WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Landesbank Baden-Württemberg (LBBW) v. PrivacyGuardian.org / Utilities co., ltd.
Case No. D2021-3779
1. The Parties
The Complainant is Landesbank Baden-Württemberg (LBBW), Germany, represented by Bird & Bird LLP, Germany.
The Respondent is PrivacyGuardian.org, United States of America / Utilities co., ltd., United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <lbbwcl.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2021. On November 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 2021, 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 November 15, 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 amendment to the Complaint on November 15, 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 the Respondent of the Complaint, and the proceedings commenced on November 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2021.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on December 29, 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 in this administrative proceeding is Landesbank Baden-Württemberg (LBBW), Germany, an institution under public law.
The Complainant provides its services as a mid-sized universal bank to companies, retail and institutional customers and savings banks. As an institution under public law, LBBW is owned by the German Federal State of Baden-Württemberg, the Savings Bank Association of Baden-Württemberg, and the city of Stuttgart. With its international network comprising four branches, 13 representative offices, and a financing company in Mexico City, LBBW supports its clients globally in entering foreign markets, financing major projects, providing protection for export risks and generally managing businesses.
The Complainant has registered, inter alia, the following trademarks:
- LBBW (word), German Trademark No. 39921714, registered on August 23, 1999;
- LBBW (figurative), European Union Trademark No. 001139450, registered on July 13, 2000; and
- LBBW (figurative), International Trade Mark No. 1470393, registered on March 1, 2019.
The Complainant is also the registered owner of domain names including the term “LBBW”, inter alia <lbbw.de>.
The disputed domain name was registered on September 19, 2021.
Currently the disputed domain name is linked to a website where explicit pornographic content is displayed.
5. Parties’ Contentions
The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
Specifically, the Complainant has asserted that the Respondent’s only intention is to create confusion among the Internet users for its own benefit, and by doing so the Respondent is damaging the Complainant’s good reputation.
Moreover, the Complainant claims that the website under the disputed domain name previously showed explicit pornographic content and that the disputed domain now redirects to another domain name (<xfmysc.com>) which leads to a website with the same content.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:
(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
The Complainant has established rights in the LLBW trademarks.
The only difference between the disputed domain name and the Complainant’s LLBW trademark is the addition of the letters “cl” to the Complainant’s trademark and the addition of the generic Top-Level Domain suffix “.com”. The Panel agrees with the Complainant’s assertion that these differences are irrelevant in assessing the confusing similarity between the Complainant’s trademarks and the disputed domain name.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “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 nature of such additional term(s) may however bear on assessment of the second and third elements.”
Therefore, the Panel finds the disputed domain name to be confusingly similar to the LLBW trademark in which the Complainant has rights
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “bblwcl” or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark.
Furthermore, the Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. The Respondent is in fact using the disputed domain name for a website where explicit pornographic content is displayed.
The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name. The Respondent has not formally replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.
The Complainant’s trademark has no meaning apart from indicating the Complainant’s trademark and trade name. It has been in use for several years and has a fairly high degree of distinctiveness, and thus, on the balance of probability, the Panel believes the Respondent knew of the Complainant’s trademark when registering the disputed domain name.
Inference of bad faith registration and use of the disputed domain name is also given by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service. While the use of a privacy service does not in and of itself constitute bad faith under the Policy, the manner in which such service is used in the present case is deemed to contribute to a finding of bad faith.
Moreover, another indication of bad faith registration and use of the disputed domain name is the fact that the Respondent has not denied the assertions of bad faith made by the Complainant in this proceeding. Hence, the Panel finds that if the Respondent had legitimate purposes for registering and using the disputed domain name, it would have responded to these assertions.
The Panel finds that the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under the Policy.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
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, <lbbwcl.com> be transferred to the Complainant.
Date: January 6, 2022