WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nomura International Plc. v. Michael Connie, Privacy Protection / JM Lundgren
Case No. D2021-0913
1. The Parties
The Complainant is Nomura International Plc., United Kingdom, represented by Potter Clarkson LLP, Sweden.
The Respondent is Michael Connie, Privacy Protection, Poland / JM Lundgren, Poland.
2. The Domain Names and Registrars
The disputed domain names <nomurafinance.com> and <nomuragroupfinance.com> are registered with Hosting Concepts B.V. d/b/a Registrar.eu. and Hosting Ukraine LLC (ua.ukraine) (the “Registrars”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2021. On March 26, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 27 and March 29, 2021 the Registrars transmitted by email to the Center its verification responses disclosing registrants and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on March 31, 2021, providing the registrants 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 1, 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”).
On March 31, 2021, the Center sent an email to the Parties both in English and Russian regarding the language of the proceedings. On April 1, 2021, the Complainant confirmed its request that English be the language of the proceedings and relied on respective arguments in the Complaint. The Respondents have not provided any comments regarding the language of the Proceedings.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on April 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 7, 2021.
The Center appointed Taras Kyslyy as the sole panelist in this matter on May 19, 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 key company within the Nomura financial services group. Nomura was founded in 1925 in Osaka, Japan and since that date has grown to have a presence in over 30 countries, employing over 26,000 employees globally. The wider Nomura group has USD 409.2 billion worth of assets under its control as of March 2020. The Nomura group offers a range of financial services across a large number of jurisdictions including asset management, retail banking and investment banking.
The Complainant owns numerous registrations for its NOMURA trademark in various jurisdictions, including United Kingdom trademark registration No. UK00002169140, registered on June 4, 1999.
The Complainant and its related companies are also the proprietors of several websites containing the Complainant’s trademark, including the global home page at “www.nomura.com” registered in 1994 and “www.nomuraholdings.com” registered in 2001.
The disputed domain name <nomurafinance.com> was registered on January 20, 2021 and resolved to a website pretending to be of the Complainant’s and prominently featuring the Complainant’s trademark. The disputed domain name was used for fraudulent actions, in particular the victim had been contacted from email account [...]@nomurafinance.com and followed by telephone from individuals fraudulently claiming to be from the Complainant to collect sensitive information and make the victim to transfer funds.
The disputed domain name <nomuragroupfinance.com> was registered on February 19, 2021 and resolved to a website having common details with the other disputed domain name.
The disputed domain names referred to the same contact details including address and email.
At the time of the decision the disputed domain names do not resolve to any active websites.
5. Parties’ Contentions
The disputed domain names are identical or confusingly similar to the Complainant’s trademark. The addition of the terms “finance” or “groupfinance” to “nomura” do not provide the disputed domain names with their own distinctive character. NOMURA has no natural meaning in English or German and is therefore clearly the dominant distinctive element of the disputed domain names.
The Respondents have no rights or legitimate interests in the disputed domain names. The Complainant has not authorized or licensed the Respondents to use its trademarks for the purpose of registering the disputed domain names, for use on any web site or otherwise. The Respondents are capitalizing on the reputation and goodwill of the Complainant’s trademark for the purpose of committing acts of fraud against the public from email accounts registered under the disputed domain names to elicit both sensitive financial information, and fraudulently request a transfer of funds from those victims. The Respondents are not commonly known by the disputed domain names.
The disputed domain names were registered and are being used in bad faith. The intention in registering the disputed domain names have been solely to induce public into providing sensitive information to the Respondents and/or to deceive those individuals into transferring funds to parties not associated with the Complainant, under the false belief that the victims were being contacted by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant requested the Panel to hear the present dispute brought against two respondents as a consolidated Complaint.
Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition”.
Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents, in part, as follows: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
The Complainant asserts, among other things, that the Respondents should be treated as one respondent in this proceeding, as the Respondents appear to be the same person controlling connected websites with similar content and contact details. The Panel accepts these arguments in favor of consolidation and grants the request to consolidate the Respondents into one proceeding. Hereafter, the Panel will refer to the Respondents as “the “Respondent”.
B. Language of Proceedings
The language of the Registration Agreement for the disputed domain name <nomuragroupfinance.com> is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.
According to section 4.5.1 of the WIPO Overview 3.0, previous panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.
The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since (i) the disputed domain name used to resolve to a website with entire content in English and German, (ii) emails sent using the disputed domain name were in German, (iii) English is the language of the Registration Agreement for one of the disputed domain names under the common control of the Respondent. The Complainant also believes that the language of the proceedings shall be English, otherwise due to additional costs and undue delay the Complainant would be unfairly disadvantaged by being forced to translate the Complaint to Russian.
The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference but did not do so.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
C. Identical or Confusingly Similar
According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLD “.com” for the purposes of the confusing similarity test.
According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that the disputed domain names incorporate the entirety of the Complainant’s trademark.
According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that the addition of terms “group” and “finance” in the disputed domain names does not preclude finding of the confusing similarity.
Considering the above the Panel finds the disputed domain names are confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain names.
The Respondent is not commonly known by the disputed domain names, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain names could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).
The disputed domain names used to redirect Internet users to a website with a logo similar to the Complainant’s and designed to make the Internet users believe that they actually access the Complainant’s website. Past UDRP panels confirmed that such actions prove registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598, Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211).
According to section 2.13.1 of the WIPO Overview 3.0, prior UDRP Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. According to section 2.13.2 of the WIPO Overview 3.0 Panels are generally not prepared however to accept merely conclusory or wholly unsupported allegations of illegal activity, including counterfeiting, even when the respondent is in default. On the other hand, panels have found that circumstantial evidence can support a complainant’s otherwise credible claim of illegal respondent activity. In the present case the Panel finds that the provided customer's complaint addressed to the Complainant due to fraudulent activities at the disputed domain name prove it was used for illegal activity and thus cannot confer rights or legitimate interests on the Respondent.
The Respondent has no right or legitimate interests in the disputed domain names resolving to an inactive websites (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302).
Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
The Respondent’s use of the disputed domain names to offer services pretending to be the Complainant shows that at the time of the registration of the disputed domain names the Respondent clearly knew and targeted Complainant’s prior registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location. In this case, the disputed domain names were resolving to websites featuring the Complainant’s trademark and falsely pretended to be the Complainant’s local website to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website and its products. The Panel finds the above confirms the disputed domain names were registered and used in bad faith.
The use of the disputed domain names for the illegitimate activity is manifestly considered evidence of bad faith (see, e.g., Skyscanner Limited v. WhoisGuard Protected, WhoisGuard, Inc. / petrov petya, WIPO Case No. DCC2020-0003).
According to section 3.4 of the WIPO Overview 3.0, prior Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. The Panel finds that in the present case use of one of the disputed domain name to send deceptive emails constitutes bad faith by the Respondent.
Although at the time of this decision the other disputed domain name resolves to inactive webpage, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman), WIPO Case No. DPW2017-0003).
Considering the above the Panel finds the disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case 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 <nomurafinance.com> and <nomuragroupfinance.com> be transferred to the Complainant.
Date: May 30, 2021