WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cembra Money Bank AG v. Original-Kreditbox AG limited, Cinar Abdulhamit

Case No. D2015-0885

1. The Parties

The Complainant is Cembra Money Bank AG of Zürich, Switzerland, represented by Walder Wyss & Partner, Switzerland.

The Respondent is Original-Kreditbox AG limited / Cinar Abdulhamit of London, United Kingdom of Great Britain and Northern Ireland (the "UK").

2. The Domain Name and Registrar

The disputed domain name <cembrax.com> is registered with Registry Gate GmbH (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 26, 2015. On May 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 11, 2015.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 3, 2015.

The Center appointed Tobias Malte Müller as the sole panelist in this matter on July 9, 2015. 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.

On July 23, 2015, the Center received supplemental filings from the Complainant. On July 29, 2015, the Panel sent a Panel Order to the parties rejecting the supplemental filings.

4. Factual Background

The Complainant is the registered owner of numerous trademark registrations for and/or including the term CEMBRA, in particular Swiss trademark number 649008 CEMBRA (word), registered on September 25, 2013 for goods and services in classes 9, 16, 35, 36, 38, 39 and 42 and Swiss trademark number 650607 CEMBRA MONEYBANK (figurative), registered on November 4, 2013 for goods and services in classes 9, 16, 35, 36, 38, 39 and 42. Furthermore the Complainant's corporate name contains the term "cembra", since the Complainant is registered under the corporate name "Cembra Money Bank AG".

The disputed domain name <cembrax.com> was registered by the Respondent on April 18, 2015 and it currently resolves to a website that displays no content.

5. Parties' Contentions

A. Complainant

It results from the Complainant's undisputed allegations that the Complainant's core business is providing banking and financial services. The Complainant uses its several trademarks including the term CEMBRA, (i.e. the sign "cembra" and the logo with "cembra") as well as the domain names <cembra.ch> and <cembra.com> since its rebranding in 2013. The sign "cembra" is in the center of its advertising presence and relates to a strong tree (i.e. the Swiss stone pine "Pinus Cembra" that is a strong tree endemic in the mountains of Switzerland) standing for a strong trademark with Swiss origin, reliability and engagement. The sign "cembra" is therefore a strong source identifier for the Complainant's company. The Complainant contends that the trademark CEMBRA is well known in Switzerland and that the Complainant itself and its trademarks are well known also internationally enjoying a good reputation in the financial service industry.

The Complainant contends that the disputed domain name is confusingly similar to its CEMBRA trademarks since it wholly incorporates the Complainant's trademark and the addition of the letter "x" is not enough to distinguish the disputed domain name from the CEMBRA trademarks.

It further results from the Complainant's undisputed contentions that the Respondent has no prior rights or legitimate interests in the disputed domain name.

In particular, the Respondent is not offering bona fide services. In fact, the Complainant contends that on the website accessible under the disputed domain name, the Respondent offers the same financial services as the Complainant using the same trademark CEMBRA, since the letter "x" in superscript is actually being depicted as a footnote or reference, which is why the sign is read as CEMBRA. The Respondent intends to make commercial gain because it charges for its services as a loan agent a commission fee of the requested loan sum. In particular, the Respondent tries to make money by addressing people who are already in debt and to whom a regular bank, which respects Swiss law and conducts a credit assessment, would not give a loan. According to the Complainant's allegations, the Respondent explicitly states on its webpage that it intends to circumvent Swiss law and all this by charging a commission fee. The Respondent is not conducting a credit assessment, which constitutes a violation of Swiss consumer protection law.

Moreover, according to the Complainant's allegations, the Respondent is not commonly known by the disputed domain name. In fact, it did not register any trademarks consisting of the sign "cembra" and did not use the sign "cembrax" (with the letter "x" in superscript) but until recently when the disputed domain name <cembrax.com> was registered. Moreover, when conducting a Google search with the word "cembrax", there is no result concerning the Respondent's website "www.cembrax.com" or its services; to the contrary, the first result is the Complainant's website "www.cembra.ch".

Finally, the Complainant contends that the Respondent registered and used the disputed domain name in bad faith. According to the Complainant's allegations by using the quasi-identical sign "cembra" (with the letter "x" in superscript) in its Internet presence as well as a domain name for identical services, the Respondent deliberately created a likelihood of confusion with the trademarks and the corporate name as well as with the services of the Complainant. The Respondent also intends to mislead consumers about the background of its services. Consumers have the impression that there must be a commercial relationship between the Respondent and the Complainant. According to the Complainant, the Respondent further tries to benefit from the good reputation of the Complainant. In addition, the Respondent, under another corporate name "CembraX Ltd" but with the same contact person "Cinar Abulhamit" also registered the domain name <cembrax.ch>, where it intends to start offering its financial services. The Complainant has also filed a parallel complaint against the domain name <cembrax.ch>.

Finally, by using the disputed domain name <cembrax.com>, the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, and endorsement of its website, location and of financial services on its website.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:

(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.

The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Unsolicited Supplemental Filings

The Center received unsolicited supplemental filings from the Complainant on July 23, 2015 requesting the addition of domain names to the current proceedings. Although the Rules do not explicitly provide for supplemental filings, but paragraph 10(b) of the Rules directs the Panel to "ensure that the administrative proceeding takes place with due expedition".

The Center issued on July 29, 2015, a Panel Order informing the parties that it did not accept the supplemental filings of the Complainant since they were filed very belatedly, i.e. on the projected decision date.

B. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for and/or including the verbal element "cembra". Reference is made in particular to Swiss word mark number 649008 CEMBRA, registered on September 25, 2013. This Swiss trademark predates the creation date of the disputed domain name which is April 18, 2015.

Many Panels have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates the complainant's trademark in its entirety (e.g., Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812). This is the case where the Complainant's registered trademark CEMBRA is fully included in the disputed domain name. Finally, it is the view of this Panel that the addition of the element "x" results to be a common typographical error when typing <cembra.com>. In any case it does not serve to distinguish the disputed domain name from the Complainant's trademark.

In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests to the disputed domain name. In the Panel's view, based on the allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.

Currently no content is displayed on the website to which the disputed domain name resolves. The Panel notes the previous use of the disputed domain name, as submitted by the Complainant, misleading Internet users of the (non-existing) relationship between the Complainant and the Respondent. Such use can neither be considered a bona fide offering of goods or services nor 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 in the sense of paragraph 4(c)(i) and (iii) of the Policy (s. Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, supra).

Finally, the Respondent is not commonly known by the disputed domain name nor has it acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.

It is acknowledged that once the Panel finds a prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith. One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location (paragraph 4(b)(iv) of the Policy).

It is the view of this Panel that the Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the CEMBRA-trademarks as to the source, sponsorship, affiliation or endorsement of its website. According to the Complainant's non-contested allegations the Respondent's website offered financial services and the Respondent did therefore benefit from the confusion arising from the similarities in the disputed domain name and services offered by the Complainant and purported to be offered by the Respondent. Therefore, it is highly likely that the Respondent received revenue from Internet users who came across the Respondent's website by means of confusion with the CEMBRA trademark (see The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa, WIPO Case No. D2014-2100; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, supra).

The Panel notes that the disputed domain name is currently held passively (i.e. resolves to a website that displays no content) and no response to the Complaint was filed. Previous UDRP-Panels have found that such use does not prevent a finding of bad faith (cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, supra).

In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(b)(iv) 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 <cembrax.com> be transferred to the Complainant.

Tobias Malte Müller
Sole Panelist
Date: July 29, 2015