WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sparbanksstiftelsen Finn v. Super Privacy Service LTD c/o Dynadot / Soukaina Tarmouchi
Case No. D2021-2351
1. The Parties
The Complainant is Sparbanksstiftelsen Finn, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Soukaina Tarmouchi, Morocco.
2. The Domain Name and Registrar
The disputed domain name <sparbankenfinn.com> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2021. On July 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 22, 201, 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 July 26, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 28, 2021.
The Center verified that the Complaint together with the amendment to the 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 July 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 20, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on August 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
Complainant is a Swedish foundation whose purpose is to promote its subsidiary bank Sparbanken Skåne’s values and operations. Complainant changed name from Sparbanksstiftelsen Öresund to Sparbanksstiftelsen Finn in May 2016 and was founded in 2010 by the merger of two savings banks, Sparbanken Finn and Sparbanken Gripen. Complainant’s board is based in Lund, Sweden and supports projects in the county of Skåne. Complainant distributes grants to various projects that contribute to the region’s development, for the purpose of promoting business, children and youth, infrastructure, research, education, sports, or culture.
Complainant owns a trademark registration for SPARBANKEN FINN, namely it owns the Swedish trademark registration No. 366915, SPARBANKEN FINN, registered on September 10, 1997 for goods and services in Classes 9, 16, and 36.
The Domain Name was registered on April 15, 2021 and previously directed to a third-party website in French, displaying an online contest organized by the company WebRivage. Upon receipt of a cease-and-desist letter of Complainant, the company WebRivage confirmed that the Domain Name redirected to their website and did not belong to them but might be held by one of their affiliates.
Currently, the Domain Name resolves to an inactive website.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent 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
Complainant has demonstrated rights through registration and use on the SPARBANKEN FINN mark, namely the Swedish Trade Mark No. 366915 registered on September 10, 1997.
The Panel finds that the Domain Name <sparbankenfinn.com> is identical to the SPARBANKEN FINN trademark of Complainant.
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 identical to the SPARBANKEN FINN mark of Complainant.
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 you [respondent] of the dispute, your 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) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [respondent] are 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.
Prior to the notice of the dispute, Respondent did not demonstrate any use of 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 directed to a third-party page in French, displaying an online contest organized by the company WebRivage. Upon receipt of a cease-and-desist letter of Complainant, the company WebRivage confirmed that the Domain Name redirected to their website and did not belong to them but might be held by one of their affiliates. It is thus likely that Respondent was using the Domain Name to attract Internet users to an online location for the purposes of finding new participants in the online contest.
In addition, the nature of the Domain Name, comprising Complainant’s trademark in its entirety carries a high risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).
This, along with the fact that the Domain Name was initially registered with a privacy shield service, speaks against any rights or legitimate interests held by Respondent (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
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 SPARBANKEN FINN mark had been used and registered at the time of the Domain Name registration by Respondent, the Panel finds likely that Respondent had Complainant’s mark in mind when registering the Domain Name (Parfums Christian Dior S.A. v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). Indeed the mark is unique such that no other conclusion is reasonably possible.
The Domain Name was therefore created for commercial gain by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website it resolved to, within the sense of paragraph 4(b)(iv) of the Policy. This can be used in support of bad faith registration and use (WIPO Overview 3.0, section 3.1.3).
As regards to bad faith use, Complainant demonstrated that Respondent had used the Domain Name to direct users to a third-party website, displaying an online contest organized by the company WebRivage.
The Domain Name operated therefore by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website it resolved to. This supports the finding of bad faith use (WIPO Overview 3.0, section 3.1.4).
The Domain Name currently resolves to an active website. The non-use of a domain name does not prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000‑0003; WIPO Overview 3.0, section 3.3).
The Panel considers also the initial apparent concealment of the Domain Name holder’s identity through use of a privacy shield, which is further indicative of bad faith (BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364).
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
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 <sparbankenfinn.com> be transferred to the Complainant.
Date: September 10, 2021