WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wüstenrot & Württembergische AG v. DomainsByProxy.com / Sylvie Lemasson
Case No. D2019-2746
1. The Parties
The Complainant is Wüstenrot & Württembergische AG, Germany, represented by Noerr LLP, Germany.
The Respondent is DomainsByProxy.com, United States of America (“United States”) / Sylvie Lemasson, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <asset-ww.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 November 8, 2019. On November 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 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 November 11, 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 November 14, 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 November 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2019.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on December 10, 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 German corporation that conducts financial services. With approximately six million clients, around 13,000 employees, and a total balance sheet of EUR 72 billion.
The Complainant is the owner of a number of trademarks in relation to W&W. As such, the German trademark registration number 39872137 with an application date of December 15, 1998, and registration date of April 6, 1999.
The <asset-ww.com> disputed domain name was registered on August 23, 2018. The disputed domain name resolves to a website that offers financial services. The website prominently uses the WW sign and the Complainant’s address.
5. Parties’ Contentions
The Complainant claims that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The disputed domain name incorporates the Complainant’s mark with the omission of the “&” sign and the addition of the generic term “asset”. Moreover, the generic Top-Level Domain (“gTLD”) “com” should be disregarded for the purposes of the assessment under the first element.
The Respondent has no rights or legitimate interests in respect the disputed domain name. Indeed, the Complainant has not granted authorization to the Respondent to apply or use its trademarks in the disputed domain name. Further, the Respondent is carrying a scam through the website to which the disputed domain name resolves. Effectively, argues the Complainant, the Respondent’s website is posing to be affiliated with the Complainant and aimed at misleading the Complainant’s customers into investing in non-existent funds and other assets.
The Complainant also alleges as follows: the Respondent is using the Complainant’s business address, the Respondent claims to be a licensed and regulated investment firm registered under the legal name “W&W Asset Management, Gmbh”, and the Respodent’s website mentions the Complainant as listed under the French directory of financial brokers. None of such allegations or assesments are accurate, states the Complainant. Rather, the Complainant refers to them as “blatantly false”.
The Complainant has reported to the German Criminal authorities the Respondent’s suspected defrauding of a number of clients.
With regard to the third element, the Complainant contends that the disputed domain name has been registered and is being used in bad faith.
The Complainant asserts that the Respondent’s clear intention in the registration of the disputed domain name is to take unfair advantage of the Complainant’s well-known trademark and to trade upon its reputation.
The Respondent intentionally attracts, for commercial gain, Internet users to the Respondent’s website as the disputed domain name creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Further, having the Respondent develop illegal activities such use is to be considered of bad faith.
The Complainant also states that by concealing the Respondent’s personal data in the WhoIs information the Respondent attempted to frustrate the purposes of the Policy or to make it difficult for the Complainant to protect its trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name is registered and is being used in bad faith.
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration.
A. Identical or Confusingly Similar
According to the file the Complainant has demonstrated registered rights in the W&W trademark. The standing test for confusing similarity involves a comparison between the Complainant’s mark and the disputed domain name. Indeed, a side-by-side comparison between W&W and <asset-ww.com> confirms the reproduction of the predominant textual element of the mark in the disputed domain name.
The mere addition of the term “asset” and “-” or even the removal of the ampersand sign “&” does not prevent confusing similarity. The trademark is recognizable and the term “asset” does not provide distinctiveness. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 1.8.
Further, it is well established in decisions under the UDRP that gTLDs are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
Therefore, the first requirement is met under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In relation to paragraph 4(a)(ii) of the Policy, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name. For such a finding the Panel rests on the following:
The Complainant has not authorized the Respondent to use the W&W trademark in the disputed domain name and the Respondent and the website to which the disputed domain name resolves do not belong or are controlled by the Complainant.
The Complainant has provided evidence that the service displayed by the Respondent attempted to impersonate the Complainant. As such, the Respondent uses the Complainant’s address in its website and reproduces its mark in the disputed domain name and website. Moreover, the Respondent has tried to impersonate a subsidiary of the Complainant.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent’s business purportedly consist in phishing and scam actions.
The Respondent did not offer any rebuttal although it was duly notified of its right to do so. If the respondent fails to come forward with relevant evidence to counter a complainant’s prima facie case, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As set out at paragraph 4(a)(iii) of the Policy, the Complainant is required to show that the Respondent both registered and is using the disputed domain name in bad faith.
The Complaint bases its assertion that the disputed domain name is being registered in bad faith upon “the Complainant´s well-known trademarks and (the Respondent) to trade upon its reputation”. It is apparent to the Panel that the W&W trademark is well-protected, and the Complainant’s statement that the W&W group has six million clients and 13,000 employees has not been rebutted by the Respondent.
Under these circumstances it is very likely that the Respondent was aware of the Complainant at the time it registered the disputed domain name.
The Panel has also considered the subsidiary company of the Complainant, W&W Asset Management GmbH, and the registered domain name <wwasset.de> of the Complainant.
While there are recognized legitimate uses of privacy and proxy registration services, in some exceptional cases it may be an indication of bad faith. As such, where the goal is to block or intentionally delay disclosure of the identity of the actual underlying registrant. See WIPO Overview 3.0, section 3.6. In the present case, the Respondent is allegedly involved in a phishing and fraud scheme. The Panel finds that it is more likely than not that the use of a privacy service was due to the alleged fraud and to hinder a prospective UDRP process.
In any event and according to the record, it is apparent for the Panel that the Respondent has attemped to impersonate the Complainant. As such, the reproduction of the trademark in the disputed domain name and in the website to which it resolves, Respondent’s footnote emails claiming to be a licensed investment firm registered under the legal name “W&W Asset Management, Gmbh” subsidiary of the Complainant, and the reproduction of the Complainant’s business address in the Respondent’s website. Such impersonation is not legitimate and support a finding of bad faith registration and use.
The Panel also notes that the legal notice does not provide information about who really the Respondent is and nothing is stated about the lack of relation between the parties.
Consequently, the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <asset-ww.com> be transferred to the Complainant.
Date: December 18, 2019