <dukascopy-otzyvy.com> are 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 June 24, 2019. On June 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 28, 2019, 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 July 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2019. The Respondent sent an email communication on July 9, 2019. The Center notified the Parties of the commencement of panel appointment process on July 30, 2019.
The Center appointed Assen Alexiev as the sole panelist in this matter on August 15, 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 was founded in 2004 by Mr. Andrey Duka, and operates a Forex trading platform. The Complainant employs more than 170 people. The Complainant has a large Russian clientele and a representative office in the Russian Federation established in 2013, authorized by the Central Bank of the Russian Federation.
The Complainant is the owner of the following trademark registrations for DUKASCOPY (the “DUKASCOPY trademark”):
- the International trademark DUKASCOPY with registration No. 752642, registered on January 30, 2001 for services in International Classes 9, 36, and 42; and
- the International trademark DUKASCOPY with registration No. 1013119, registered on April 27, 2009 for services in International Classes 35, 36, and 38.
The official website of the Complainant is located at the domain name <dukascopy.com>. The Complainant is also the owner of the domain names <dukascopybank.com>, <dukascopy-bank.com>,
<dukascopy-bank.net>, and <dukascopyasia.com>.
The disputed domain name <dukascopy-obman.com> was registered on March 8, 2018, and the disputed domain name <dukascopy-otzyvy.com> was registered on March 15, 2018. They resolve to websites that accuse the Complainant of carrying out fraudulent activities.
5. Parties’ Contentions
The Complainant submits that the source of its corporate name and of the DUKASCOPY trademark is the name of its founder, Mr. Andrey Duka. According to the Complainant, the disputed domain names are confusingly similar to the DUKASCOPY trademark in which the Complainant has rights, as they incorporate the trademark. The addition of the Latin transliteration of the Russian word “oбмaн,” which translates in English as “fraud” does not distinguish the disputed domain name <dukascopy-obman.com> from the DUKASCOPY trademark.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not given consent to the Respondent to use the DUKASCOPY trademark, the Respondent has no relationship with the Complainant, and has not used the disputed domain names in connection with a bona fide offering of goods or services.
According to the Complainant, the Respondent purposefully exploits the goodwill of the Complainant to attract Internet users to its websites where the Complainant is the subject of a defamation campaign aimed at redirecting these users to competitors of the Complainant for commercial gain. The Complainant points out that the accusations of the Respondent have no basis since the Complainant was lawfully granted a banking license in 2010 and a securities dealer license in 2013 by the Swiss Financial Market Supervisory Authority, and has no records in the Thomson Reuters World-Check One database.
The Complainant submits that in the proceeding in Dukascopy Bank SA v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2018-0478, the Complainant obtained the transfer of the domain name <dukascopy.pro> from the Respondent. In the course of that proceeding, the Respondent registered the disputed domain names and then placed on them content that was similar to the content of the website, associated to the domain name <dukascopy.pro>. Thus, the Respondent continued its defamation campaign against the Complainant and its services.
The Complainant points out that the disputed domain name <dukascopy-obman.com> means “dukascopy-fraud.com” when translated to English. On the top of the websites associated to the disputed domain names the Respondent solicits visitors to leave their email addresses in order to use a so-called “chargeback” service to get money back from the Complainant. After a visitor submits its email address, it is contacted by representatives of the “chargeback.me” website with an offer to use their legal services in order to get money back from the Complainant. In this way, the Respondent is using the DUKASCOPY trademark to advertise the services of the “chargeback.me” website. According to the Complainant, the “chargeback.me” website is under the control of the same persons who control the disputed domain names, because this website has the same style and the registrant of the <chargeback.me> domain name uses the same privacy service provider as the registrant of the disputed domain names. The Complainant further points out that the Respondent is redirecting visitors of the disputed domain names to two brokers which target the Russian market and provide investment services competing with those of the Complainant.
The Complainant contends that the disputed domain names have been registered and used in bad faith.
