WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Lavanda Ducarti

Case No. D2021-1415

1. The Parties

Complainant is BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft, Austria, represented by Binder Grösswang Rechtsanwälte GmbH, Austria.

Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America / Lavanda Ducarti, France.

2. The Domain Name and Registrar

The disputed domain name <ebk-france.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2021. On May 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 7, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 10, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 10, 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 Respondent of the Complaint, and the proceedings commenced on May 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2021. On May 13 and 21, 2021, the Center received a communications from the Admin/Tech/Billing contact of Respondent, but Respondent did not submit any formal response. Accordingly, the Center informed the Parties that it was proceeding to panel appointment on June 3, 2021.

The Center appointed Marina Perraki as the sole panelist in this matter on June 9, 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

Per Complaint, Complainant is one of the biggest banks in Austria, with 2.4 million customers. Complainant offers offline and online services. Since 1996 it is operating the direct bank “easybank” which has become one of Austria’s most successful direct banks. Complainant offers its e-banking services as well as information about its credit transactions on its website at “www.easybank.at”. Complainant has always used the colour green in its corporate communication, e.g., on its website, mailings, and annual report.

Complainant is the owner of numerous trademark registrations for EASYBANK, including:

- Austrian trademark registration No. 243174, EASYBANK (logo), filed on September 16, 2005 and registered on January 29, 2008 for services in International class 36; and

- International trademark registration No. 1164564, EASYBANK (logo), registered on April 10, 2013 for services in International class 36.

Complainant is also the owner of the domain name <easybank.at> under which it offers its e-banking services.

The Domain Name was registered on January 19, 2021. It was used to host a website where Complainant’s mark EASYBANK, logos, and colours were prominently displayed (the “Website”), next to the words “EasyBK Online”. Moreover, financial services were allegedly being offered by a non-licensed and unknown third party impersonating Complainant, through a scheme whereby shares of the same well-known companies were being offered for sale to different consumers in France, purportedly by Complainant, through emails composed of “ebk” or “easybk” variants. Share purchase forms were attached to these emails which bore Complainant’s trademark, company name, and address. Consumers thought they were dealing with Complainant and transferred amounts to the third party for the purchase of shares which they never received. Consumers contacted Complainant asking whether the emails were genuine. On at least one occasion, one such form mentioned an email address associated with the Domain Name and the Website. The recipient of this email paid the amount of EUR 3,933 to the bank account details included in such form. Complainant has notified the Austrian Financial Market Authority and has filed criminal complaints in France. Furthermore, it filed a UDRP complaint against the domain name <ebk-online.com> which was ordered to be transferred to Complainant (BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft v. WhoisGuard, Inc. / Name Redacted, WIPO Case No. D2021-0509).

Currently, the Domain Name does not resolve to an active page.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, on May 13 and 21, 2021, the Center received non-substantive communications from the Admin/Tech/Billing contact of Respondent, which also did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name incorporates an abbreviation of Complainant’s trademark EASYBANK. Taking the broader circumstances into account, this is enough to find confusing similarity (Harness Racing Australia v. Acronym Wiki Pty Ltd, WIPO Case No. DAU2011-0007, where the domain mane <hra.com.au> was found to be confusingly similar to the name “Harness Racing Australia”).

The Panel also takes into account that on the Website, Complainant’s mark EASYBANK, logos, and colours were prominently displayed next to the words “EasyBK Online”, therefore making it clear that EBK is the abbreviation of EASYBANK / “EasyBK”. As mentioned in more detail under section C below, the Website assimilated that of Complainant and in the fraudulent emails that were offering to sell shares, were attached forms including the Website address and an email composition including the Domain Name on at least one occasion. Complainant has demonstrated that consumers were confused and defrauded and it appears prima facie that the Respondent sought to target Complainant’s trademark through the Domain Name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.15).

The addition of the word “france” and the hyphen “-” does not prevent a finding of confusing similarity (WIPO Overview 3.0, section 1.8).

The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name is confusingly similar to the EASYBANK mark of Complainant (see also BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft v. WhoisGuard, Inc. / Name Redacted, WIPO Case No. D2021-0509).

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to Respondent of the dispute, 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.

Respondent has not demonstrated any preparations to use and has not used the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrated, the Domain Name was used to host the Website to impersonate Complainant and attempt to mislead consumers into thinking that the services purportedly offered on the Website originate from Complainant. Furthermore, Complainant was the target of a fraudulent scheme, whereby email addresses composed of “ebk” or “easybk” variants were used for sending emails to consumers in France, impersonating Complainant, with invitations to buy shares in well-known companies. Such emails all contained similar looking application forms with the details and logos of Complainant, selling shares of the same companies, using the same method and similar domain name registrations. On at least one occasion, one such form mentioned an email address associated with the Domain Name and the Website.

Such use can never confer rights or legitimate interests on Respondent (WIPO Overview 3.0, section 2.13.1).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name. Accordingly, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name, which has not been rebutted by the Respondent.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith.

Because the EASYBANK mark had been used and registered by Complainant before the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000‑0226).

Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search and also due to Complainant’s nature of business (banking services), provided also online (See Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).

Furthermore, the content of the Website gave the impression that it provided services purportedly by Complainant, prominently displaying Complainant’s trademark, logos, and colour on the Website, thereby giving the false impression that the Website emanates from Complainant. This further supports registration in bad faith reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (WIPO Overview 3.0, section 3.1.4).

The above further indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry (Safepay Malta Limited v. ICS Inc., WIPO Case No. D2015-0403).

Furthermore, Respondent could have conducted a trademark search and should have found Complainant’s prior registrations in respect of EASYBANK (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

As regards bad faith use, Complainant demonstrated that the Domain Name was used to host a Website which purported to offer services related to Complainant. The Website, prominently displaying Complainant’s trademark, logos, and colours mimicked Complainant’s official website. Furthermore, on at least one occasion, a form was contained in fraudulent emails that mentioned an email address associated with the Domain Name and the Website.

The Panel finds that Respondent has registered and used the Domain Name in order to disrupt Complainants business. Furthermore, the Domain Name has been operated by intentionally creating a likelihood of confusion with Complainant’s trademark and business. This supports a finding of bad faith use (Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388 and WIPO Overview 3.0, sections 3.1.4 and 3.2.1).

Under these circumstances and on this record, the Panel finds that Respondent registered and used the Domain Name in bad faith.

The current non-use of the Domain Name does not change the Panel’s findings above.

Complainant has established Policy, paragraph 4(a)(iii).

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 Domain Name <ebk-france.com> be transferred to the Complainant.

Marina Perraki
Sole Panelist
Date: June 23, 2021