WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vontobel Holding AG v. WhoisGuard, Inc., WhoisGuard, Inc. / Ellen Wong

Case No. D2020-1409

1. The Parties

The Complainant is Vontobel Holding AG, Switzerland, represented by Wild Schnyder AG, Switzerland.

The Respondent is WhoisGuard, Inc., WhoisGuard, Inc., Panama / Ellen Wong , United States of America (“United States” or “U.S”).

2. The Domain Name and Registrar

The disputed domain name <vontobelprivate.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 June 3, 2020. On June 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 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 June 15, 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 amendment to the Complaint on June 17, 2020.

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 June 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2020.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on July 29, 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 Complainant is the renowned Swiss financial conglomerate VONTOBEL, established in 1936.

The Complainant obtained numerous registrations for the trademark VONTOBEL in several regions of the world, including:

- The Swiss Registration No. 2P-406 720 VONTOBEL of July 22, 1993 with use priority of 1936;

- The International Registration No. 611299 VONTOBEL of November 12, 1993, with priority of July 22, 1993;

- The European Union Trademark No. 003260106 VONTOBEL of July 8, 2003, with various seniorities of November 12, 1993.

The Respondent registered the disputed domain name <vontobelprivate.com> on March 12, 2020.

The Panel accessed the disputed domain name on August 10, 2020, at which time the disputed domain name pointed to a website offering finance and banking services under the brand VONTOBEL PRIVATE BANK.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant owns many Swiss and International trademark registrations for the trademark VONTOBEL. The only differences between the disputed domain name and the Complainant’s trademark is the addition of the generic word “private” and the adjunction of the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark is confusingly similar to such trademark for purposes of the Policy, despite the addition of common or generic words. The term “private” is widely and commonly used in connection with financial services and is hence lacking distinctiveness. Both the terms “private bank” and “private banking” are common terms in the banking industry referring either to a type of a bank (“private bank”) or to certain banking services (“private banking”). Hence, the addition of the term “private” even enhances the risk of confusion, since it points to the Complainant’s business area, namely banking. Also, it has been confirmed in many previous decisions that all Top-Level Domains such as “.com”, “.net”, “.org” and “.biz” do not affect the domain names for the purpose of determining whether they are identical or confusingly similar to a mark. Finally, the Complainant’s VONTOBEL trademark enjoys a valuable reputation and goodwill, which furthers the likelihood of confusion.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. A complainant is required to make a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the trademark VONTOBEL or to register the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name. The Respondent is not making a noncommercial or fair use of the disputed domain name, without intent for commercial gain. Quite to the contrary, the Respondent has been using the disputed domain name for commercial gain by misleadingly diverting the Complainant’s consumers.

The disputed domain name was registered and is being used in bad faith. The Complainant was founded in 1936 and is currently well known in the fields of finance and banking. Under the disputed domain name, the Respondent operates a website that offers a broad selection of competing financial services. The addition of the generic word “private” in the disputed domain name is highly unlikely to be fortuitous: it is obviously due to the Respondent’s awareness or knowledge of the Complainant and its activities as well as the Respondent’s intention to exploit or free-ride on the Complainant’s mark VONTOBEL. An additional indicator for the Respondent’s bad faith is its use of the Swiss Cross. By using the Swiss Cross, the Respondent clearly makes a reference to Switzerland, although there are no indications whatsoever of any relation between the Respondent and Switzerland. The website resolving under the disputed domain name appears to be to a large extent a mere copy of the South African bank Mercantile Bank. The Respondent is concealing its identity while offering financial services – as must be assumed – without any official authorization to provide such services. The Respondent, by using the disputed domain name, attracts consumers seeking the website of the Vontobel Group to the Respondent’s own website for commercial gain.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark 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.

A. Identical or Confusingly Similar

The Panel has no doubt that “Vontobel” is a term directly connected with the Complainant’s finance and banking services.

Annexes 6 – 8 to the Complaint shows trademark registrations for VONTOBEL obtained by the Complainant as early as in 1993.

The trademark VONTOBEL is wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark VONTOBEL merely by the addition of the suffix “private”, which is a commonly used to refer to “private bank” or “private banking” in the financial system.

Previous UDRP decisions have found that the mere addition of descriptive terms to a trademark in a domain name do not avoid a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).

It is already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; 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 at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The present record provides no evidence to justify the registration of the disputed domain name by the Respondent, reproducing the Complainant’s famous trademark. Also, there is no justification for linking it to a website offering competing services and reproducing the look and contents of a third party financial conglomerate (the South African bank Mercantile Bank).

The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

When the disputed domain name was registered by the Respondent in 2020, the trademark VONTOBEL was already directly connected to the Complainant’s banking services for many decades.

The disputed domain name encompasses the trademark VONTOBEL. The addition of the suffix “private” even enhances the risk of confusion in the present case, suggesting that the disputed domain name refers to the Complainant’s “private bank” or “private banking services”.

According to, section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.

The Complainant also brought evidences that the website published at the disputed domain name reproduces the design and contents of the South African bank Mercantile Bank. Even some reports originally related to the South African bank have been reproduced as if they refer to the Respondent.

The website at the disputed domain name also reproduces the VONTOBEL trademark, together with the suffix “Private Bank”.

Therefore, the Panel concludes that it is totally unlikely that the Respondent was not aware of the Complainant’s trademarks – specially for a company purportedly in the financial field - and that the adoption of the disputed domain name was a mere coincidence.

In the Panel’s view, the circumstances of this case, as well as the lack of any plausible good faith reason for the use of the trademark VONTOBEL, for the adoption of the term “vontobelprivate” and for the reproduction of contents related to a third bank, are enough in this Panel’s view to characterize bad faith registration and use in the present case.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 <vontobelprivate.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: August 12, 2020