WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BKS Bank AG v. WhoisGuard Protected, WhoisGuard, Inc. / Mikell Karo
Case No. D2020-0575
1. The Parties
The Complainant is BKS Bank AG, Austria, represented by Schonherr Rechtsanwalte GmbH, Austria.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Mikell Karo, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <bksonlinesa.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2020. On March 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2020, 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 March 10, 2020 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 March 12, 2020.
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 March 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2020. The Respondent did not submit any formal response. The Respondent did submit informal emails, on March 15 and April 4, 2020, which confirms that the Respondent is aware of these proceedings.
The Center appointed Ellen Shankman as the sole panelist in this matter on April 28, 2020. 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 date of the Domain Name registration is January 7, 2020.
The trademark BKS serves as a house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions worldwide.
The Complainant provided evidence of multiple trademark registrations for the mark BKS and BKS BANK including, inter alia, International Registration No. 1229364 for BKS (registered on September 9, 2014) and International Registration No. 821772 for BKS BANK (registered on March 8, 2004) both for word marks that predate the date of the Domain Name registrations for a variety banking services.
The Complainant also provided screenshots of a website that previously resolved that imitates BKS bank services and which invites the user to provide personal information.
The Panel also conducted an independent search to determine that the Domain Name currently resolves to webpage advertising Microsoft Outlook services.
5. Parties’ Contentions
The Complainant, founded in 1922, is a universal bank based in Klagenfurt (Carinthia, Austria) and serves both private and business customers, and has been a listed company since 1986. The Complainant operates its banking and leasing business in Austria and several neighboring countries, including Hungary and Italy. The Complainant is a member of the 3 Banken Group (German: “3 Banken Gruppe”), which alongside Complainant consists of Oberbank AG and Bank für Tirol und Vorarlberg Aktiengesellschaft.
The Complaint alleges that the Complainant’s balance sheet total assets was EUR 8.4 billion as of December 31, 2018. As per December 31, 2018 the Complainant employed 1,119 people and operated 63 bank branches throughout Austria, Slovenia, Croatia, and Slovakia. Currently, the Complainant has about 164,400 customers (143,000 private customers and about 21,400 corporate customers)
The Complainant operates its principal website under “www.bks.at”. This website contains information on the Complainant’s activities and background and is available in several languages supporting the international business of the Complainant. The Complainant offers its online-banking services under <bksbankonline.at>. Furthermore, Complainant is‚ inter alia, operating and holding the following other domain names containing the element “BKS”; <bksbank.si>, <bks.hr>, <bksbank.sk>, <bksbank.it>, <bks.hu>, <bks.co.at>, <bks.online>, <bksbank.at>, and <bksbank.com>.
The identity of the actual registrant was originally concealed by a privacy protection shield, and the Respondent was later identified to be an individual in Nigeria. The Complaint alleges that on the websites to which the Domain Name resolves by the (so far known) subdomain names <isav.bksonlinesa.com>, <savs.bksonlinesa.com>, and <isavingsonline.bksonlinesa.com> banking services are offered under the Complainant’s trademarks, images of events held by the Complainant and references to multiple details of the Complainant’s business (“BKS Bank, headquartered in Klagenfurt, Austria employs around 1,200 people and operates banking and leasing operations in Austria, Slovenia, Croatia and Slovakia”) falsely presenting themselves as the principal website of the Complainant. The websites are therefore without any doubt clearly intended for fraudulent purposes. Consequently, the websites contain an online-banking registration and login form inviting visitors to provide the Respondent with sensitive data. On the landing page of the website to which the said subdomains resolve an email address incorporating the Domain Name is provided as a contact address.
The Complaint contends that the Domain Name integrates the Complainant’s famous marks BKS and the distinctive element of the Complainant’s marks BKS BANK in their entirety with the addition of the descriptive elements “online” and “sa” (indicating a certain type of public corporation) and that the presence of the element “online” reinforces the association with the Complainant to the extent that it provides online services, which is common in the banking sector. Most of the remaining content and structure of the website was clearly blatantly copied from a well-known website-copier tool.
The Complainant argues that it has not Iicensed or otherwise permitted the Respondent to use any of its trademarks or similar signs. Also, the current use of the Domain Name by the Respondent does not imply any legitimate interests of the Respondent but to the contrary, it is clearly a fraudulent use. The registration and use of the Domain Name is an intentional attempt to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the Respondent deliberately registered the Domain Name incorporating the sign BKS, which is identical to the Complainant’s trademark BKS. Obviously, also by choosing the Domain Name, the Respondent intends to create the misleading impression that its business is at least closely associated with the Complainant, and to have a free ride on the fame and goodwill of the Complainant’s trademarks and profit from consumer confusion. The Respondent is using the Domain Name in order to raise traffic on its web portal and to obtain commercial gain from the false Impression created tor the Internet users with regard to an affiliation/identity with the Complainant thereby likely being fraudulently induced to provide the Respondent with sensitive and valuable data. As a consequence, the Domain Name has been registered and is being used in bad faith.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark BKS, in respect of a financial goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the terms “online” and “sa” to the term “BKS” does not prevent a finding of confusing similarity. Therefore, the Domain Name <bksonlinesa.com> could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and used in bad faith
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for BKS.
Further, the Panel finds that the Domain Name integrates the Complainant’s mark BKS and the distinctive element of the Complainant’s marks BKS BANK in their entirety with the addition of the descriptive elements “online” and “sa” (indicating a certain type of public corporation). This is consistent with the UDRP panel’s finding in a similar case regarding the Complainant’s trademarks and the domain name <bks-online.com>, see BKS Bank AG v. James H Park, WIPO Case No. D2016-2065.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the dictionary term “online” with the letters “sa” to the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is persuaded that the Respondent deliberately registered the Domain Name incorporating the sign BKS, which is identical to the Complainant’s trademark BKS to create a misleading and fraudulent impression of association and confusion with the Complainant. The content of the website clearly shows that the Respondent was well aware of the Complainant’s activities and trademarks and intended opportunistically to benefit on the goodwill of the Complainant’s trademarks and to profit from consumer confusion, and to obtain sensitive and valuable data in bad faith.
As a note, the Panel finds the informal communications from the Respondent to be disingenuous in their expression of surprise that the Domain Name was confusingly similar, and their offer of a settlement is read by the Panel as a solicitation by the Respondent for financial compensation – both factors that support the Panel’s finding that the Domain Name was registered in bad faith.
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark BKS and uses it for the purpose of misleading and diverting Internet traffic and for opportunistic fraudulent behaviour.
Furthermore, the evidenced use of the Domain Name to resolve to a website impersonating the Complainant and phishing sensitive financial data constitutes use in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.4.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, and the fraudulent imitative website, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) 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 Domain Name <bksonlinesa.com> be transferred to the Complainant.
Ellen B. Shankman
Date: May 8, 2020