WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wirecard AG v. Yurij Koms

Case No. D2019-0175

1. The Parties

The Complainant is Wirecard AG of Aschheim, Germany, represented by Pinsent Masons LLP, Germany.

The Respondent is Yurij Koms of Kiev, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <mycrad2go.com> (the “Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2019. On January 25, 2019, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On January 28, 2019, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to the Complainant on January 29, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an e-mail communication to the Parties in English and Russian regarding the language of the proceedings. The Complainant filed an amended Complaint and requested English to be the language of the proceedings on January 30, 2019. The Respondent did not reply on the language of the proceedings.

The Center verified that the Complaint together with the amended 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 February 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2019.

The Center appointed Olga Zalomiy as the sole panelist in this matter on March 12, 2019. 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.

Upon reviewing the case file, it became evident, that the Complainant relied on unregistered trademark rights to the MYCARD2GO mark. On March 18, 2019, the Panel issued the Procedural Order No.1 inviting the Complainant to submit arguments and evidence in English supporting the Complainant’s contention that it owned unregistered trademark rights to the MYCARD2GO mark by March 20, 2019. The Panel also invited the Respondent to submit any response by March 22, 2019. In response, the Complainant submitted copies of the MYCARD2GO trademark registration and amended Complaint. The Respondent did not submit any response.

4. Factual Background

The Complainant is a German issuer of prepaid VISA cards “Mycard2go”. The Complainant owns the European Union trademark registrations of the MYCARD2GO mark, No. 014303457 and 014303465, filed on June 30, 2015 and registered on February 15 and 14, 2019 respectively. The Complainant also owns unregistered trademark rights predating registration of the mark.

The Respondent registered the Domain Name on November 14, 2018. The Domain Name directs to a website displaying the Complainant’s trademark, an image of the Complainant’s prepaid card and the Complainant’s name.

5. Parties’ Contentions

A. Complainant

The Complainant claims that it is a German marketer of prepared credit cards under the name Mycard2go. The Complainant contends that it owns the European Union trademark registrations for the MYCARD2GO mark and unregistered trademark rights in the MYCARD2GO mark due to extensive actual use of the mark in connection with prepared credit cards. The Complainant alleges that it has been using the MYCARD2GO mark since 2015 and its product is widely known. The Complainant asserts that it owns several domain names incorporating the MYCARD2GO trademark, which direct to websites in various countries. The Complainant claims that is has been using its ˂mycard2go.com˃ domain name since 2015 to direct to a website for its “Mycard2go” goods.

The Complainant alleges that the Domain Name is confusingly similar to the Complainant’s MYCARD2GO trademark. The Complainant argues that the mere transposition of the letters “r” and “a” in the Domain Name does not lessen similarity between the Domain Name and the Complainant’s MYCARD2GO trademark. The Complainant argues that consumers will consider “MYCARD2GO” and “mycrad2go” to be the same terms.

The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant contends the Domain Name is used for criminal purposes only. The Complainant alleges that the Domain Name resolves to a website, which is a copy of the Complainant’s website. The Complainant argues that the Respondent is using the Domain Name to perpetrate a scam to entice potential customers of the Complainant to share their financial details with the Respondent believing that they interact with the Complainant. The Complainant claims that it has received several reports from consumers who suffered financial losses as a result of entering their information on the website associated with the Domain Name.

The Complainant contends that the Respondent is not commonly known by the Domain Name. The Complainant claims that it has not licensed or otherwise authorized the Respondent’s use of its MYCARD2GO trademark. The Complainant alleges that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services because the Respondent is using the Domain Name for a website, which is a part of a fraudulent scheme.

The Complainant contends that the Respondent registered and is using the Domain Name in bad faith because the Respondent is engaged in the practice of “typosquatting” and that such practice has been deemed bad faith. The Complainant alleges that the Respondent was aware of the Complainant and its well-known MYCARD2GO trademark when it registered the Domain Name, which is per se bad faith. The Complainant claims that the Respondent registered the Domain Name solely for the purpose of intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant alleges that the landing page for the Domain Name is indistinguishable from that of the Complainant: it appears much like the Complainant’s website.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the proceeding

Under paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the parties agree to use a different language, or the registration agreement provides otherwise. The Panel has the right to determine language of the administrative proceeding based on the circumstances of the case¹.

Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. The Complainant requested that English be the language of the administrative proceeding because: (1) The Respondent is familiar with the English language because the Domain Name resolves to a website containing English language content; (2) Due to the Respondent’s fraudulent use of the Domain Name it is not clear whether the Respondent’s identity, nationality and place of residence and real location are linked to the Russian Federation or Ukraine; 3) Both the Complainant’s correspondence with the Registrar and the online available version of the registration agreement for the Domain Name were in English.

Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, … (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint.”².

The Respondent registered the Domain Name in Latin characters. As discussed in more detail below, the Domain Name, which is confusingly similar to the Complainant’s trademark, resolves to a website entirely in English. For all these reasons, it is likely that the Respondent understands English.

Not only does the Respondent understand English, he did not object to use of English as the language of this proceeding. Although the Center advised the Respondent in both English and Russian that he has a right to object to the Complainant’s request for English to be the language of the proceeding, the Respondent failed to do it. It will not be unfair to the Respondent if the proceeding is conducted in English. Making the Complainant translate the Complaint and supporting documents into Russian, however, will impose undue financial burden on the Complainant and delay resolution of the dispute.

Considering the facts and law stated above, the Panel grants the Complainant’s request that English be the language of this proceeding.

