WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BKS Bank AG v. WhoisGuard Protected, WhoisGuard, Inc. / david Earl, linkorion
Case No. D2020-1922
1. The Parties
The Complainant is BKS Bank AG, Austria, represented by Schonherr Rechtsanwalte GmbH, Austria.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / david Earl, linkorion, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <bks3enscom.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 July 23, 2020. On July 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 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 July 24, 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 July 29, 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 August 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2020.
The Center appointed Alistair Payne as the sole panelist in this matter on September 2, 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 a bank based in Austria that was founded in 1922 and which became a publicly listed company in 1986. It operates through 63 branches in Austria, Slovenia, Croatia, and Slovakia and has representative offices in Hungary and Italy. It has a very significant balance sheet, employs more than 1,100 people and has more than 191,000 customers. The Complainant owns various trade mark registrations for its BKS trade mark, including in particular Austrian trade mark registration AT 278266 for the BKS word mark with an application date of April 17, 2014 and a registration date of May 28, 2014. It operates its main website at “www.bks.at” and its on-line banking services at “www.bksbank-online.at” and owns 9 other domain names containing its BKS mark. It is a member of the “3 Banks Group” (German: “3 Banken Gruppe”), which alongside the Complainant consists of Oberbank AG and Bank für Tirol und Vorarlberg AG.
The disputed domain name was registered on May 21, 2020. It resolves to three sub-domain names <en-s.bks3enscom.com>, <en-savs.bk3enscom.com>, and <en-isv.bks3enscom.com\> at which banking services are offered under the Complainant’s trade mark and name.
5. Parties’ Contentions
The Complainant submits that it owns registered trade mark rights for its BKS mark as described above. It says that the disputed domain name wholly incorporates the Complainant’s BKS trade mark with the addition of various descriptive elements, as follows: the numeral “3” being a reference to the Complainant being a member of the “3 Banks Group”, “ens” which the Complainant says is a reference that indicates an official status of the bank and “com” which it submits is an abbreviation for “commercial” or a reference to the respective Top-Level domain. The Complainant submits that the addition of these descriptive references does not avoid a finding of confusing similarity under this element of the Policy.
The Complainant says that it has not licensed or otherwise permitted the Respondent to use any of its trade marks or similar signs. It says that the current use of the disputed domain name by the Respondent does not suggest any legitimate use, but rather is clearly a fraudulent use and as a result, the second element under the Policy is not satisfied.
As far as bad faith is concerned, the Complainant submits that the Respondent deliberately registered the disputed domain name incorporating the BKS mark which is identical to the Complainant’s trade mark. It says that the Respondent appears to want to mislead and deceive Internet users into believing that the website at the disputed domain name is the Complainant’s website. Further, it notes that the website content shows that the Respondent was well aware of the Complainant’s activities and trade marks and therefore the possibility that the Respondent registered a “fantasy” name or that the registration of the disputed domain name occurred incidentally, can be excluded.
In essence the Respondent says that the Complainant is using the disputed domain name in order to raise traffic on its web portal and for commercial gain from the false impression of affinity or identity with the Complainant in order to induce visitors to provide the Respondent with sensitive and valuable data. This says the Complainant is evidence that the disputed domain name has been registered and is being used in bad faith.
The Complainant also suggests that the registrant data disclosed by the Registrar may not be accurate. It notes that the registrant’s name being “david Earl” is not consistent with the registrant’s Gmail address using “mikell” as the surname. The Complainant notes that in a previous case (BKS Bank AG v. WhoisGuard Protected, WhoisGuard, Inc. / Mikell Karo, WIPO Case No. D2020-0575) it was against a respondent by the name of Mikell Karo, also from Nigeria and also a case of a fraudulent website used in bad faith as confirmed by the UDRP panel’s decision in that case. The Complainant also notes that as far as it is aware there is no city called, “Washington” in Nigeria and therefore it submits that the Respondent has used not only a privacy protection shield to hide its identity but may also still be concealing its identity by using false contact details.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns Austrian trade mark registration AT 278266 for the BKS word mark with an application date of April 17, 2014 and a registration date of May 28, 2014. The disputed domain name wholly incorporates the Complainant’s BKS trade mark and is therefore confusingly similar to that mark. The fact that the disputed domain name also includes a number of elements such as “3”, “ens”, and “com”, as so described by the Complainant, does not detract from this finding. Accordingly, the Panel finds that the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate Interests
The Complainant has submitted that it has not licensed, or otherwise permitted, by the Respondent to use any of its trade marks or similar signs. It asserts that the current use of the disputed domain name by the Respondent does not suggest any legitimate use, but rather is clearly a fraudulent use.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut this case and for this reason and also for the reasons set out under Part C below the Panel finds that the Complaint also succeeds under this element of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered in May 2020, many years after the Complainant’s original trade mark registrations and in particular some 6 years after the date of its Austrian registration AT 278266. The Panel notes that the Complainant is a publicly listed company and a substantial bank with interests both in Austria and various other European countries. As a result of the apparent reputation that attaches to the Complainant’s BKS mark in the banking sector in Central Europe and because of the fact that the web site at the disputed domain name includes the legend “BKS Bank …3 Banken Gruppe”, which obviously is a reference in German to the “3 Banks Group” in Europe of which the Complainant is one member, the Panel finds that the Respondent must have been aware of the Complainant’s business and BKS brand and mark when it registered the disputed domain name.
While the website at the disputed domain name is presented as being in respect of a bank headquartered in Sandusky, Ohio in the United States, there are various indicators that this is not the case and that it is most likely a fraudulent site. Firstly, the bank at this website is presented as the BKS Bank and a reference is included in German to it being a member of the “3 Banken Gruppe” in Central Europe, of which the Complainant is a member and which based on the evidence presented by the Complainant does not have an American bank member. Secondly, it appears that some of the content and structure of the site was copied from the website at “www.civista.bank”, a bank headquartered in Sandusky, Ohio based on evidence submitted by the Complainant from a website-copier tool that shows various elements of source code being the same on both sites. Thirdly, the website contains an online banking registration and login form inviting visitors to provide the Respondent with sensitive data but in the “contact us” section of the sub-domains there is only a contact form but no email address or direct contact details.
Finally, there are various inconsistencies with the contact data provided upon registration of the disputed domain name. It appears that the registrant data disclosed by the Registrar may not be accurate. The Complainant suggests that the registrant’s name being “david Earl” is not consistent with the registrant’s Gmail address using “mikell” as the surname. The Complainant notes that in a previous case (BKS Bank AG v. WhoisGuard Protected, WhoisGuard, Inc. / Mikell Karo, supra) it was against a respondent by the name of Mikell Karo, also from Nigeria and also a case of a fraudulent website used in bad faith as confirmed by the UDRP panel’s decision in that case and it suggests that the common use of the name “Mikell” in conjunction with a similar site is more than a coincidence. Further, the use of a privacy protection shield to hide the Respondent’s identity is consistent with it attempting to conceal its identity by using false contact details and not with a bona fide regulated banking operation. The fact that the Respondent has not even attempted to rebut or explain these discrepancies is itself indicative of likely fraudulent or bad faith intent.
Overall, the circumstances point to it being more likely than not the website at the disputed domain name is fraudulent and is being used possibly as a phishing site for fraudulent purposes or is otherwise being used in bad faith. The Panel therefore finds that the disputed domain name has not only been registered in bad faith but is being used in bad faith and that the Complaint also succeeds under this element 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 disputed domain name <bks3enscom.com> be transferred to the Complainant.
Date: September 11, 2020