WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vonovia SE v. Fabian Green
Case No. D2021-0219
1. The Parties
The Complainant is Vonovia SE, Germany, represented by Habermann, Hruschka & Schnabel, Germany.
The Respondent is Fabian Green, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <vonoviainvest.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 January 26, 2021. On January 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 26, 2021, 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 February 5, 2021 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 February 5, 2021. In response to a notification by the Center regarding the Registrar information, the Complainant filed another amendment to the Complaint on February 5, 2021.
The Center verified that the Complaint together with the amendments 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 February 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2021.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on April 20, 2021. 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 one of the Europe’s leading private residential real estate companies and listed in the German stock market index Deutscher Aktienindex (“DAX”). The Complainant provides its services at the domain name <vonovia.com> which was registered in 2015.
The Complainant is the owner of several trademark registrations for VONOVIA, including the following: European Union Trademark Registration No. 014393144 VONOVIA, registered on November 24, 2015 in inter alia class 36; United Kingdom Trademark Registration No. UK00918134142 VONOVIA, registered on May 22, 2020 in inter alia class 36.
The disputed domain name <vonoviainvest.com> was registered on November 21, 2020, and resolves to a website which offers “trust assets management of the highest quality on the basis of foreign exchange and profitable trade through Bitcoin exchanges”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar with the trademark VONOVIA in which the Complainant has rights; and that the Respondent has no rights or legitimate interest in respect of the disputed domain name, which was registered and is being used in bad faith.
The Respondent uses a fake company name and a falsified certificate of registration as shown on the website. The certificate of incorporation shown there (Annex III to the Complaint) indicates the company No. 11759823, whereas the company registered under that number is Galleon Trade Ltd (Annex IV to the Complaint). Thus, obviously the certificate has been falsified; a company under the name Vonovia Investment does not exist.
The Respondent does not use the disputed domain name to bona fide offer services there. It seems that the disputed domain name is being used to attract consumers being interested in investment in Bitcoins. The services offered via the website of the disputed domain name seem to be fraudulent.
The disputed domain name was registered with the only purpose to mislead possible customers of the Complainant to a fraudulent site, which thereby in fact does considerable harm to the Complainant’s reputation.
Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) the disputed domain name is identical or confusingly similar with 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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has proved that it has rights in the VONOVIA trademark.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel considers that the disputed domain name is confusingly similar with the Complainant’s VONOVIA trademark.
The disputed domain name contains the Complainant’s trademark VONOVIA in its entirety with the word “invest” which does not avoid a finding of the confusing similarity. The “.com” generic Top-Level Domain is viewed as a standard registration requirement and is generally disregarded under the first element confusing similarity test, as set forth in section 1.11 of WIPO Overview 3.0.
Accordingly, the Panel finds that the disputed domain name is confusingly similar with the VONOVIA trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses:
(i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
There is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other circumstances to suggest that the Respondent has rights or legitimate interests in the disputed domain name.
Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather that it intends to use the disputed domain name for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name resolves may be related to the Complainant.
As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” Here, the nature of the disputed domain name carries a risk of implied affiliation.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trade name and trademark VONOVIA mentioned in Section 4. above (Factual Background) when it registered the disputed domain name on November 21, 2020.
The Complainant has submitted evidence to show that its VONOVIA trademarks were registered and used several years before the Respondent registered the disputed domain name. By registering the disputed domain name the Respondent was targeting the Complainant and its business by incorporating the Complainant’s trademark VONOVIA in its entirety plus the additional term “invest” related to the Complainant’s business, with the intention to confuse Internet users.
In view of the evidence produced by the Complainant, it seems that the Respondent uses a fake company information to offer financial investment and management since the certificate of company number 11759823 as shown on the website corresponds to a different company named Galleon Trade Ltd. Thus, it is possible that a company under the name of Vonovia Investment does not even exist and that the relevant certificate could have been falsified.
Be that as it may, the fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name, as well as the nature of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
The Panel finds that the Respondent has registered and used the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark VONOVIA as to source, sponsorship, affiliation or endorsement. This amounts to bad faith under paragraph 4(b)(iv) of the Policy, and the requirements of paragraph 4(a)(iii) of the Policy have been fulfilled.
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 <vonoviainvest.com> be transferred to the Complainant.
Miguel B. O’Farrell
Date: May 3, 2021