WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mitsubishi UFJ Financial Group, Inc. v. Jose Castrellon, Sky IP, Inc

Case No. D2012-2334

1. The Parties

The Complainant is Mitsubishi UFJ Financial Group, Inc. of Tokyo, Japan, represented by Sanderson & Co., United Kingdom of Great Britain and Northern Ireland (“UK”).

The Respondent is Jose Castrellon, Sky IP, Inc. of Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name <jpmufg.com> is registered with 1API GmbH, of Saarland, Germany (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2012. On November 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2012, 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.

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 December 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2012.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on January 9, 2013. 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 is a Japanese banking group which has been created in 2005 as a result of the merger of Mitsubishi Tokyo Financial Group and UFJ Holdings, two Japanese banking groups.

The Complainant owns several trademarks consisting in whole or in part of the term “mufg”. Such is the case in particular of:

- the International verbal trademark MUFG BIZBUDDY No. 1026352, that was registered on April 8, 2009 under classes 9, 35, 36, 41, 42 and 45 of the Nice Classification in several countries, with a priority date as of March 4, 2009.

- the International figurative trademark MUFG No. 879802, that was registered on April 15, 2005 under class 36 of the Nice Classification in several countries, with a priority date as of February 21, 2005.

- the International figurative trademark MUFG No. 987309, that was registered on March 6, 2008 under classes 35, 37, 38, 39, 40, 41, 42, 43, 44 and 45 of the Nice Classification in several countries, with a priority date as of August 5, 2005.

On July 6, 2012, the Respondent registered the disputed domain name.

In August 2012, several emails were sent from allegedly the Complainant’s employees to unidentified users in the UK. These emails all referred to securities purchased agreement and a “Net Capital Charge” that would have to be paid by the concerned users prior to the receipt of any payment. However, none of these employees, who appear to be actual high-ranking London employees of the Complainant, have ever written such emails.

On September 27, 2012, the Complainant issued an official communication, which reads as follows:

“We would like to notify you of a fraudulent use of our corporate/group name, and domain name including the characters, “MUFG”.

We have recently become aware of emails sent under the name of “Bank of Tokyo-Mitsubishi UFJ Financial Ltd.” from an address that seeks to mimic a legitimate “MUFG” domain address, an example being “jpmufg.com”. Our group name and logo are also used in the attachments of such emails without our consent. These emails appear to have been used fraudulently to persuade the email recipient to send an advance payment of funds (as part payment of fees/charges) to some escrow account in order for huge sums of stock sales profit to be released/transferred to the email recipient.

“Bank of Tokyo-Mitsubishi UFJ Financial Ltd.” is in no way associated with our group including The Bank of Tokyo-Mitsubishi UFJ, Ltd.

Furthermore, “jpmufg.com” is not an authorized email address of the Mitsubishi UFJ Financial Group. It is not authorized by any company within our group including The Bank of Tokyo-Mitsubishi UFJ, Ltd., and there is no record of such a message having been sent from the email server of the Mitsubishi UFJ Financial Group companies.

Such emails are in no way associated with any of the Mitsubishi UFJ Financial Group companies, and they have been sent without the knowledge or consent of the Mitsubishi UFJ Financial Group companies. Please be careful.

We appreciate your understanding.”

5. Parties’ Contentions

A. Complainant

The Complainant first asserts that the disputed domain name is confusingly similar to its trademarks, as it entirely contains the term “mufg” and that the addition of “jp” is merely descriptive of the Complainant’s country of origin.

The Complainant then contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not licensed to use the Complainant’s trademarks and is not affiliated with the Complainant in any way. The Respondent is not making any bona fide offering of goods or services in connection with the disputed domain name; the Complainant rather is of the opinion that the disputed domain name, which does not resolve to any website, has only been set up to support a scam by providing an email address that is very similar to genuine email addresses of the Complainant. Furthermore, the Respondent is not commonly known by the disputed domain name and is not making any legitimate or noncommercial use out of it.

The Complainant finally affirms that the disputed domain name was registered and is being used in bad faith. The disputed domain name is believed to provide support to scams surrounding the fraudulent promotion of investment into or sale of certain stocks. The most likely reason for the Respondent to have registered the disputed domain name is to use it to send fictitious emails in order to obtain personal information from the recipients of the emails, or is planning to fraudulently elicit payments from individuals who erroneously believe there is connection to the Complainant. The disputed domain name has thus been registered and used to commit fraudulent actions, in that the Respondent or others persons in control of the disputed domain name impersonated the Complainant or its staff in order to deceive and extract monies via a scam.

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”.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a 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

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant proves to be the holder of several registered trademarks consisting in whole or in part of the acronym “MUFG”.

UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive.

Such largely happens to be the case here. “MUFG”, which is the acronym of the Complainant and the dominant part of its trademarks, is entirely contained in the disputed domain name. The addition of “jp” at the beginning of the disputed domain name fails to mitigate this similarity since it is merely a common abbreviation for Japan, and thus a descriptive term (see e.g. Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; and Hachette Filipacchi Presse v. Vanilla Limited / Vanilla Inc. / Domain Finance Ltd., WIPO Case No. D2005-0587). To the contrary, it rather strengthens the likelihood of confusion by making Internet users mistakenly believe that the website might be the Complainant’s official website in Japan.

As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

As stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

In the present case, the Complainant is the owner of numerous MUFG trademarks. The Complainant has no business or other relationships with the Respondent. As a result, the Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.

Consequently, it was up to the Respondent to demonstrate rights or legitimate interests by showing, among other circumstances, any of the following elements (paragraph 4(c) of the Policy):

(i) Before any notice to it of the dispute, the Respondent used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) The Respondent is commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) The Respondent is making 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 case at hand, the Respondent did not respond to the Complainant’s allegations and therefore did not rebut the Complainant’s prima facie case, failing to invoke any circumstances that could demonstrate any rights or legitimate interests in the disputed domain name.

In light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.

C. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

Bad faith requires the Respondent to be aware of the Complainant’s trademarks. In the present case, there is no doubt that the Respondent was fully aware of the Complainant’s trademarks when it registered the disputed domain name.

The Complainant provides ample evidence that the disputed domain was registered with the sole purpose of enabling the Respondent to send emails to individuals and have them mistakenly believe that they were trading with the Complainant or one of its subsidiary, so as to obtain personal information from the recipients of the emails or even money.

As a result, the Complainant has convincingly demonstrated that the disputed domain name had been registered and used with a phishing scam.

As stated by other panels, “use of a disputed domain name for the purpose of defrauding Internet users by the operation of a “phishing” website is perhaps the clearest evidence of registration and use of a domain name in bad faith. The fact that the website is currently inactive does not negate such a finding” (The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883/Lauren Terrado, WIPO Case No. D2012-2093). Rather, phishing can also be carried out by email as in the present case (see: Crédit Industriel et Commercial S.A., Banque Fédérative du Crédit Mutuel v. Michel Dupont, WIPO Case No. D2009-1498).

It thus appears clear to the Panel based upon the overall circumstances of the case that, in accordance with paragraph 4(b) of the Policy, the disputed domain name was registered and is being “used to intentionally attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that we site or location or of a product or service on that web or location”.

As a result, the Panel is of the opinion that the disputed domain name was registered and is being used in bad faith under the paragraph 4(a)(iii) 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 <jpmufg.com> be transferred to the Complainant.

Philippe Gilliéron
Sole Panelist
Date: January 10, 2013