WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Landesbank Baden- Württemberg (LBBW) v. Privacy Protection / Liu Fen
Case No. D2021-3992
1. The Parties
Complainant is Landesbank Baden-Württemberg (LBBW), Germany, represented by Bird & Bird LLP, Germany.
Respondent is Privacy Protection, United States of America / Liu Fen, China.
2. The Domain Name and Registrar
The disputed domain name <lbbw.xyz> (the “Domain Name”) is registered with Sav.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2021. On November 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 30, 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 December 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 December 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 December 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2022. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2022.
The Center appointed Marina Perraki as the sole panelist in this matter on January 28, 2022. 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 mid-sized bank servicing international retail and institutional customers and savings banks. As an institution under public law, Complainant is owned by the German Federal State of Baden-Württemberg, the Savings Bank Association of Baden-Württemberg and the City of Stuttgart. Complainant also fulfils the role of a central bank for the savings banks in the German federal states of Baden-Württemberg, Rhineland-Palatinate und Saxony. With its international network that comprises four branches, 137 representative offices and a financing company in Mexico City, Complainant supports its clients globally in entering foreign markets, financing major projects, providing protection for export risks and generally managing businesses.
Complainant is the owner of numerous trademark registrations for LBBW, including:
- German Trademark Registration No. 399217142, LBBW (figurative), filed on April 15, 1999 and registered on August 23, 1999 for goods and services in international classes 9, 16, 35, 36, 38 and 42; and
- European Union Trade Mark Registration No. 001139450, LBBW (figurative), filed on April 15, 1999 and registered on July 13, 2000 for goods and services in international classes 9, 16, 35, 36, 38 and 42.
Complainant also owns the domain name registration <lbbw.de> and has always concluded its business under its commercial name LBBW since its establishment in 1999.
The Domain Name was registered on November 21, 2021 and redirected to a third party website where it is being offered for sale against EUR 687,91. It currently leads 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 the 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 LBBW trademark.
The Domain Name incorporates Complainant’s LBBW trademark in its entirety. This is sufficient to establish the first element of the Policy (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The generic Top-Level Domain (“gTLD”) “.xyz” 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 LBBW trademark.
Complainant has established paragraph 4(a)(i) of the Policy
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 Respondent 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 finds that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any formal 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, and there are no other circumstances giving rise to rights or legitimate interests for Respondent in the Domain Name.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a name 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 resolved to a page, where it was being offered for sale.
The above, along with the fact that the Domain Name was registered with a privacy shield service, speak against any rights or legitimate interests held by Respondent (See 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).
Lastly, the Panel notes the nature of the Domain Name, which carries a high risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).
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 LBBW mark had been used and registered at the time of the Domain Name registration by Respondent, noting the composition and use of the Domain Name, the Panel finds 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).
Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of the LBBW mark (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
The Domain Name was therefore operated by intentionally, for commercial gain, 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 3.1.4).
Complainant has demonstrated that the Domain Name was being offered for sale for an amount that presumably exceeded Respondent’s out of pocket expenses. This, in view of the finding that Respondent has no right to or legitimate interest in the Domain Name, constitutes evidence of bad faith use (Aygaz Anonim Şirketi v. Arthur Cain, WIPO Case No. D2014-1206; WIPO Overview 3.0, section 3.1).
Lastly, the Domain Name was registered with a privacy shield service to hide the registrant’s identity. Respondent’s concealment of the Domain Names’ holder’s identity through use of a privacy shield constitutes further indication of bad faith in the circumstances of this case (Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).
The Domain Name currently leads to an inactive website. The non-use of a domain name would 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).
Under these circumstances and on this record, the Panel finds that Respondent has registered and used 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 Disputed Domain<lbbw.xyz> be transferred to Complainant.
Date: February 11, 2022