WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DNB Bank ASA v. Abby lin (徐小敏) / Whois Privacy Protection Service of Chengdu West Dimension Digital Technology Co., Ltd

Case No. D2014-1449

1. The Parties

The Complainant is DNB Bank ASA of Oslo, Norway, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Abby lin (徐小敏) of China; Whois Privacy Protection Service of Chengdu West Dimension Digital Technology Co., Ltd of Chengdu, Sichuan Province, China.

2. The Domain Name and Registrar

The disputed domain name <dnbforex.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 22, 2014. On August 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2014, 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 August 26, 2014 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 amendment to the Complaint on the same day.

On August 26, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint together with the amendment to 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 in both Chinese and English, and the proceeding commenced on September 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 22, 2014.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on September 29, 2014. 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 one of the oldest banks in Norway. It is Norway's largest financial services group and one of the largest in the Nordic region in terms of market capitalisation. It offers a full range of financial services, including loans, savings, advisory services, insurance and pension products for retail and corporate customers. Furthermore, the Complainant is one of Norway's largest "Internet banks", having more than 1.8 million users.

The Complainant offers its financial services internationally under the mark DNB. Besides having registered the word mark DNB as a national trademark in Norway, the Complainant also owns an international portfolio of registered device marks where the word component DNB is the dominant one, including in China (International Registration No. 1091668, registered on June 23, 2011). The Complainant has several international branches and representative offices, including in the United Kingdom of Great Britain and Northern Ireland, and is registered with the Financial Conduct Authority. The Complainant also has a full service branch in China.

The Complainant operates websites like "www.dnbnor.no" (registered in 2003), "www.dnb.dk" (registered in 1997), "www.dnbbank.no" and "www.dnb.no" (both registered in 2010).

The disputed domain name was registered on April 29, 2014.

5. Parties' Contentions

A. Complainant

First, the Complainant asserts that the disputed domain name is identical or confusingly similar to its marks based on the following reasons:

1) The Complainant is the owner of the trademark DNB.

2) The disputed domain name fully incorporates the verbal element of the Complainant's device marks as well as the DNB word mark. It is well established in prior UDRP cases that the similarity between a trademark and a domain name is not eliminated by the mere fact that the trademark includes additional graphical elements.

3) The term "forex" will not have any impact on the overall impression of the dominant part of the disputed domain name, "dnb". It is well established that "forex" is an abbreviation of "foreign exchange market", i.e. a market where banks, businesses, governments, investors and traders come to exchange and speculate on currencies; being one of the largest and most liquid markets in the world. The overall circumstances in this case strongly indicate that the term "forex" refers to its generic meaning. In the present case, the descriptive word increases the confusing similarity, given the connection to the Complainant's services and therefore "dnb" should be viewed as the dominant part of the disputed domain name.

4) Prior UDRP cases have also established that confusing similarity is generally recognized when trademarks are paired up with different kinds of generic prefixes and suffixes. Further, given that the disputed domain name has been used in relation to a phishing scam, the Respondent obviously viewed the disputed domain name to be confusingly similar to the DNB mark. Even though the term "dnb" could potentially refer to other marks or companies, the previous content of the website connected to the disputed domain name makes it apparent that the disputed domain name was registered with the Complainant's trademark in mind.

5) The addition of the generic Top-Level Domain (gTLD) ".com" does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the trademark and the disputed domain name.

6) Likelihood of confusion includes an association with the trademark of the Complainant. By using the trademark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant's trademark.

7) The dispute domain name is, based on the above, confusingly similar to the Complainant's registered trademark DNB. The addition of the suffix "forex" does not detract from the overall impression and must therefore be considered to be confusingly similar with the Complainant's trademark.

Second, the Complainant asserts that the Respondent has no rights or any legitimate interests in respect of the disputed domain name on the following grounds:

1) There is no evidence that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name.

2) There is no evidence that would suggest that the Respondent has been using "dnb" in any other way that would give them any legitimate rights in the name. Therefore, the Respondent may not claim any rights established by common usage.

3) There is no license or authorization of any other kind, which has been given by the Complainant to the Respondent, to use the trademark DNB.

4) The Respondent is not an authorized dealer of the Complainant's services or products and has never had a business relationship with the Complainant. It was clear that no disclaimer was made on the website describing the non-existent relationship with the Complainant. Prior UDRP cases have found this to be a relevant factor in the finding of non-legitimate interest of the Respondent.

5) Although the Respondent registered the disputed domain name on April 28, 2014, the mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.

6) The Respondent knew of the Complainant's legal rights in the trademark DNB at the time of the registration and it is the fame of the trademark that has motivated the Respondent to register the disputed domain name. Therefore, the Respondent cannot claim to have been using "dnb", without being aware of the Complainant's rights to it.

7) In fact, the Respondent has used the disputed domain name to pass itself off as the Complainant in order to defraud the Complainant's customers through a fraudulent website highly similar to that of the Complainant's.

8) The Respondent used the disputed domain name to "phish" for financial information in an attempt to defraud the Complainant's customers. The Respondent's attempt to pass itself off as the Complainant and "phish" for customers' financial information is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to the Policy.

Third, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith on the following grounds:

1) The Respondent used the dispute domain name to engage in a phishing scam, making various references to "DNB Bank ASA", a term identical to the Complainant's company name.

2) By utilizing the Complainant's registered trademark, the Respondent was using the disputed domain name to deceive the Complainant's customers and manipulate them into divulging sensitive financial information. Thus, the Respondent's use of the disputed domain name constitutes bad faith registration and use under the Policy.

