WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Euroclear SA/NV v. Garner JEFF

Case No. D2021-0540

1. The Parties

The Complainant is Euroclear SA/NV, Belgium, represented by SafeNames Ltd., United Kingdom.

The Respondent is Garner JEFF, United States of America (“USA”).

2. The Domain Name and Registrar

The disputed domain name <useuclear.com> is registered with Online SAS (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2021. On February 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 March 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2021.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on April 28, 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 Complainant is a financial services company founded in 1968. It is the owner, amongst others, of the following trademark registrations (Annex 9 to the Complaint):

- USA trademark registration No. 874,461 for EURO-CLEAR, filed on July 23, 1968, registered on August 5, 1969, successively renewed, in class 36; and
- European Union Trade Mark registration No. 001002187 for EUROCLEAR registered on September 27, 2001, successively renewed, in class 36.

The disputed domain name was registered on February 12, 2020. Presently, no active webpage resolves from the disputed domain name, but it was used in connection with a webpage reproducing the Complainant’s trademarks and official website layout, including a section for customer login, which was taken down due to the threat of phishing being carried out thereon (Annex 12 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant asserts to be a leading provider of post-trade services, predominantly in relation to settling domestic and international securities transactions, covering bonds, equities, derivatives and investment funds to financial institutions located in more than 90 countries (Annex 4 to the Complaint), also providing banking services and holding securities that total EUR 32,8 trillion (Annex 7 to the Complaint).

The Complainant further asserts to have acquired widespread consumer goodwill and reputation, having used the EUROCLEAR trademark for over 52 years and the domain name <euroclear.com>, registered in 1995, since 2000 (Annex 10 to the Complaint).

The disputed domain name, under the Complainant’s view, is confusingly similar to its EUROCLEAR trademark, given that the Respondent merely suppressed the letters “r” and “o”, leaving the disputed domain name to read “euclear” which bares significant similarity to EUROCLEAR and then added as prefix “us”, a geographical indicator for the USA, a country where the Complainant conducts business. Moreover, given the contents of the website that resolved from the disputed domain name, it is evident that the Respondent attempted to impersonate the Complainant, reproducing the Complainant’s logo and official website available at <euroclear.com>.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:

(i) the Respondent does not have any trademark rights to the terms contained in the disputed domain name, nor has the Respondent received any license from the Complainant to use domain names similar to the EUROCLEAR trademark or to use said mark on websites;

(ii) the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services since the disputed domain name has been used to redirect Internet users to a website used in connection with fraudulent activities that reproduced the Complainant’s trademarks and official website (Annex 14 to the Complaint);

(iii) the Respondent is not known by the disputed domain name which seeks to take advantage of the goodwill and valuable reputation attached to the EUROCLEAR trademark in the furtherance of fraud; and

(iv) the current non-use of the disputed domain name, following the removal of the website is not a legitimate noncommercial or fair use of the disputed domain name under the Policy.

The Complainant further contends that the Respondent registered the disputed domain name evidently aware of the Complainant in view of the reproduction of the Complainant’s trademark and layout of the Complainant’s official website, and the fraudulent scheme perpetrated by the use made of the disputed domain name (Annex 14 to the Complaint), intentionally attempting to attract for commercial gain Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks as to source, sponsorship, affiliation or endorsement of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established its rights in the EUROCLEAR trademark duly registered in several jurisdictions around the world (Annex 4 to the Complaint).

In this Panel’s view the suppression of the letters “r” and “o”, leaving the disputed domain name to read “euclear” and the addition of the prefix “us”, do not avoid a finding of confusing similarity under the Policy. The Panel refers to section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Furthermore, the use of the disputed domain name in connection with an apparent phishing website, reproducing the Complainant’s trademarks and official website, affirms a finding of confusing similarity between the disputed domain name and the Complainant’s EUROCLEAR trademark.

For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:

(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, in spite of not having acquired 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 at issue.

As the evidence submitted clearly indicates (Annex 14 to the Complaint), the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name given that the disputed domain name has been used in connection with what appears to be a fraudulent scheme depicting the Complainant’s logo and a website that reproduced the Complainant’s official website in an attempt to obtain sensitive data from the Complainant’s customers. The burden of production has therefore shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.

In that sense, the Complainant indeed states that it has not given the Respondent any license to use domain names similar to the EUROCLEAR trademark or to use said mark on websites.

Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

This case presents the following circumstances, which indicate bad faith registration and use of the disputed domain name:

i) the disputed domain name was registered on February 12, 2020, which is long after the Complainant was founded and started using its trademark (1968);

ii) there are indications that the disputed domain name has been used in connection with an apparent fraudulent website;

iii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;

iv) the Respondent evidently was aware of the Complainant and its trademark in view of the contents of the website that resolved from the disputed domain name; and

v) the absence of any reply to the Complaint by the Respondent.

For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 <useuclear.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: May 12, 2021