WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LO IP SA and Banque Lombard Odier & Cie SA v. WhoisGuard, Inc / Teddy Baker

Case No. D2020-3187

1. The Parties

The Complainant are LO IP SA and Banque Lombard Odier & Cie SA, Switzerland, represented by Baker & McKenzie Abogados, S.C., Switzerland.

The Respondent is WhoisGuard, Inc, Panama / Teddy Baker, United States of America (“United States”).

2. The Domain Name and Registrar

The Disputed Domain Name <lornbardodier.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 November 26, 2020. On November 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 26, 2020, 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 30, 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 30, 2020.

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 December 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2021.

The Center appointed Pablo A. Palazzi 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 Complainants, Banque Lombard Oder & Cie SA, Geneva and LO IP SA, Geneva, are members of the Lombard Odier group of companies, which is a bank founded in Geneva in 1796 and which is among the leading providers of wealth management services worldwide. Lombard Odier has used its trademarks continuously and extensively all over the world even before their registration in 1994.

The Complainant LO IP SA is the owner of the following trademarks:

- LOMBARD ODIER & CIE, International Trademark Registration No. 627468, registered on October 13, 1994; and

- LOMBARD ODIER & CIE, Switzerland Registration 2P-412721, registered on June 28, 1994.

In addition, Lombard Odier corresponds to the company name of the Complainants, which has also developed a presence on the Internet through their website under the domain <lombardodier.com>.

The Respondent registered the Disputed Domain Name <lornbardodier.com> on November 9, 2020. The Disputed Domain Name is currently inactive. However, the Complainants have strong reasons to fear that the Disputed Domain Name has been registered by Respondent for fraudulent email purposes.

5. Parties’ Contentions

A. Complainant

The Complainants’ contentions can be summarized as follows:

Identical or confusingly similar

The Complainants contend that the Disputed Domain Name merely replaces the letter "M" in the LOMBARD trademark with letter combination ''RN", which in the domain name will show as "lornbard" instead of "lombard". The letter combination is visually identical and, thus, "lornbard'' and "lombard" would easily be confused.

Rights or legitimate interests

The Complainants allege that the Respondent cannot be related to Lombard Odier and have not been authorized by Lombard Odier to register the Disputed Domain Name.

The Complainants further state that the Respondent has no legitimate interest to keep this domain name, as there is no effective use of it.

Registration and use in bad faith

The Complainants contend that the Disputed Domain Name registration constitutes a clear case of domain name squatting and/or typo squatting.

The Complainants further allege that it is implausible that the Respondent has registered a confusingly similar domain name to the renowned trademark of the Complainants.

Finally, the Complainants are of the opinion that the registration of the Disputed Domain Name must have been made in bad faith, potentially in view of an illegal phishing attack.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name:

“(i) the domain name is identical or confusingly similar to a trademark or service mark in the which the complainant has rights;

(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

Based on the evidence submitted, the Panel finds that the Disputed Domain Name <lornbardodier.com> is confusingly similar to the Complainants’ trademark LOMBARD ODIER & CIE. The Disputed Domain Name reproduces the Complainant’s LOMBARD ODIER & CIE trademark in its entirety, while the “& CIE” element has been removed and it have replaced the letter “m” for the letters “rn” represents a misspelling that does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainants’ trademark.

Moreover, the misspelling is also hardly noticeable and results in a very minor modification of the Complainants’ trademark.

This is classic example of typo-squatting. As section 1.9 of the WIPO Overview of WIPO Panel Views onSelected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:

“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. (…) Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.”

Therefore, the Panel concludes that the Complainants have satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

“(i) before any notice to you of the dispute, your use of, 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 at issue.”

There is no evidence of the existence of any of those rights or legitimate interests. The Complainants have not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the LOMBARD ODIER & CIE trademark.

The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainants’ contention.

As such, this Panel finds that the Complainants have satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Disputed Domain Name was registered on November 9, 2020, while the Complainants’ trademark LOMBARD ODIER & CIE, International Trademark Registration No. 627468 was registered on October 13, 1994.

The Panel is of the view that the Respondent registered the Disputed Domain Name in bad faith since it is a typographical misspelling of and is confusingly similar to the Complainants’ LOMBARD ODIER & CIE trademark. Therefore, the Panel concludes that the Respondent was aware of the Complainants’ rights when he registered the Disputed Domain Name.

The circumstances in the case before this Panel indicate that the Respondent was aware of the Complainants’ trademark when registering the Disputed Domain Name and it has intentionally created a likelihood of confusion with the Complainant’s LOMBARD ODIER & CIE trademark in order to attract Internet users for its own commercial gain.

The Disputed Domain Name is inactive. As it has been the case in several previous UDRP cases, the fact that the Disputed Domain Name is currently inactive does not prevent a finding of bad faith use and does not change the Panel’s views in this respect.

Therefore, taking all circumstances into account and for all above reasons, this Panel concludes that the Respondent has registered and using the Disputed Domain Name 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 Disputed Domain Name, <lornbardodier.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: February 10, 2021