WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BKS Bank AG v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Jabari Reynolds, Onlinebks

Case No. D2021-1111

1. The Parties

The Complainant is BKS Bank AG, Austria, represented by Schönherr Rechtsanwälte GmbH, Austria.

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Jabari Reynolds, Onlinebks, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <onlinebksbank.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 April 12, 2021. On April 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing the 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 April 14, 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 16, 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 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2021.

The Center appointed Petra Pecar as the sole panelist in this matter on May 27, 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 universal bank founded in 1922 and based in Austria, which serves private and business customers.

The Complainant provided evidence of multiple trademark registrations for the marks BKS and BKS BANK including, inter alia, the following:

- International Registration No. 1229364 for BKS (registered on September 9, 2014);
- Austrian Registration No. 278266 for BKS (registered on May 28, 2014);
- International Registration No. 821772 for BKS BANK (registered on March 8, 2004);
- Austrian Registration No. 215993 for BKS BANK (registered on March 08, 2004); and
- International Registration No. 1357202 for the figurative mark (registered on February 22, 2017).

In addition to using the domain name <bks.at> for its principal website, the Complainant offers online banking services using the domain name <bksbank-online.at>. The Complainant and its affiliate companies also hold other domain name registrations containing the element “BKS”, including <bksbank.si>, <bks.hr>, <bksbank.sk>, <bksbank.it>, <bks.hu>, <bks.co.at>, <bks.online>, <bksbank.at>, and <bksbank.com>.

The disputed domain name was registered on March 22, 2021, through a privacy service.

According to the evidence provided by the Complainant, at the time of the submission of the Complaint, the disputed domain name resolved to a website offering banking services in the Slovenian language which not only included the Complainant’s trademarks and name but also largely resembled the Complainant’s Slovenian website at <bksbank.si>. Moreover, the website linked to the disputed domain name contained an online banking login form inviting visitors to provide the Respondent with sensitive data.

The Respondent is an individual located in the United States.

5. Parties’ Contentions

A. Complainant

The Complainant has been a listed company since 1986 and operates its banking and leasing business in Austria and several neighboring countries, such as Hungary and Italy. The Complainant 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 Aktiengesellschaft. As at December 31, 2019, the Complainant’s balance sheet assets totalled EUR 8.9 billion and the Complainant employed 1,128 people and operated 63 bank branches throughout Austria, Slovenia, Croatia, and Slovakia. At that time the Complainant had about 191,200 customers.

The Complainant contends that the disputed domain name is identical or confusingly similar to its BKS and BKS BANK Marks. The disputed domain name further consists of the descriptive elements “online” and “bank”. The Complainant contends that a wide variety of panelists have considered that the addition of words to trademarks is not sufficient to escape a finding of similarity and does not change the overall impression of the designations as being connected to the Complainant. In this regard, the Complainant refers to the matter of Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant, WIPO Case No. D2007-0889. The Complainant also points out that numerous Panels have held that a generic Top-Level Domain (“gTLD”), in this case “.com”, is to be ignored when assessing the identity or confusing similarity of a mark and a domain name, referring to the case of Auchan v. Web4Comm Srl Romania, WIPO Case No. DRO2005-0001.

In addition, the Complainant has instituted a number of actions against confusingly similar domain names which were all decided in the Complainant’s favor. The Complainant quotes several of these cases, but the most relevant for the present purposes is that of BKS Bank AG v. James H Park, WIPO Case No. D2016‑2065, where the disputed domain name included the Complainant’s mark BKS and the term “online”. The UDRP panel found that compared with the Complainant’s registered BKS marks, the disputed domain name <bks-online.com> is confusingly similar, because “bks” is the most distinctive component in the disputed domain name <bks-online.com> and the addition of the word “online” and the non-distinctive dash mark “-” to “bks” does not diminish the overall confusing similarity between the disputed domain name and the Complainant’s registered marks.

Further, the Complainant argues that the Respondent has no rights or legitimate interests with respect to the disputed domain name. In this regard, the Complainant contends that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or similar signs. Moreover, the use of the disputed domain name by the Respondent does not imply potential legitimate interests, but rather is clearly used for fraudulent purposes.

Finally, the Complainant submits that the disputed domain name was registered and used in bad faith since the Respondent seeks to create the false and misleading impression that the Respondent either acts in affiliation with the Complainant or is, in fact, the Complainant. That such misrepresentation was done with fraudulent intent is, according to the Complainant, evident from the deliberate incorporation of the Complainant’s trademarks (or elements thereof) in the disputed domain name, as well as from the layout of the website linked to the disputed domain name, which includes references to the Complainant’s trademarks, names, and images. It is clear from the above that the Respondent was well aware of the Complainant’s activities and that its intention in registering the disputed domain name was to free ride on the fame and goodwill of the Complainant’s trademarks, and to profit from the resulting confusion created for consumers. In this regard, the Complainant contends that the Respondent obtained commercial gain from the increased traffic on its web portal due to the use of the disputed domain name, which created a false impression as to the Respondent’s identity/affiliation with the Complainant, thereby resulting in Internet users being fraudulently induced to provide sensitive and valuable data, and to pay funds into the account of what they believed to be the Complainant’s bank.

