WIPO Arbitration and Mediation Center

Alternative Dispute Resolution Proceeding

Case No. DSE2020-0050

1. Petitioner

The Petitioner is Banco Santander, S.A. c/o Santander Consumer Bank AS,Spain, represented by CSC Digital Brand Services Group AB, Sweden.

2. Domain Holder

The Domain Holder is J.B., Sweden.

3. Domain Name and Procedural History

This Alternative Dispute Resolution proceeding relates to the domain name <openbank.se> (the “Domain Name”).

This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).

The WIPO Arbitration and Mediation Center (“the Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. On October 29, 2020, the Center sent an invitation to amend the Petition disclosing information about the Domain Holder. On November 5, 2020, the Petitioner submitted an amended Petition. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on November 4, 2020. The Domain Holder submitted a response on November 11, 2020.

The Center appointed Jonas Gulliksson as the sole Arbitrator in this matter on November 18, 2020. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.

4. Factual Background

The Petitioner, doing business as Santander Group, is a Spanish multinational financial services company founded in 1857. The Petitioner’s wholly owned subsidiary Open Bank S.A. which is the owner of the following European Union (“EU”) trademark registrations for OPENBANK:

- registration no. 000308528 (device) filed on July 1, 1996 and registered on September 24, 1998; and
- registration no. 001567338 (device) filed on March 3, 2000 and registered on March 22, 2001.

Openbank S.A. is the owner of the domain name <openbank.es>. According to “www.Similarweb.com”, Petitioner’s domain name <openbank.es> had a monthly average of 2.16 million visits from February 2020 to July 2020. Alexa.com ranks Petitioner’s domain name <openbank.es> as the 43,412th most popular website in the world and 787th in Spain.

The Domain Holder registered the Domain Name on January 13, 2016. The Domain Name was previously redirecting Internet users to “ww.tppvalidation.com”, a website where the Domain Holder was offering financial services. The Domain Name currently resolves to an inactive website.

5. Claim

The Petitioner has requested that the Domain Name shall be transferred to the Petitioner.

The Domain Holder has opposed the Petitioner’s claim.

6. Parties’ Contentions

A. Petitioner

The Petitioner alleges the following:

The Petitioner is the owner of the well-known OPENBANK trademark. The Domain Name is clearly identical to the Petitioner’s registered trademark. The addition of the country code Top-Level Domain “.se” does not alleviate the potential confusion between the Domain Name and Petitioner’s trademark. The addition lacks distinctiveness and is not sufficient to give the Domain Name an individual meaning.

The Domain Holder is utilizing or plans to utilize the good reputation, market position or characteristic feature of the Petitioner to attract Internet traffic to the own website or to increase revenue in this manner. Further, the Domain Holder’s registration of the Domain Name prevents or makes it difficult for the Petitioner to register the brand as a domain name. The Petitioner and its OPENBANK trademark are known internationally, with trademark registrations across numerous countries, including the European Union (“EU”). The Petitioner has marketed and sold its goods and services using this trademark 21 years prior to the registration of the Domain Name. The Domain Holder registered the Domain Name on January 13, 2016. This date is subsequent to when the Petitioner first registered the trademark OPENBANK in the EU and its domain name <openbank.es> in 2002. Thus, by registering a domain name that is identical to Petitioner’s trademark and confusingly similar to Petitioner’s domain name <openbank.es>, the Domain Holder has demonstrated a knowledge of and familiarity with Petitioner’s brand and business. Performing searches across a number of Internet search engines for “openbank” returns multiple links referencing Petitioner and its business. Obviously, it is Petitioner’s fame and that of its trademark that motivated the Domain Holder to register the Domain Name.

The Domain Name currently resolves to a blank page and is not being used. The Domain Name is identical to the Petitioner’s trademark, confusingly similar to Petitioner’s <openbank.es> domain name, and the Domain Holder has made no use of the Domain Name. These are factors which should be duly considered in assessing bad faith registration and/or use. Furthermore, the Domain Holder was previously using the Domain Name to auto-redirect Internet users to “www.tppvalidation.com”, a website where “A Better Company Nordics” is offering TPP Validation services. Such auto-redirection to a commercial website, which provides services in the same financial industry as Petitioner, shows that the Domain Holder was using the Domain Name to confuse unsuspecting Internet users looking for Petitioner’s services, and to mislead Internet users as to the source of the Domain Name and its website. By creating a likelihood of confusion between Petitioner’s trademark and the Domain Name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Domain Name, the Domain Holder has demonstrated a nefarious intent to capitalize on the fame and goodwill of Petitioner’s trademark in order to increase Internet traffic to the Domain Name’s website for the Domain Holder’s own pecuniary gain.

The granting of registrations by the EUIPO to Petitioner for the OPENBANK trademark is prima facie evidence of the validity of the term “openbank” as a trademark, of Petitioner’s ownership of this trademark, and of Petitioner’s exclusive right to use the OPENBANK trademark in commerce on or in connection with the goods and/or services for which it is registered. The Petitioner has not authorized the Domain Holder to use Petitioner’s trademarks in any manner, including in domain names. The Petitioner has not found that the Domain Holder has any registered trademarks or trade names corresponding to the Domain Name. Further, Petitioner has not found anything that would suggest that the Domain Holder has been using OPENBANK in any other way that would provide rights or justified interest in the Domain Name. Consequently, the Domain Holder may not claim any rights established by common usage.

