WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swedbank AB v. Itai Mukonyora
Case No. DCO2019-0044
1. The Parties
The Complainant is Swedbank AB, Sweden, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Itai Mukonyora, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <swedbanken.co> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2019. On November 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2019, 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 8, 2019, 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 November 8, 2019.
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 November 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2019.
The Center appointed Knud Wallberg as the sole panelist in this matter on December 6, 2019. 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 was founded in 1820 and is today a leading bank in the four primary markets it serves, namely Sweden, Estonia, Latvia and Lithuania, but it is also present in a number of other countries globally.
The Complainant is the owner of a large number of trademark registrations for the SWEDBANK word mark across multiple jurisdictions, including, inter alia European Union trademark SWEDBANK, registration No. 004897567, registered on March 5, 2007 in classes 9, 16, 35, 36 and 42.
Swedbank AB has a strong Internet presence through its websites and is the owner of numerous Top-Level-Domains (“TLDs”) containing the term “swedbank” including <swedbank.se>, <swedbank.com> and <swedbank.us>.
The disputed domain name was registered by the Respondent on August 22, 2019. It does currently not resolve to an active website, but has previously resolved to an active website that purportedly offered various banking services.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights since it incorporates the Complainant’s SWEDBANK trademark in its entirety with the addition of the two letters “en” in the end thereby transforming the term “bank” to “banken” – Swedish for “bank”.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant in any way, nor has the Complainant given the Respondent permission to use Complainant’s trademarks in any manner, including in domain names. In addition, the Respondent is not commonly known by the disputed domain name and is not using the disputed domain name for bona fide offering of goods or services or for any legitimate, noncommercial use. On the contrary, the Respondent has used the disputed domain name to resolve to a website that appeared to promote banking services, which competed directly with the Complainant’s own offerings.
The Complainant finally submits that the Complainant’s SWEDBANK trademark is a distinctive and internationally known trademark. The Complainant therefore submits that it would be inconceivable for the Respondent to argue that the Respondent did not have knowledge of the Complainant’s SWEDBANK trademark at the time of registration of the disputed domain name. The Complainant further asserts that the Respondent is using the disputed domain name in bad faith. The disputed domain name has thus been used for a website that purported to offer banking services and which featured a login portal through which the Respondent was attempting to fraudulently acquire login credentials from the Complainant’s customers potentially exposing them to acts of financial fraud, which is clearly bad faith use under the UDRP. The fact that the disputed domain name currently resolves to an inactive site does not preclude bad faith use under the Policy in this situation, since it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not may be competitive with or otherwise detrimental to the Complainant’s trademark rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <swedbanken.co> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark SWEDBANK. The disputed domain name incorporates this mark in its entirety with the addition of the letters “en” as suffix. The TLD “.co” does not dispel a finding of confusing similarity in the present case. See ArcelorMittal SA v. Tina Campbell, WIPO Case No. DCO2018-0005.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.
Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case, including the provided information of the widespread use of the Complainant’s trademark SWEDBANK and the distinctive nature of this mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name does currently not resolve to an active website. The Complainant has however evidenced that the disputed domain name was previously used for a website that purported to offer various banking services under the name “Swedbanken” and which featured a login portal through which visitors could log in using their “Username” and “Password”. The Panel finds that the Respondent by using a domain name that is confusingly similar to the Complainant’s trademark rights in this way made it possible for the Respondent to obtain and collect login credentials of unsuspecting Internet users of the Complainant’s banking services, which is clearly bad faith use under the Policy.
The Panel further finds that it is not possible to conceive of any plausible active good faith use to which the disputed domain name may be put. The disputed domain name carries a risk of implied affiliation.
Under these circumstances and noting that the disputed domain name incorporates the Complainant’s distinctive and widely used trademark SWEDBANK and the TLD “.co”, that no Response has been filed, and that passive holding of a domain name does not prevent a finding of bad faith use under paragraph 4(a)(iii) of the Policy of section 3.3 of WIPO Overview of WIPO Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), and considering all the facts and evidence of the case, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <swedbanken.co> be transferred to the Complainant.
Date: December 23, 2019