The Complainant is Deutsche Kreditbank AG, Germany, represented by K&L Gates, Germany.
The Respondent is Contact Privacy Inc., Canada / Telford Foucault, France.
The disputed domain names <banking-dkb.com>, <bankingdkb.com>, <banking-dkb.net>, and <bankingdkb.net> are registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2019. On August 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 7, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 8, 2019 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 August 9, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2019.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on September 23, 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.
The Complainant, Deutsche Kreditbank AG, is an (online) German Bank, which has been operating under the commercial name “Deutsche Kreditbank”, or “DKB” for short, since 1990.
The Complainant has proven to be the owner of the DKB trademark, which enjoys protection through several registrations.
The Complainant is inter alia the owner of:
German word mark DKB Reg. No. 395 12 394, registered on March 21, 1995, for “finances” in class 36. European Union trade mark DKB Reg. No. 006107569, registered on July 17, 2007, for “finances” in class 36, among other services.
International word mark DKB Reg. No. 943 513 with priority of July 30, 2007, claiming protection in Switzerland, among other countries, for “insurance, banking services” in class 36.
Furthermore, the Complainant is holder of the domain name <dkb.de> under which the official website of the Complainant is available, and its subsidiary - DKB Service GmbH - holds the domain name <dkb.com> which also directs to the official website.
The commercial name, the trademarks and the domain names of the Complainant are being used for online banking services and related services as well as for information purposes.
The disputed domain names, <banking-dkb.com>, <bankingdkb.com>, <banking-dkb.net>, and <bankingdkb.net>, were all registered on July 19, 2019.
The websites relating to the disputed domain names are not active.
The Complainant claims that the disputed domain names are confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain names; and that the Respondent registered and is using the disputed domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
In order for the Complainant to obtain a transfer of the disputed domain names, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:
(i) The disputed domain names are 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 names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
The Complainant has established rights in the DKB trademark.
The four disputed domain names consist of the DKB trademark with the addition of the generic term “banking”. This Panel agrees with the Complainant’s assertion that the addition of the term “banking” in the disputed domain names is irrelevant in countering the confusing similarity between the Complainant’s DKB trademark and the disputed domain names. Pursuant to section 1.8 of the Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”
Indeed, as argued by the Complainant, the abbreviation “DKB” as such has no bank-specific meaning and could, in theory, be used for completely different services. However, in combination with the term “banking” it appears to clearly relate to the Complainant and its banking services.
Therefore, the Panel finds the disputed domain names to be confusingly similar to the DKB trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “dkb banking” or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services. In fact, it appears from the document available, that the disputed domain names are not used. Finally, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain names.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain names were registered and have been used in bad faith.
Indeed, the Complainant gives several bases for its contention that the disputed domain names were registered and have been used in bad faith.
Particularly relevant are the Complainant’s unchallenged assertions (which the Panel accepts and partially reports below) that:
The Respondent could not be unaware of the existence of the Complainant’s trademarks when registering the disputed domain names;
As argued by the Complainant, the abbreviation “DKB” as such has no bank-specific meaning and could, in theory, be used for completely different services. However, the Respondent’s choice to combine it with the term “banking” shows a clear intention to target the Complainant and its banking services, and it shows that the Respondent was aware of the Complainant’s trademark and activity when the Respondent registered the disputed domain names.
Indeed, owing to the fact that the term “DKB” is not commonly used to refer to banking services (other than Complainant’s banking services), and that all four disputed domain names contain the Complainant’s DBK trademark combined with the term “banking” - which describes Complainant’s services - it is highly unlikely that the Respondent chose the disputed domain names without the intention of invoking a misleading association with the Complainant.
This is even more true considering that the domain names have been registered using a privacy shield service, i.e., without disclosing the real identity and/or the company name. As pointed out by the Complainant, for a bank, which is usually built on trust and credibility, this is not common. By contrast, the registration without disclosing the true identity is an indication that the disputed domain names may have been registered for fraudulent purposes.
Indeed, it is not rare to see this kind of registrations being used to collect user data, especially addresses and contacts or, even worse, to phish customer data. Here the Panel agrees with the Complainant’s assertion that, especially in the field of online banking, this is a very sensitive issue.
Finally, another indication of bad faith registration and use of the disputed domain names is the fact that the Respondent has not denied the assertions of bad faith made by the Complainant in this proceeding. Hence the Panel finds that if the Respondent had legitimate purposes for registering and using the disputed domain names, it would have responded to these assertions.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain names in bad faith.
Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 names, <banking-dkb.com>, <bankingdkb.com>, <banking-dkb.net> and <bankingdkb.net> be transferred to the Complainant.
Date: September 27, 2019
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