3) Furthermore, the Respondent has claimed to have ID number "204731", which is identical to the Complainant's firm reference number with the Financial Conduct Authority. In addition, the Respondent has used an address identical to the Complainant's old address in London.

4) The Complainant has also, via its "Takedown Service Provider", tried to get in contact with the registrant of the disputed domain name, but has not received any reply. Failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith in prior UDRP cases.

5) The website is currently inactive but such passive holding could still constitute an act of bad faith and any realistic use of the disputed domain name by the Respondent would constitute "passing off" and/or trademark infringement. In the current case, surrounding circumstances support the argument that the Respondent's use of the disputed domain name in a fraudulent site.

6) The Respondent has represented itself as the Complainant and used an ID number identical to the Complainant's firm references number with the "Financial Conduct Authority". Therefore, there is a considerable risk that the public has – and will – perceive the Respondent's disputed domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation between the Respondent and the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. The Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:

1) The previous website at the disputed domain name has been used in a phishing scheme and the Respondent has not responded to the Complainant's attempts to make contact with the owner.

2) The fact that the previous website at the disputed domain name was also available in English (as indicated in the top-right corner of the previous website) suggests that the Respondent is able to understand English.

All the above factors suggest that the use of English would not prejudice the Respondent's ability to defend itself in this proceeding. On the other hand, it would be cumbersome and to the Complainant's disadvantage to be forced to translate the entire Complaint into Chinese. Based on this, the Complainant requests that the proceeding be held in English, or, secondly, if the Panel does not agree to hold the entire proceeding in English, that the Complainant be allowed to submit its documentation in English (while the Respondent may still file a possible Response in Chinese).

After considering the circumstances of the present case and the submission of the Complainant's request, the Panel is of the opinion that the language for the present proceeding shall be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel's discretion under the Policy

Paragraph 11 of the Rules provides:

"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The Circumstances of this Case

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be the English language. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) the previous website which was connected to the disputed domain name was in English; (c) the Complainant has exhausted all ways to communicate with the Respondent but to no avail; (d) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant's allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

After considering the circumstances of the present case, the Panel decides that the proceeding shall be English and the decision will be rendered in English.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3. the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, 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 of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the DNB marks in relation to banking and financial services in Norway and many countries in the world. The Panel finds that the Complainant has rights and continues to have such rights in the relevant DNB marks.

The disputed domain name consists of the Complainant's marks DNB in its entirety, with the word "forex" and the gTLD ".com". In assessing the degree of similarity between the Complainant's trademarks and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant's DNB marks and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user.

The Panel finds that a prima facie case has been made out by the Complainant that the term "dnbforex" is confusingly similar to the Complainant's DNB trademarks, given that the distinctive portion of the Complainant's marks has been reproduced in its entirety in the disputed domain name. Unless the Respondent is able to offer to plausible explanations as to its choice of the term "dnbforex" for the disputed domain name, the Panel accepts the Complainant's contention that the term was chosen with the Complainant's trademarks DNB in mind and the addition of the word "forex" does not eliminate the identity or at least the similarity between the Complainant's trademarks and the disputed domain name.

Unfortunately, the Respondent has offered no explanation of its choice of the disputed domain name. Thus, the Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

The burden of proof on this element lies with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions.

According to paragraph 4(c) of the Policy, a 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 you [the Respondent] of the dispute, your [the 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) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you [the Respondent] have acquired no trademark or service mark rights; or

(iii) you [the Respondent] are 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 the Complainant has made out a prima facie showing and notes that the Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name.

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1) The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of "dnbforex" in its business operations;

2) There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark;

3) There is no indication that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;

4) The Complainant and its DNB marks enjoy substantial reputation in many countries including China, with regard to its banking and financial services.

Consequently, in the absence of contrary evidence and satisfactory explanations from the Respondent, the Complainant's prima facie case prevails.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website 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 the Respondent's website or location or of a product.

The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by the respondent in the appropriate cases.

One important consideration in the Panel's assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant's rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. The Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name based on the following grounds:

1) The Complainant and its DNB mark have a substantial reputation in Norway and in many countries in the world. It has registered the DNB trademark in China and also has a full service branch in China.

2) The Complainant has a substantial Internet presence with its many registered domain names incorporating the DNB mark.

3) There is evidence which supports the argument that the previous website at the disputed domain name was used for phishing purposes. This indicates prior knowledge of the Complainant and its DNB mark on the part of the Respondent.

Considering the above factors, it would have been pertinent for the Respondent to provide an explanation of his choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant's allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit there from.

Based on the evidence adduced before the Panel, the compelling conclusion is that the Respondent, by choosing to register and use a domain name which is confusingly similar to the Complainant's trademark, intended to ride on the goodwill of the Complainant's trademark in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant. In fact, the Complainant has adduced evidence to show that the Respondent has used the disputed domain name for purpose of a phishing scam, making various references to "DNB Bank ASA", a term identical to the Complainant's company name. Furthermore, there is evidence to suggest that the Respondent has misrepresented itself as the Complainant using an ID number identical to the Complainant's firm references number with the "Financial Conduct Authority". Such conduct on the part of the Respondent not only would result in consumer confusion but also bordered on fraudulent practices which indicated use of the disputed domain name in bad faith. Although the disputed domain name is presently inactive, the Panel may still find passive holding constitutes use of the disputed domain name in bad faith given the evidence before it. In the present case, the conduct of the Respondent with respect to the disputed domain name indicates use in bad faith.

In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent are indicative of registration and use of the disputed domain name in bad faith.

The Panel finds for the Complainant on the third part of the test.

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 <dnbforex.com> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist
Date: October 13, 2014