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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lloyds Bank Plc v. medyiotyo Na, Social

Case No. D2021-3019

1. The Parties

The Complainant is Lloyds Bank Plc, United Kingdom, represented by Marks & Clerk Law LLP, United Kingdom.

The Respondent is medyiotyo Na, Social, United States of America.1

2. The Domain Name and Registrar

The disputed domain name <blackhorse.finance> is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the following day, the Registrar transmitted by email to the Center its verification response disclosing 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 October 13, 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 October 18, 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 October 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on November 18, 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 a United Kingdom-based financial services group that provides a wide range of banking and financial services. The Complainant formed a division named “Black Horse” in 2001 to provide motor finance with a range of motor loans and hire purchase products. The Complainant owns multiple trademark registrations in multiple jurisdictions, including United Kingdom trademark registration number UK00001310020 for BLACK HORSE, registered on October 30, 1992, specifying services in class 36, including banking and financial services. That trademark registration remains current.

The Respondent is identified as an individual and an organization.

The disputed domain name was registered on October 10, 2020. Archived screenshots show that in November 2020 it resolved to a website for Black Horse Foundation, which it described as a blockchain technology-based casino platform. The website purported to offer gaming tokens for sale in a pre-sale phase before the platform went live and it promised users a certain rate of return. Prices were displayed in dollars.2 At the time of this decision, the disputed domain name does not resolve to any active website; rather, it is passively held.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s BLACK HORSE trademark. The Complainant has used an image of a black horse extensively since as early as 1884.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent could have no rights or legitimate interests in using a domain name wholly incorporating the Complainant’s trademarks for the purposes of offering cryptocurrency and casino services which would be highly similar services for which trademarks are registered. The Complainant has not granted a licence nor otherwise authorised the Respondent to incorporate its trademarks in the disputed domain name. The incorporation of the Complainant’s trademarks in the disputed domain name falsely suggests a close affiliation to the Complainant and sponsorship or endorsement of the Respondent’s business by the Complainant that does not exist.

The disputed domain name was registered and is being used in bad faith. The Respondent has adopted both the Complainant’s name as part of the disputed domain name and also an image of a horse rearing up on its back legs which is very similar to the images used by the Complainant in its branding. It seems likely that prior to registering the disputed domain name, the Respondent must have been aware of the Complainant. The Respondent registered the disputed domain name in bad faith, primarily for the purpose of creating an association with the trademarks without the Complainant’s authority or consent.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements with respect to each disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

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

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the BLACK HORSE mark.

The disputed domain name wholly incorporates the BLACK HORSE mark, omitting only the space between the words for technical reasons. The only additional element in the disputed domain name is the generic Top-Level Domain (“gTLD“) suffix “.finance”. As a technical requirement of domain name registration, this element may be disregarded in the comparison between a trademark and a domain name for the purposes of the first element of paragraph 4(a) of the Policy. However, the Panel will consider it in relation to the third element in Section 6C below.

Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of the second element in paragraph 4(a) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first and third circumstances set out above, the disputed domain name formerly resolved to a website purportedly offering gaming tokens for sale. The operational element of the disputed domain name is identical to the Complainant’s mark, which carries a high risk of implied affiliation with the Complainant. However, the Complainant submits that it has not granted a licence nor otherwise authorised the Respondent to incorporate its trademarks in the disputed domain name and that it has not sponsored or endorsed the Respondent’s business. At the time of this decision, the disputed domain name is passively held. Accordingly, the Complainant has made a prima facie case that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is it making a legitimate noncommercial or fair use of the disputed domain name.

As regards the second circumstance above, the Respondent’s name is listed in the Registrar’s WhoIs database as “medyiotyo Na, Social”. The website to which the disputed domain name formerly resolved was purportedly for a casino platform named “Black Horse Foundation” but, while foundations of that name appear to exist, there is no evidence that the Respondent is associated with any of them or that any of them operate a casino platform. Accordingly, there is no evidence that the Respondent has been commonly known by the disputed domain name.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because it did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

As regards registration, the disputed domain name was registered in 2020, decades after the registration of the Complainant’s BLACK HORSE mark. The disputed domain name is identical to that mark. Although the mark is comprised of two dictionary words, the disputed domain name combines those words with the gTLD “.finance” – an arbitrary combination that indicates an awareness of the nature of the Complainant’s services. This all gives the Panel reason to find, on the balance of probabilities, that the Respondent had the Complainant’s BLACK HORSE mark in mind when it registered the disputed domain name.

As regards use, the disputed domain name formerly resolved to a website purportedly offering gaming tokens for sale in an as-yet inoperative online casino platform. It appears likely to have been a scam. The disputed domain name combines the Complainant’s BLACK HORSE mark with the gTLD “.finance” that describes its services. The disputed domain name attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s BLACK HORSE mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Having regard to all these circumstances and the findings in Section 6B above, the Panel is persuaded that the Respondent is using the disputed domain name in bad faith within the terms of paragraph 4(b)(iv) of the Policy.

The Panel notes that the use of the disputed domain name has changed and that it no longer resolves to any active website. This change in use does not alter the Panel’s conclusion; if anything, it may be a further indication of bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

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 <blackhorse.finance> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: December 2, 2021

1 The original Complaint was filed against a privacy service. The amended Complaint replaced the privacy service with the underlying registrant as verified by the Registrar.

2 The Panel notes its general powers articulated inter alia in paragraphs 10 and 12 of the Rules and has searched the Internet Archive at “www.archive.org”, which is a matter of public record, because it considers such information useful in assessing the case merits and reaching a decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8.

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