WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banque de Luxembourg, SA v. WhoisGuard Protected, WhoisGuard, Inc. / Sperk Dray

Case No. D2019-1958

1. The Parties

The Complainant is Banque de Luxembourg SA, Luxembourg, represented by MEYER & Partenaires, France.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Sperk Dray, United States of America.

2. The Domain Name and Registrar

The disputed domain name <privatebdl.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 August 12, 2019. On August 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 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 August 15, 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 amended Complaint on August 20, 2019.

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, and the proceedings commenced on August 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2019.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 16, 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 a banking institution from Luxembourg. It is the owner, amongst others, of the following trademark registration (Annexes D1 – D3 to the Complaint):

- European Union Trade Mark Registration No. 015436934 for the composite mark BANQUE DE LUXEMBOURG and BDL device, filed on May 13, 2016 and registered on September 26, 2016.

The disputed domain name <privatebdl.com> was registered on April 30, 2019 and was used in connection with a website offering financial services depicting the Complainant’s trademark and contact details. Currently, the disputed domain name resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts to have started its activities in the 1920s having become nowadays one of Luxembourg’s leading private banks. According to the Complainant, it has become commonly known by the acronym BDL, also used as a part of its communication and email addresses “…@bdl.lu”.

According to the Complainant, its trademark is clearly recognizable in the disputed domain name as it incorporates the Complainant’s acronym and dominant element of its logo, similarly as to what has already been found in, Banque de Luxembourg, SA v. WhoisGuard Protected, WhoisGuard, Inc. / Antonio Dia, WIPO Case No. D2019-0495 <bdl-lu.com>, where the Panel stated that “the Complainant does have recognizable trademark rights in the letters BDL by virtue of its EU trademark registration No. 015436934, which incorporates the acronym as a dominant element of the logo, and by virtue of extensive common law use”. Therefore the Complainant contends that the addition of the word “private” associated with its BDL acronym renders the disputed domain name identical or confusingly similar to the Complainant’s previous rights.

As to the absence of rights or legitimate interests, the Complainant argues that:

i. the Respondent is not related to the Complainant, not being an agent or carrying business with it, also not having been licensed or authorized to make any use or apply for the registration of the disputed domain name;

ii. the use made of the disputed domain name by the Respondent offering banking and insurance services online under the name “Banque de Luxembourg” associated with the BDL monogram, indicating the Complainant’s postal address, specific email address and telephone number, also providing a section for the submission of personal data by Internet users (Annex C.1), characterizes a fake website, where the Respondent sought to impersonate the Complainant, pretending to be or to act on behalf of the Complainant, cannot be considered a bona fide offering of goods or services under the Policy; and

iii. the present non-use of the disputed domain name further cannot be considered as conferring rights or legitimate interests on the disputed domain name to the Respondent.

In what it relates to the bad faith registration and use of the disputed domain name, the Complainant asserts that the Respondent’s knowledge of the Complainant’s trademark is evident, in view of the reproduction of the Complainant’s name, acronym, logo, address in the webpage that resolved from the disputed domain name (Annex C.1 to the Complaint). In addition to that, the disputed domain name, according to the Complainant, has been used in an attempt to impersonate the Complainant for fraudulent purposes, a clear evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established its rights in the BANQUE DE LUXEMBOURG and BDL device, which is partially incorporated in the disputed domain name and thus recognizable within the disputed domain name, what fulfills the standing test required by the Policy, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 1.7.

As previously found in Banque de Luxembourg, SA v. WhoisGuard Protected, WhoisGuard, Inc. / Antonio Dia, WIPO Case No. D2019-0495 <bdl-lu.com>, “the Complainant does have recognizable trademark rights in the letters BDL by virtue of its EU trademark registration No. 015436934, which incorporates the acronym as a dominant element of the logo, and by virtue of extensive common law use”. In addition to that, considering the overall facts and circumstances of this case, the addition of the term “private” is not sufficient to prevent a finding of confusing similarity.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the 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 domain name, even if it has not acquired trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In that sense, the Complainant indeed states that the Respondent is not related to it, not being an agent or carrying business with it, also not having been licensed or authorized to make any use or apply for the registration of the disputed domain name.

Also, the absence of any trademarks or trade names registered by the Respondent 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 absence of rights or legitimate interests.

The Respondent has used the disputed domain name to offer banking and insurance services online under the name “Banque de Luxembourg” associated with the BDL monogram, indicating the Complainant’s postal address, specific email address, and telephone number, as well as to collect personal data of Internet users (Annex C.1), which indicates that the Respondent sought to impersonate the Complainant, pretending to be or to act on behalf of the Complainant and that cannot be considered a bona fide offering of goods or services under the Policy.

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)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the reproduction of the Complainant’s name and trademark BANQUE DE LUXEMBOURG associated with the BDL monogram, indicating the Complainant’s postal address, specific email address, and telephone number which appears to be used in connection with fraudulent purposes to collect Internet users personal data (as seen above).

The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt of misleadingly diverting Internet consumers for its own commercial gain, possibly in connection with fraudulent financial activities.

For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.

7. Decision

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 <privatebdl.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: September 30, 2019