6.2. Discussion and Findings

Under paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of these elements regarding the Domain Name:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under the first UDRP element, the Complainant must prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

To satisfy the standing requirement, the Complainant asserts both registered trademark rights to the MYCARD2GO mark as of February 14, 2019 and common law, or unregistered, trademark rights to the MYCARD2GO mark as of 2015. Under section 1.1.3 of the WIPO Overview 3.0, trademark rights must be in existence at the time the complaint is filed. Because the Complainant’s trademark was registered after the Complainant filed the Complaint in this case, the Panel must review whether the Complainant owned an unregistered trademark at the time the Complaint was filed.

To determine whether the Complainant has unregistered or common law trademark rights for purposes of the UDRP, the Panel must consider whether the Complainant’s mark has become “a distinctive identifier which consumers associate with the complainant’s goods and/or services”.³ “Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys”.⁴ As shown by screen shots of results provided by the Wayback Machine⁵ (accessible at “www.archive.org”), the Complainant has been using the MYCARD2GO mark in connection with the prepaid cards continuously and consistently since 2015. It is likely that the Complainant’s trademark has achieved significance as a source identifier and that the Complainant owned unregistered trademark rights for purposes of the Policy on the date it filed the Complaint in this case because it appears that the Respondent has been targeting the Complainant’s mark as discussed more fully below.

“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”⁶ The generic Top-Level domain (“gTLD”) is disregarded under the confusing similarity test.⁷ The Respondent interchanged the letters “a” and “r” in the Domain Name to make it visually indistinguishable from the Complainant’s trademark. Because the Domain Name consists of an intentional misspelling of the Complainant’s mark and the gTLD “.com” is excluded from the confusing similarity analysis, the Panel finds the Domain Name is confusingly similar to the Complainant’s MYCARD2GO mark.

The Complainant has satisfied the first element of the UDRP.

B. Rights or Legitimate Interests

Under the second UDRP element, a complainant must make a prima facie case regarding the lack of rights or legitimate interests of the respondent.⁸

Under UDRP paragraph 4(c), the following may demonstrate rights or legitimate interests in a domain name:

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

(iii) the respondent is 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.

The evidence on file demonstrates the following:

1) The Complainant claims that it has not authorized the Respondent to use the Complainant’s MYCARD2GO trademark.

2) There is no evidence that the Respondent, Yurij Koms, is commonly known by the Domain Name. The Respondent provided no evidence that the Respondent owns trademark registrations or registered a business under the Domain Name.

3) The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Nor is he using the Domain Name in connection with a bona fide offering of goods or services. It is well-established that “the use of a domain name for illegal activity … can never confer rights or legitimate interests on a respondent”.⁹ The Respondent website’s landing page for the Domain Name displays the Complainant’s trademark, an image of the Complainant’s prepaid card and the Complainant’s name. The page requires prospective users to login and to activate their MYCARD2GO cards. The totality of circumstances indicate that the Respondent has been using the website connected to the Domain Name as a part of a phishing scam designed to gain Internet user’s funds and/or unauthorized access to their financial information.

Because the Complainant has made out a prima facie case regarding the Respondent’s lack of rights or legitimate interests in the Domain Name, the burden to rebut the Complainant’s case shifted to the Respondent.¹⁰ The Respondent failed to come forward with necessary evidence, so the Complainant deemed to have satisfied the second element of the UDRP.¹¹

C. Registered and Used in Bad Faith

Under the third UDRP element, the Complainant must prove that the Domain Name was registered and is being used in bad faith.

Based on the totality of evidence, it is likely that the Respondent registered the Domain Name with the Complainant’s mark in mind. First, the Domain Name consists of an intentional misspelling of the Complainant’s trademark making it visually indistinguishable from the Complainant’s MYCARD2GO mark and the Complainant’s own <mycard2go.com> domain name. Second, the landing page for the Domain Name prominently displays the Complainant’s trademark, an image of the Complainant’s prepaid card and the Complainant’s name.

The Panel also finds that the Respondent is using the Domain Name in bad faith. “It goes without saying that a Domain Name which has been acquired and used for the purpose of perpetrating a fraud has been acquired and used in bad faith.”¹² The Respondent is using the Domain Name to attract, for commercial gain, Internet users to the Respondent’s websites by creating likelihood of confusion with the Complainant’s marks as to the affiliation or endorsement of either the Respondent or its website. The Respondent is using the Domain Name to direct to a website designed to look like an official Complainant’s website¹³ to obtain financial information of potential users. It is inconceivable that the Respondent is trying to use such information for legitimate purposes.

Because the Domain Name was registered and is being used in bad faith, the third element of the UDRP has been satisfied.

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, <mycrad2go.com> be transferred to the Complainant.

Olga Zalomiy
Sole Panelist
Date: March 22, 2019

¹Id.

² Section 4.5.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

³ Section 1.3, WIPO Overview 3.0.

⁴Id.

⁵ “[I]t has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision”, section 4.8, WIPO Overview 3.0.

⁶Section 1.9, WIPO Overview 3.0.

⁷ Section 1.11.1, WIPO Overview 3.0.

⁸ Section 2.1, WIPO Overview 3.0.

⁹ Section 2.13.1, WIPO Overview 3.0.

¹⁰ Section 2.1, WIPO Overview 3.0.

¹¹Id.

¹²The Prudential Assurance Company Limited v. Prudential Securities Limited, WIPO Case No. D2009-1561.

¹³ See, section 3.2.1, WIPO Overview 3.0.