The Respondent is aware that the Complainant enjoys popularity among many users of online financial services, potential investors and clients, journalists, etc. Through its websites, the Respondent attempts to convince Internet users that the Complainant conducts fraudulent activities and thus to disrupt the Complainant’s business and to attract potential customers of the Complainant and redirect them to financial services providers that compete with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the Respondent has registered and is using the disputed domain names in bad faith.
The Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”.
In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it.
A. Identical or Confusingly Similar
The Complainant has provided evidence of the registrations of the DUKASCOPY trademark and has thus established its rights in it for the purposes of the Policy.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain Name (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain names.
The relevant part of the disputed domain name <dukascopy-obman.com> is therefore the sequence “dukascopy-obman”, and the relevant part of the disputed domain name <dukascopy-otzyvy.com> is the sequence “dukascopy-otzyvy”. Each of them consists of the element “dukascopy”, to which “obman” and respectively “otzyvy” is added, and these word elements are separated by a hyphen. The “dukascopy” element in both disputed domain names is identical to the DUKASCOPY trademark. The element “obman” is a Russian word meaning “fraud”, and the element “otzyvy” is a Russian word meaning “reviews”. The “dukascopy” element of each of the disputed domain names is their dominating element, and the inclusion of the descriptive Russian language elements meaning “fraud”, and respectively “reviews” and of the separating hyphen does not prevent a finding of confusing similarity between each of the disputed domain names and the DUKASCOPY trademark.
In view of the above, the Panel finds that the disputed domain names are confusingly similar to the DUKASCOPY trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent is not affiliated to the Complainant, that it has not been authorized to use the DUKASCOPY trademark, and that the Respondent uses the disputed domain names for defamation websites that feature false allegations against the Complainant and moreover links to commercial competitors of the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
The Respondent has not replied to the Complainant’s contentions and has not alleged that it has rights and legitimate interests in the disputed domain names and has not disputed the Complainant’s allegations in this proceeding.
As submitted by the Complainant, a previous dispute between the Parties was resolved in the proceeding in Dukascopy Bank SA v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2018-0478, where the Complainant obtained the transfer of the domain name <dukascopy.pro> from the Respondent. The disputed domain names were registered in the course of that proceeding and are confusingly similar to the DUKASCOPY trademark which was first registered 17 years earlier. They resolve to websites that contain statements that the Complainant is carrying out fraudulent activities and moreover include commercial links to competitors of the Complainant. Despite the critical terms in the disputed domain names, the Respondent seems to obtain commercial gain from diverting users to competitors of the Complainant.
In view of the above and in the lack of any denial by the Respondent, the Panel is satisfied that the Respondent, being aware of the goodwill of the Complainant’s DUKASCOPY trademark, has registered and used the disputed domain names in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s websites and divert them to competitors of the Complainant, likely for a commercial gain. In the Panel’s view, such use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and therefore does not give rise to rights and legitimate interests of the Respondent in the disputed domain names.
Therefore, the Panel finds that the Complainant has met its burden under the second element.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
As discussed above, the disputed domain names fully incorporate the DUKASCOPY trademark and are linked to websites that contain statements that claim the Complainant is carrying out fraudulent activities and yet contain links to competitors of the Complainant. They were registered in the course of another proceeding between the Parties under the Policy, where the Respondent was found to have registered and used in bad faith another domain name that was also confusingly similar to the DUKASCOPY trademark.
Taking all the above into account, and in the lack of any Response or any evidence to the contrary, the Panel accepts that it is more likely than not that the Respondent has registered and used the disputed domain names in bad faith targeting the Complainant, and that by creating a likelihood of confusion with the Complainant’s DUKASCOPY trademark, the Respondent has attempted to attract traffic to the disputed domain names, to disrupt the business of the Complainant and to divert Internet users to the Complainant’s competitors for commercial gain.
Therefore, the Panel finds that the disputed domain names have been registered and used in bad faith.
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 names <dukascopy-obman.com> and <dukascopy-otzyvy.com> be transferred to the Complainant.
Date: August 29, 2019