WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Vermögensberatung Aktiengesellschaft DVAG v. Elizabeth Moye
Case No. D2021-0301
1. The Parties
The Complainant is Deutsche Vermögensberatung Aktiengesellschaft DVAG, Germany, represented by Göhmann Rechtsanwalte Abogados Advokat Steuerberater Partnerschaft, Germany.
The Respondent is Elizabeth Moye, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dvag.site> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2021. On February 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2021, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the disputed domain name;
(b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint;
(c) indicating the language of the registration agreement is English;
(d) confirming that the registration agreement included an acknowledgement that the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”).
The Center sent an email communication to the Complainant on February 2, 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 3, 2021.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Policy, 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 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2021.
The Center appointed Warwick A. Rothnie 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 a financial and insurance broker operating in Germany, Switzerland, and Austria. It is not clear from the Complaint when it was established but, insofar as Wikipedia may be relied upon, it appears to have been founded in 1975.
Wikipedia claims it has some 14,000 full-time financial consultants and some six million customers. Also according to Wikipedia, the Complainant’s financial report for the 2015 fiscal year claimed EUR 1,255.7 million in revenues and profits of EUR 186 million.
In addition to its offices and branches, the Complainant also promotes its services from a website to which the domain name <dvag.de> resolves. The domain name <dvag.com> redirects to that website.
The Complainant has the following registered trademarks:
(a) German Registered Trade Mark No. 39510643, DVAG, in respect of financial services in International Class 36. The application for this trademark was filed on March 13, 1995 and it was registered on February 1, 1996; and
(b) European Union Trade Mark No. 013293857, DVAG, which was filed on September 24, 2014 and registered on May 1, 2015 in respect of a range of services in International Classes 35, 36, 38, and 42.
According to the Registrar, the disputed domain name was registered by the Respondent on March 10, 2020.
When the Complaint was filed, it resolved to a general search page on <baidu.com>, which the Complainant describes as a Chinese language search engine.
5. Discussion and Findings
No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for DVAG referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of "likelihood of confusion" under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.site” gTLD, the disputed domain name consists solely of the Complainant’s registered trademark. Accordingly, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name.
The Panel therefore finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is plainly not derived from the Respondent's name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
Redirection of the disputed domain name to the Baidu search engine does not constitute a legitimate noncommercial or fair use since, as far as the Panel is aware, the Baidu search engine’s landing page is not known as or described by the letters “dvag” or some combination of words which that combination may represent.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement.
The letter combination “dvag” is not itself a pronounceable word, but could potentially be an acronym for a number of different things or entities. If so, there is no evidence of that before the Panel. Moreover, for the reasons already indicated, the Respondent is not using the alphanumeric string in connection with some such alternative thing or entity. Accordingly, the Respondent cannot rely on that potentiality to claim rights or legitimate interests in the disputed domain name and, indeed, the Respondent has not. See e.g., WIPO Overview 3.0, section 2.10.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
The Complainant contends that the redirection of the disputed domain name to the Baidu search engine’s landing page which is quite unrelated to anything that might be described by, or known as, “dvag” demonstrates the Respondent did not register the disputed domain name in good faith.
In the circumstances of this case, the Panel is prepared to accept that submission. The Complainant is a substantial business in Germany, Switzerland, and Austria. At least the first two pages of a Google search on “dvag” even from a remote location like Australia return results related only to the Complainant. Two listings are not for the Complainant, but for the 2020 F2 Championship winner whom the Complainant sponsors and relate to purchasing memorabilia such as “Michael Schumacher DVAG Cap”. In addition, as already noted, the Baidu search engine landing page does not appear to have any connection with something that may be called or described by the acronym “dvag”.
The Respondent has not sought to dispute the allegations of registration and use in bad faith.
In circumstances where the Respondent has not sought to claim, let alone establish, that he or she has rights or legitimate interests in the disputed domain name, therefore, the Panel finds the Respondent has registered and is using it in bad faith.
Accordingly, the Panel finds the Complainant has established all three requirements under 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 <dvag.site> be transferred to the Complainant.
Warwick A. Rothnie
Date: May 4, 2021