WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sofort GmbH v. WhoisGuard Protected, WhoisGuard, Inc. / Dumme Sau

Case No. D2019-2662

1. The Parties

The Complainant is Sofort GmbH, Germany, represented by SILKA Law AB, Sweden.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Dumme Sau, Germany.

2. The Domain Name and Registrar

The disputed domain name <sofortüberweisung.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2019. On October 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2019, 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 November 7, 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 November 12, 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 November 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2019. The Respondent sent an email communication in English on November 7, indicating that he does not speak English and asking what is the problem. The Respondent sent email communications on November 18 and 19 to rebut the Complaint. The Complainant submitted a supplemental filing on November 21, 2019. The Center notified the Parties of the commencement of panel appointment process on December 9, 2019.

The Center appointed Kaya Köklü as the sole panelist in this matter on December 17, 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.

4. Factual Background

The Complainant is a bank-independent Internet payment service provider originally founded in 2005. It is active in almost all European countries, particularly in Germany.

According to the case file, the Complainant owns various trademark registrations since 2010 comprising the mark SOFORT, such as European Union Trademark Registrations No. 007312622, No. 007312631, and No. 011322955, all of them registered with the European Intellectual Property Office, covering protection for inter alia online banking and financial services.

The Complainant also owns and operates various domain names since at least 2005, such as <sofortueberweisung.com>.

The disputed domain name was registered on June 14, 2019.

The nominal Respondent is a privacy service located in Panama. The true identity of the Respondent, however, remains unknown as the contact details in the WhoIs records for the disputed domain name are incomplete and apparently incorrect.

As evidences in Annex 7 to the Complaint, the disputed domain name resolves to a third-party website with adult content.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is confusingly similar to its SOFORT trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is an official or authorized link between the Complainant and the Respondent.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly argues that the Respondent must have been well aware of the Complainant’s SOFORT trademark, when registering and taking control over the disputed domain name.

B. Respondent

The Respondent requests the denial of the Complaint.

In essence, the Respondent alleges that he has registered the disputed domain name only for noncommercial and charitable purposes.

Furthermore, he asserts that the disputed domain name is consisting of descriptive terms in the German language, which in his view cannot be monopolized by an entity for commercial purposes.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark 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.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the views stated therein.

A. Consideration of Supplemental Filing

The Panel notes that the Center received a supplemental filing from the Complainant on November 21, 2019.

There is no provision in the Rules generally allowing such supplemental filings. Rather, the Panel has discretion to admit them.

In this case, the Panel notes that the supplemental filing submitted by the Complainant mainly repeats its legal arguments without the provision of relevant evidential material, and hence, contains nothing which would alter the Panel’s analysis below.

Hence, the Panel concludes that there is no necessity to admit the Complainant’s supplemental filing in the present case.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has registered trademark rights in the mark SOFORT by virtue of various trademark registrations since at least 2010.

The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered SOFORT trademark, as it fully incorporates the Complainant’s trademark. As stated at section 1.9. of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. The mere addition of the German term “Überweisung” (which mans “bank transfer” in the English language) does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s SOFORT trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate rights or legitimate interests in the disputed domain name.

While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make convincing arguments to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).

With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no license or any similar right to use the Complainant’s SOFORT trademark within the disputed domain name.

Also, the case file does not contain any indication that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. Especially, the Respondent has failed to show that the disputed domain name has been or is intended to be used in connection with a bona fide offering of goods or services.

In this regard, the Panel considers the Respondent’s allegation that the disputed domain name has been created solely for social and charitable purposes as not convincing and a simple self-serving assertion.

More importantly, the Respondent’s allegation is not supported with any material evidence. The Respondent did neither reveal reliable documentation to support his allegations nor did the Respondent provide any explanation why he instead of social and charitable content actually provides adult content on the website at the disputed domain name (cf. Annex 7 to the Complaint). The provided documents in the case file rather support the Panel’s opinion that the disputed domain name was at least so far never legitimately in use for the alleged intention.

Furthermore, the Panel believes that the Respondent is not using the trademark SOFORT in combination with the term “Überweisung” descriptively in connection with its relied-upon meaning. The Panel agrees insofar that the German terms “sofort” and “Überweisung” (meaning respectively “immediate” and “bank transfer” in the English language) could be assessed as a combination of dictionary terms.

However, the Panel is convinced that the Respondent is actually not using the trademark SOFORT in combination with the term “Überweisung” descriptively in connection with its relied-upon meaning. In this regard, the Panel particularly notes that there is no connection between the terms used within the disputed domain name and the explicit adult content provided by the Respondent on the website at the disputed domain name. In fact, the Respondent is not even arguing a descriptive use.

The Panel is actually even convinced that the Respondent was well aware of the Complainant’s SOFORT trademark, its business and its provided services at “www.sofortueberweisung.com” before registering and using the disputed domain name. The Panel believes that the Respondent deliberately has chosen the disputed domain name in order to target Internet users who are searching for the services provided by the Complainant at “www.sofortueberweisung.com”. In view of the Panel, there is a considerable risk that these Internet users may end up on the website of the Respondent with explicit adult content. The Panel believes that this cannot be sufficient basis for assessing a bona fide offering of goods or services by the Respondent.

Taking all circumstances of the present case into consideration, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel notes that the combination of the mark SOFORT and the term “Überweisung” is actively used by the Complainant in commercial terms as well as its official website at “www.sofortueberweisung.com”.

The Panel believes that the Respondent was fully aware of the Complainant’s trademark when it registered the disputed domain name. The Respondent itself does not even contest its knowledge. The Respondent’s argumentation that the trademark SOFORT in combination with the term “Überweisung” may also be used in a descriptive way is not convincing and is assessed by the Panel as a self-serving argument only. The Panel is rather convinced that the Respondent must have had the Complainant’s trademark and its official website at “www.sofortueberweisung.com” in mind when registering the disputed domain name.

Additionally, by using the disputed domain name, which comprises the Complainant’s trademark in its entirety and is almost identical to the Complainant’s official website at “www.sofortueberweisung.com”, the Respondent apparently targets the diversion of Internet traffic from the Complainant’s site to the Respondent’s site. Noting that the Respondent lacks any rights or legitimate interests in the disputed domain name, the use of the disputed domain name incorporating the Complainant’s trademark and misleading Internet users to a website with explicit adult content for commercial gain, is in view of the Panel sufficient evidence of bad faith under paragraph 4(b)(iv) of the Policy.

All in all, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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 <sofortüberweisung.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: December 30, 2019