WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bank Nagelmackers N.V. v. WhoisGuard, Inc / Paulo Giardini

Case No. D2016-0819

1. The Parties

The Complainant is Bank Nagelmackers N.V. of Brussels, Belgium, represented by Gevers, S.A., Belgium.

The Respondent is WhoisGuard, Inc of Panama / Paulo Giardini of Brussels, Belgium.

2. The Domain Name and Registrar

The disputed domain name <nagelmackers.mobi> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2016. On April 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2016, 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 April 28, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 2, 2016 (the Complaint and the amended Complaint are hereinafter referred to both together as the “Complaint”).

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2016.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on June 6, 2016. 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, Bank Nagelmackers N.V., is a Belgian bank founded by P. Nagelmackers in 1747, making it the oldest bank in Belgium. The bank remained independent until 2001, when it merged with Delta Lloyd Bank. In 2015, the group decided to revive the name of “Bank Nagelmackers”.

The Complainant submitted evidence that it holds trademark rights for NAGELMACKERS (the “Trademarks”) in the Benelux for several classes, including the Benelux word mark NAGELMACKERS registered on September 10, 2012, under No. 0921134 and several Benelux figurative trademarks containing the word element “Nagelmackers”, the last of which was registered on July 20, 2015.

The disputed domain name <nagelmackers.mobi> was registered on February 12, 2016, well after the Complainant secured rights to the Trademarks.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

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

The Complainant contends that the disputed domain name is identical to one of its registered rights, and confusingly similar to several of its other registered rights.

The disputed domain name incorporates in its entirety the Complainant’s word Trademark. It also reproduces in its entirety the dominant word element “Nagelmackers” contained in its figurative Trademarks.

The Complainant asserts that the suffix “.mobi” should be disregarded, since it is a technical requirement for registration of a domain name.

The Complainant contends that the disputed domain name is therefore identical to one of the Trademarks in which the Complainant has rights, and confusingly similar to several of the Trademarks in which the Complainant has rights.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that it has rights in the name and trademark NAGELMACKERS and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant contends that the disputed domain name has been redirected towards the Complainant's corporate website “www.nagelmackers.be”.

The Complainant affirms that the Respondent has not been licensed, permitted or authorized by the Complainant to use its Trademarks, to seek registration of any domain name incorporating said Trademarks, or to redirect the disputed domain name to its website.

The Complainant asserts that, by redirecting the disputed domain name towards the Complainant’s corporate website, the Respondent is trying to mislead the consumers into thinking that the Respondent is linked to the Complainant. The Complainant therefore contends that the Respondent has no intention of using the disputed domain name in connection with a bona fide offering of goods or services, or of making a fair use of the disputed domain name. Accordingly, the Complainant concludes that, prima facie, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

(c) The disputed domain name was registered and is being used in bad faith.

The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.

The Complainant contends that the Respondent has redirected the disputed domain name towards the Complainant's corporate website and is thereby trying to create a likelihood of confusion between the disputed domain name and the Complainant’s Trademarks and website. The Complainant asserts that this is done in order to make the emails sent by the Respondent (using email addresses “[information]@nagelmackers.mobi” and “[administration]@nagelmackers.mobi”) look as if they originate from the Complainant.

The Respondent sends emails to the Complainant’s clients from the email addresses abovementioned, to offer vehicles for sale. The Complainant asserts that the name associated with the email addresses is “Bank Nagelmackers nv” and that this name is used in order to create a likelihood of confusion with the Complainant’s Trademarks. The Complainant further contends that the Respondent uses the Complainant’s company name in its email signatures, to make the clients believe that the person sending the emails from the abovementioned email addresses is an employee of the Complainant.

Moreover, the Complainant asserts that, as the disputed domain name was registered on February 12, 2016, and emails have been sent since February 24, 2016 – hence, shortly after registration –, the Respondent had prepared itself well to conduct its misleading business attempts when it registered the disputed domain name.

The Complainant concludes that, since the Respondent redirected the disputed domain name towards the Complainant’s website and used its company name, the Respondent obviously knew the Complainant and its trademarks when registering the disputed domain name, and therefore registered it in bad faith. Furthermore, the Complainant concludes that since the emails are sent from an address linked with the disputed domain name, the Respondent also uses the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to NAGELMACKERS.

Secondly, the disputed domain name fully incorporates the Complainant’s NAGELMACKERS word Trademark in which the Complainant has exclusive rights (and thus also the dominant word element of the other Trademarks in which the Complainant has exclusive rights).

Thirdly, this Panel finds, similarly to other UDRP panels (see Screwfix Direct Ltd v. Ajay Kaler, WIPO Case No. D2006-1309; LinkShare Corporation v. Joseph Obringer, WIPO Case No. D2007-0236; Wirecard AG v. Wang Degui,WIPO Case No. D2013-0391) that the addition of the generic Top-Level Domain (“gTLD”) “.mobi” to the disputed domain name can be disregarded for the purposes of comparison on the basis that it is a technical requirement for registration. In the present case, it does not constitute an element so as to avoid identity or confusing similarity for purposes of the Policy.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is identical to the Complainant’s NAGELMACKERS word Trademark and confusingly similar to its other Trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you 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.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is commonly known by the name “Nagelmackers” or is in any way affiliated with the Complainant or authorized or licensed to use the trademark or to seek registration of any domain name incorporating the Trademark.

After having examined the website operating under the disputed domain name, the Panel finds that the disputed domain name does not, at the moment, redirect to the Complainant’s website. However, the website shows links to the websites of other banks. Except for these links, the website does not show any activities. Therefore, and in view of the evidence of the Complainant, the Panel finds that there is no evidence showing that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. In fact, as set out in more detail below, this Panel believes that the Respondent’s registration was intentional and was done with the sole purpose of committing fraud.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith.”

First of all, with regard to the Respondent’s registration of the disputed domain name, this Panel believes, after reviewing the evidence presented by the Complainant, that the Respondent must have known and been aware of the Complainant’s rights on the prior NAGELMACKERS Trademarks and the associated products and services at the time of registration of the disputed domain name.

Furthermore, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s use of the disputed domain name. As asserted by the Complainant, and supported in evidence, the Respondent appears to have made use of the disputed domain name to send fraudulent emails containing offers for car sales to the Complainant’s clients. The name “Nagelmackers” is linked to the email addresses and used in the signature of the emails, making it look as though the emails are sent from an employee of the Complainant. It appears therefore that the Respondent is trying to create confusion with the Complainant’s Trademarks to conduct its fraudulent business. Similarly to other UDRP panels (see Radwell International, Inc. v. Lucien Seaforth, WIPO Case No. D2015-0013; B & H Foto & Electronics Corp. v. Whois Privacy Protection Service, Inc. / Jackie Upton, WIPO Case No. D2010-0841; Solvay SA v. Registration Private, Domains By Proxy, LLC / “SOLVAY SA”, WIPO Case No. D2016-0393), this Panel considers the above to be bad faith use of the disputed domain name for the purposes of the Policy.

In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under 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 <nagelmackers.mobi> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: June 20, 2016