Accordingly, the Complainant requests the transfer of the disputed domain name from the Respondent to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1).

In the present matter, the Complainant has provided evidence of its rights in the BKS and BKS BANK trademarks on the basis of its multiple trademark registrations in various jurisdictions around the world. All of these trademarks were duly registered before the Respondent registered the disputed domain name on March 22, 2021.

The Panel finds that the disputed domain name integrates the Complainant’s BKS and BKS BANK trademarks in their entirety with the addition of the terms “online” and “bank” to the BKS mark and the term “online” to the BKS BANK mark, as well as the gTLD “.com”. Because the Complainant’s BKS and BKS BANK trademarks are recognizable within the disputed domain name, the addition of the terms “bank” and “online” does not detract from its confusing similarity.

As noted in WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.” Similarly, the gTLD “.com” does not preclude a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks in accordance with the well-established practice of previous UDRP panels.

In light of the foregoing, the Panel finds that the mere addition of the term “online” to the Complainant’s BKS BANK mark and the terms “online” and “bank” to the Complainant’s BKS mark in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark (see Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant, WIPO Case No. D2007‑0889). Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. This is consistent with the previous UDRP cases cited by the Complainant regarding the confusing similarity of the disputed domain names in question and its trademarks, including, in particular, the case of BKS Bank AG v. James H Park, WIPO Case No. D2016-2065, BKS Bank AG v. Jianwei Guo, WIPO Case No. D2017-1041, and BKS Bank AG v. WhoisGuard Protected, WhoisGuard, Inc. / Mikell Karo, WIPO Case No. D2020-0575.

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the Policy, the Complainant has to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of producing evidence that rebuts that presumption. If the Respondent fails to do so, the Complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

The Complainant contends, inter alia, that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or similar signs. Moreover, the use of the disputed domain name by the Respondent does not indicate that the Respondent may have any potential rights or legitimate interests in the disputed domain name. On the contrary, the Complainant contends that the Respondent’s use of the disputed domain name is fraudulent.

At the time of the filing of the complaint, it seems that the disputed domain name resolved to a website intended to deceive Internet users into believing that they had arrived at a site belonging to the Complainant as it contained references to the Complainant’s trademarks and its layout generally replicated that of the Complainant’s official Slovenian website. Furthermore, it appears that the website was used for phishing purposes as it contained an online banking login form intended to elicit personal details of Internet users, including their email addresses and passwords, but likely also their bank account numbers and credit card details once they logged in. Moreover, there would have been a risk of Internet users paying funds into what they would have believed to be an account of the Complainant’s bank. According to section 2.13 of WIPO Overview 3.0, use of a disputed domain name for illegal activity (such as phishing) can never confer rights or legitimate interests on a respondent.

It is evident from the above that the Respondent did not use the disputed domain name in connection with a bona fide offering of goods or services. Moreover, there is no evidence suggesting that the Respondent is commonly known by the disputed domain name, nor that he has any particular rights in the disputed domain name, as the Respondent is a natural person without any clear connection to the Complainant. Finally, the Complainant does not have any business relationship with the Respondent, nor is the Respondent making legitimate noncommercial or fair use of the disputed domain name.

In this case, 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 Respondents has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy, which provides that evidence of bad faith includes the situation where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the website or location or of a product or service on the website or location.

The Panel is persuaded that the Respondent registered the disputed domain name incorporating the Complainant’s BKS and BKS BANK trademarks with the intention of fraudulently misleading Internet users into believing that the website to which the disputed domain name resolved was associated with the Complainant. It is clear from the content of the website, which resembled the Complainant’s official Slovenian website “www.bksbank.si” and incorporated the Complainant’s trademarks, that the Respondent was well aware of the Complainant’s activities when he registered the disputed domain name and that he acted with opportunist bad faith in order to obtain commercial gain when he registered the confusingly similar disputed domain name. This is further substantiated by the inclusion of an online banking form on the website attempting to elicit sensitive information from Internet users, including their passwords and email addresses, and potentially bank account numbers and credit card details, thereby effectively constituting a phishing scheme, and creating a situation in which Internet users would likely pay funds into the account of the Respondent under the assumption that they were paying them into the account of the Complainant’s bank.

According to section 3.4 of WIPO Overview 3.0, use of a domain name for purposes of phishing, identity theft, or hosting a copycat version of the Complainant’s website, among others, cannot be observed as use of the disputed domain name in good faith. On the contrary, such behavior is manifestly considered evidence of bad faith.

In light of the above, the Panel concludes that the Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

Accordingly, the requirement of registration and use of the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy has been fulfilled.

7. Decision

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 <onlinebksbank.com> be transferred to the Complainant.

Petra Pecar
Sole Panelist
Date: June 21, 2021