WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nomura International Plc v. Name Redacted
Case No. D2021-0654
1. The Parties
The Complainant is Nomura International Plc, United Kingdom, represented by Potter Clarkson AB, Sweden.
The Respondent is Name Redacted.1
2. The Domain Names and Registrar
The disputed domain names <nomura-au.com> and <nomura-aus.com> are registered with Eranet International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2021. On March 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 7, 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 amended Complaint on April 12, 2021.
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 April 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2021.
The Center appointed William F. Hamilton as the sole panelist in this matter on May 5, 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 part of the Nomura Group, a financial services company offering asset management, retail banking, and investment banking. The Nomura Group has a presence is over 30 countries and has 26,000 employees globally. The main operating entity of the Nomura Group in Australia is Nomura Australia Ltd., which includes offices in Sydney, Australia. The Complainant is the registered proprietor of the Nomura Group’s substantial global intellectual property portfolio.
The Complainant is the owner of several registrations of the mark NOMURA (the “Mark”) including European Union Trademark No. 002615136, registered on August 10, 2005 and United Kingdom Trademark No. UK00002169140, registered on June 4, 1999. The Complainant also has rights in the Australian Trademark Registration No. 1181807 for a stylized version of the Mark obtained on October 22, 2007.
The Respondent registered the disputed domain name <nomura-au.com> on November 16, 2020 and registered the disputed domain name <nomura-aus.com> on December 6, 2020. The disputed domain names do not resolve to any active websites, and have been used to send fraudulent emails.
5. Parties’ Contentions
The Complainant asserts the disputed domain names are confusingly similar to the Mark because the disputed domain names are composed by appending the geographical designations “au” and “aus” to the Mark. The Complainant asserts that the Complainant never authorized the Respondent to use the Mark, that the Respondent is not known by the Mark, and that the Respondent has never engaged in any bona fide commercial activity in connection with the Mark. The Complainant also asserts the Respondent has registered and used the disputed domain names in bad faith as part of a sophisticated email scheme to defraud and trick persons into paying money to the Respondent while believing that the investment was being made with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and,
(iii) the disputed domain names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s Mark.
The disputed domain names are composed by the addition of the geographic designators “au” and “aus” (commonly used to signify Australia) to the Complainant’s Mark separated by only a hyphen. A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish confusing similarity for the purposes of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7; Nomura International Plc / Nomura Holdings, Inc. v. Global Domain Privacy / Nicolas Decarli, WIPO Case No. D2016-1535 (transferring <nomura-bank.com>).
See also WIPO Overview 3.0, section 1.8 (“where the relevant trademark is recognizable with the disputed domain name, the additions of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”); Nomura International Plc and Nomura Holdings, Inc. v. Whois Privacy Protection Service, Inc. / PUK SERVICES, WIPO Case No. D2015-2036 (transferring <nomuralabuan.com>).
The generic Top-Level Domain (“gTLD”), in this case “.com”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1.
The Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain names or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain names or is commonly known by the disputed domain names. The Complainant has established a prima facie case in its favor which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain names. The Respondent did not respond to the Complaint.
The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds the disputed domain names were registered and are being used in bad faith.
The annexes to the Complaint establish that the disputed domain names were registered after the Complainant obtained its Mark, and are being used to facilitate a fraudulent email scheme whereby the Respondent impersonated employees of the Complainant to trick persons who thought they were dealing with the Complainant into transferring funds to the Respondent. The registration and use of a disputed domain name as part of a fraudulent scheme constitutes bad faith. Comerica Bank v. Will Rote, WIPO Case No. D2016-0419; see also WIPO Overview 3.0, section 3.1.4. (“The use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing […] is manifestly considered evidence of bad faith”).
Aside from the Respondent’s fraudulent scheme, the disputed domain names do not resolve to any active websites, and it is difficult to conceive of any use that the Respondent might make of the disputed domain names without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003; Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 (where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred); DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH, WIPO Case No. D2021-0109 (transferring <dpdcouriercompany.com>).
The Complainant has met its burden 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 disputed domain names <nomura-au.com> and <nomura-aus.com> be transferred to the Complainant.
William F. Hamilton
Date: May 19, 2021
1 The Respondent appears to have used the name of a third party when registering the disputed domain names. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain names, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.