The Petitioner first tried to contact the Domain Holder on July 27, 2020, through a cease and desist letter sent by email and with the assistance of the registry. However, no reply was ever received. Since the efforts of trying to solve the matter amicably were unsuccessful, the Petitioner chose to file a complaint according to the Alternative Dispute Resolution process.

B. Domain Holder

The Domain Holder alleges the following:

The Domain Name has resolved to a website with direct content but over time it has been used to redirect Internet users to other websites through which the Domain Holder has conducted business. When the Domain Holder became aware of the Petitioner’s interest in the Domain Name he decided to discontinue the redirection to “www.tppvalidation.com”. The business conducted through “www.tppvalidation.com” is however only aimed towards banks. The reason Google searches for “Open Bank” only show a few results could be because of the Petitioner’s efforts to take over the term due to its trademark protection. A thorough review regarding this was not made prior to the registration of the Domain Name or thereafter, up until the Petitioner’s request to transfer the Domain Name.

As evident from the Domain Holder’s CV on LinkedIn profile and his consulting firm’s website <burbankeauclair.com>, the Domain Holder has been active in the area of Open Bank/Open Banking since 2015. It was at this time open banking as a movement started in Europe due to Directive (EU) 2015/2366 and the terms Open Bank/Open Banking were developed. The website < “www.openbankproject.com” served as an inspiration for the Domain Holder’s registration of the Domain Name and of <openbanking.se>.

The Domain Holder has provided consultancy services within the area of Open Bank/Open Banking and is of the opinion that both terms are established within the financial industry and refers to a trend and movement which technically enables open APIs in the financial industry to make data more easily accessible but also creates new business opportunities within the industry. Due to this, the majority of banks have created departments and initiatives with names which include "Open Bank" or "Open Banking".

7. Discussion and Findings

Pursuant to section 7.2 of the .se Policy, a domain name may be transferred to the party requesting dispute resolution proceedings if the following three conditions are fulfilled:

- the Domain Name is identical or similar to, inter alia, a trademarkwhich is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights;
- the Domain Name has been registered or used in bad faith, and
- the Domain Holder has no rights or justified interest in the Domain Name.

All three conditions must be met in order for the party requesting dispute resolution to succeed with a claim for transfer of the domain name.

A. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rights

The Petitioner has clearly established that it is, through its subsidiary Open Bank S.A., the proprietor of two EU trademark registrations for OPENBANK which predates the registration of the Domain Name. The Panel finds that the Domain Name is identical to the Petitioner’s OPENBANK trademarks. It is well established that “.se”, as a country code Top-Level Domain suffix (ccTLD), is disregarded in the assessment of identity or similarity between a Domain Name and a petitioner’s trademark.

The Panel finds that the first element of section 7.2 of the .se Policy is satisfied.

B. The Domain Name has been registered or used in bad faith

The Domain Holder alleges that the registration of the Domain Name was not made having the Petitioner or its OPENBANK trademark in mind, but was registered as a reference to the practice of open banking, an activity within the financial industry.

As stated by the Petitioner, the granting of registrations by the European Union Intellectual Property Office (“EUIPO”) to the Petitioner for the OPENBANK trademark is prima facie evidence of the validity of the term “openbank” as a trademark. Considering the period of time the Petitioner’s OPENBANK trademark has been registered, the strong Internet presence and usage of the Petitioner’s domain name <openbank.es> and the overall presence of the Petitioner and its subsidiary Open Bank S.A. on the European Union market, the Panel considers that the Petitioner’s OPENBANK trademark must have been known to practitioners within the financial industry in Europe. Considering the business that has been conducted by the Domain Holder, he must have been aware of the Petitioner, its business and its OPENBANK trademark when registering the Domain Name. Further, as stated by the Domain Holder, the content of the Domain Name website has been altered from included direct content presented on the website to auto-redirecting Internet users to other websites, including “www.tppvalidation.com”. The Panel is of the opinion that the auto-redirecting to “www.tppvalidation.com” through the Domain Name website created a risk of misperceptions on behalf of Internet users as to the source, sponsorship, affiliation, or endorsement of the Domain Name. This is especially the case considering the similarity between the Petitioner’s domain name <openbank.es> and the Domain Name, including the similarity between the ccTLD suffixes of such domain names. It shall also be noted that the registration of the domain name <openbank.es> predates the registration of the Domain Name.

Considering what has been mentioned above, the Panel finds that the Domain Name has been registered and used in bad faith in accordance with the second element of section 7.2 of the .se Policy. The fact that the Domain Holder stopped redirecting Internet users to “www.tppvalidation.com” through the Domain Name website, so that the Domain Name resolves to a blank website, does not change the Panel’s assessment in this regard.

C. The Domain Holder has no rights or justified interest in the Domain Name.

The Domain Holder has not claimed to have any rights to OPENBANK and no evidence has been presented in the case that would indicate the existence of such right or justified interest in the Domain Name. While the Arbitrator notes that the Domain Holder is claiming to provide consultancy services within the area of “Open Bank/Open Banking”, he has not submitted evidence to support such allegations.

Considering this and what has been stated in the foregoing section regarding bad faith, including the fact that the Domain Name resolves to a blank website, the Panel finds that also the third element of section 7.2 of the .se Policy is satisfied.

8. Decision

On the basis of the foregoing, the Domain Name <openbank.se> shall be transferred to the Petitioner.

9. Summary

The Domain Name <openbank.se> is identical to the Petitioner’s trademark OPENBANK. The Domain Name has been registered and used in bad faith in the meaning of the .se Policy and no fact that would constitute a right or a justified interest for the Domain Holder in the Domain Name has been established.

Jonas Gulliksson
Date: December 8, 2020