WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Smava GmbH v. WhoisGuard, Inc. / Yurii Shliapa, Techmedia4u

Case No. D2020-2922

1. The Parties

The Complainant is Smava GmbH, Germany, internally represented.

The Respondent is WhoisGuard, Inc., Panama / Yurii Shliapa, Techmedia4u, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <smava-kredite.org> (“Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2020. On November 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 6, 2020, the Registrar transmitted by email 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 email communication to the Complainant on November 19, 2020, 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 20, 2020 in which it also requested the transfer of the disputed domain name.

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 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2020.

On November 21 and 25, 2020, the Center received email communications from the Respondent indicating its willingness to transfer the disputed domain name to the Complainant. On November 23, 2020, the Center sent the possible settlement email to the Parties and indicated if they wished to explore settlement options, the Complainant should submit a request for suspension. On November 24, 2020, the Complainant indicated it would like to continue the proceeding.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on January 20, 2021. 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 following facts are undisputed.

Since 2006, the Complainant has been active in business transactions and has since then operated the website “www.smava.de”, a loan comparison portal in Germany.

The Complainant is the owner of various trademark registrations in various countries, including the word mark SMAVA, which has been registered with the German Patent and Trademark Office under the registration number DE30562188 and registered on December 22, 2005 for services in classes 35, 36 and 38 (the “Trademark”).

The Domain Name was created on August 27, 2020. The Domain Name resolves to a website in the German language which resembles the website “www.smava.de”, operated by the Complainant (the “Website”).

5. Parties’ Contentions

A. Complainant

The Complainant considers the Domain Name to be confusingly similar to the Trademark in which it has rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Domain Name. According to the Complainant, the Respondent has not used the Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Domain Name.

Finally, the Complainant considers that the Domain Name was registered is being used in bad faith.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions, but has offered to transfer the Domain Name to the Complainant in two email communications received by the Center on November 21 and 25, 2020 respectively.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that, in order to obtain the transfer of the Domain Name the Complainant must prove:

(i) The Domain Name registered by the Respondent 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 with respect to the Domain Name; and

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

The Panel notes that consent to transfer by the Respondent can provide a basis for an order for transfer without a need for consideration of the UDRP grounds. Taking into account the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.10 and inter alia Pierre Balmain S.A. v. Domains By Proxy, LLC / Daniel Phillips,WIPO Case No. D2015-0189 (<balmainarmy.com>), the Panel finds that when the Complainant seeks transfer of the Domain Name, and the Respondent agrees to transfer, the Panel may proceed immediately to make an order for transfer.

In this case, the Center received two communications from the Respondent, in the first stating that it will give the Domain Name to the Complainant at any time and in the second confirming this. The Panel finds that it undoubtedly demonstrates the Respondent’s consent to transfer the Domain Name.

On the other hand, the Panel also notes the Complainant indicated in its communication of November 24, 2020 that “[a]s the respondent used all content, intellectual property and trademarks of smava.de a mere settlement on the transfer of the domain without public disclosure of the respondent is not sufficient for us.” It appears that the Complainant may desire a decision issued on the merits. Therefore, the Panel has decided to grant such request.

A. Identical or Confusingly Similar

The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the Trademark.

The Complainant has shown that it has rights in the Trademark.

In accordance with the WIPO Overview 3.0, section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.

In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the combination of the Trademark with the descriptive element “kredite” (German for “credit”). The addition of this term does not prevent a finding of confusing similarity. Given the activities of the Complainant, i.e.,running a loan comparison portal, it would in fact affirm the possible confusion.

In addition, with regard to the generic Top-Level Domain (“gTLD”) suffix “.org”, it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the suffix is a necessary component of a domain name and does not give any distinctiveness.

For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.

B. Rights or Legitimate Interests

The Respondent did not formally reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence provided by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:

(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making 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.

There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.

The Respondent does not appear to be affiliated with the Complainant in any way. There is no evidence that the Respondent is commonly known as “smava-kredite”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever been permitted by the Complainant to register or use the Trademark.

The Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services. In fact, the Respondent uses the Domain Name to impersonate the Complainant by linking the Domain Name to the Website which is a clear copycat of the Complainant’s website. This seems to indicate fraudulent use by the Respondent and this cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name.

Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no substantive Response was filed by the Respondent. According to earlier UDRP panels, “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090; and, Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493).

Consequently, the Panel finds it established that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant has thus established the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel refers to its findings under the section 6.B. above.

As the Respondent has sought to impersonate the Complainant, and the addition term “kredite” in the Domain Name is related to the Complainant’s activities, it is justified for the Panel to assume that the Respondent registered the Domain Name in full knowledge of the Complainant’s existence and rights, in order to create a misleading impression of affiliation with the Complainant.

The Panel finds that the Respondent registered the Domain Name in bad faith.

The Panel also finds that the Domain Name is being used in bad faith. As described above, the Website at the Domain Name is a clear copycat of the Complainant’s website. Therefore, the Domain Name is being used for possible illicit activities and potentially exposes Internet users to acts of financial fraud.

On this basis, the Panel finds that the Respondent intentionally attempts to attract, for commercial gain, Internet users to the Website, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the Website, which constitutes registration and use in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.

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 Domain Name <smava-kredite.org> be transferred to the Complainant.

Willem J. H. Leppink
Sole Panelist
Date: February 13, 2021