A. Each of the disputed domain names is confusingly similar to a trademark or service mark in which the Complainant has rights
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrate its ownership of trademark rights and that the disputed domain names are confusingly similar to such trademark. Boehringer Ingelheim Animal Health France / Merial v. S Jon Grant, 103255 (CAC September 30, 2020) (“it is imperative that the Complainant provides evidence that it has rights in a trade mark or service mark, following which the Panel shall assess whether or not the disputed domain name is identical or confusingly similar to the Complainant’s trade mark(s).”).
The Complainant has submitted screenshots from the website of the Swiss Federal Institute of Intellectual Property (“IPI”) as evidence that it owns registered rights to its asserted MIGROS and MIGROSBANK trademarks. Registration with such an office has been found sufficient to satisfy the threshold requirement of Paragraph 4(a)(i) of the Policy. Margaritaville Enterprises, LLC v. Neil Wein, FA 1916531 (FORUM November 9, 2020) (“It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights”). The disputed domain name, which was registered long subsequent to the existence of the Complainant’s trademark rights, adds the words “privateonline” or “credit” to the MIGROS trademark. The domain name further adds the “.com” gTLD. Thus, the Complainant asserts that the second level of the disputed domain name is confusingly similar to the asserted trademarks and will lead internet users to wrongly believe that the disputed domain names are endorsed by the Complainant. Prior panels have found confusing similarity under similar fact situations. Avast Software s.r.o. v. Milen Radumilo, 102384 (CAC April 19, 2019) (“it is well accepted that where the relevant trademark is recognizable within the disputed domain name, the addition of descriptive terms would not prevent a finding of confusing similarity.”).
Also, the extension “.com” typically adds no meaning or distinctiveness to a disputed domain name and may be disregarded in the Paragraph 4(a)(i) analysis. Novartis AG v. Wei Zhang, 103365 (CAC December 9, 2020) (“it is generally accepted that the addition of the top-level suffix in the domain name (e.g., ‘.com’) is to be disregarded under the confusing similarity test”).
Accordingly, the Panel finds that the Complainant has rights to its claimed trademarks and that the addition of descriptive words thereto in the disputed domain names is insufficient to avoid a finding that they are confusingly similar to the Complainant’s trademarks. Thus, the Complainant has satisfied Paragraph 4(a)(i) of the Policy.
B. The Respondent has no rights or legitimate interests in respect of the disputed domain name
Pursuant to Paragraph 4(a)(ii) of the Policy, a complainant has the burden of making a prima facie showing that the respondent has no rights or legitimate interests in a domain name. Cephalon, Inc. v. RiskIQ, Inc., 100834 (CAC September 12, 2014). Once this burden is met, it then shifts to the respondent to demonstrate that it does have rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy offers the Respondent several examples of how to demonstrate its rights or legitimate interests in the disputed domain name.
With reference to Paragraph 4(c)(ii) of the Policy the Complaint states that the Respondent is not related in any way to the Complainant and has not received any license or authorization to use the Complainant´s trademark. The Respondent has not participated in this case and so it does not contest this. As such, the Panel concludes that the Respondent is not affiliated with the Complainant, nor is it authorized or licensed to use the Complainant’s trademark or to seek registration of any domain name incorporating the aforementioned trademark. Furthermore, the Registrar for the disputed domain names identifies the Registrants as Richard Nora and marteen van gogh. There is no evidence that the Respondent is known otherwise and its illegitimate use of the Complainant’s trademark on its websites cannot support a different conclusion. Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", D2000-0847 (WIPO October 16, 2000) (“use which intentionally trades on the fame of another” should not be considered. “To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”) Based upon the available evidence in this case, the Panel cannot conclude that the Respondent is commonly known by the disputed domain names or that it has any rights to the Complainant’s trademark.
Next, under Paragraphs 4(c)(i) and 4(c)(iii) of the Policy the Panel considers whether the Respondent is using the disputed domain name to make a bona fide offering of goods or services or whether it is making a legitimate non-commercial or fair use of the disputed domain name. The disputed domain names resolve to websites that make prominent use of the Complainant’s trademark and claim to offer banking services. Using a confusingly similar domain name to pass oneself off as a Complainant is not a bona fide offering of goods or services or a legitimate non-commercial or fair use per Paragraphs 4(c)(i) or (iii) of the Policy. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (FORUM July 9, 2018) (finding that the Respondent did not use the disputed domain name to make a bona fide offering of goods or services per Paragraph 4(c)(i) of the Policy or for a legitimate non-commercial or fair use per Paragraph 4(c)(iii) where the website resolving from the disputed domain name featured the Complainant’s mark and various photographs related to the Complainant’s business). Here, the Complainant claims that the Respondent uses the disputed domain names to pass itself off as the Complainant in order to “deceive members of the public into believing that they can safely pay money to a third party in reliance on information provided by a trusted company when in fact the website has no connection with the Complainant.” The Complainant provides screenshots of the Respondent’s resolving websites and highlights that these sites fraudulently impersonate the Complainant by prominently featuring its trademark and content that claims to offer the same banking and credit services as those offered by the Complainant. The trademark is misspelled in certain places and at least one of the website pages displays a photograph of a third-party bank that bears no relation to the Complainant. The Respondent has not filed a Response nor made any other submission in this case. As the Complainant has made out a prima facie case that has not been rebutted by Respondent, upon a preponderance of the evidence before it the Panel finds that the Respondent fails to make a bona fide offering of goods or services or a legitimate non-commercial or fair use per Paragraphs 4(c)(i) or (iii) of the Policy.
C. The disputed domain names were registered and used in bad faith
The Complainant argues that the Respondent registered the disputed domain names in bad faith as it must have been aware of the Complainant’s rights in the asserted trademarks at that time. Actual knowledge of rights in a trademark at the time of registering a disputed domain name is generally sufficient as a foundation upon which to build a case for bad faith under Paragraph 4(a)(iii) of the Policy, and can be demonstrated through a Respondent’s use of such trademark. Arcelormittal (SA) v. acero, 102399 (CAC April 22, 2019) (“the Respondent’s use of the disputed domain name and content of the web site under the disputed domain name prove Respondent’s actual knowledge of the Complainant and its trademark.”) The Complainant submits screenshots of the Respondent’s websites which use copies of the Complainant’s trademark and claim to offer banking services that are the same as those offered by the Complainant. Based upon this evidence it is asserted that the Respondent must have been aware of the Complainant’s trademark. The Respondent does not attempt to refute this. In light of the Complainant’s evidence and the fact that the asserted trademark is rather distinctive with respect to banking services and unlikely to be replicated by mere chance, the Panel finds it highly likely that the Respondent registered the disputed domain names with actual knowledge of the Complainant’s trademarks.
Next, the Complainant argues that the Respondent registered and uses the disputed domain names in bad faith as the Respondent uses them to fraudulently impersonate and pass itself off as the Complainant. Using a confusingly similar domain to pass oneself off as a complainant can demonstrate bad faith per Paragraphs 4(b)(iii) and (iv) of the Policy. See Abbvie, Inc. v. James Bulow, FA 1701075 (FORUM November 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy Paragraph 4(b)(iii), and/or Policy Paragraph 4(b)(iv)”). The evidence in this case shows that the Respondent has, for commercial gain, posted websites through which it attempts to pass itself off as the Complainant to actual and potential customers. The Respondent has not participated in this case to explain its actions and so, based upon the available evidence, the Panel finds that the Respondent registered and uses the disputed domain names in bad faith by disrupting the Complainant’s business, per Paragraph 4(b)(iii) of the Policy, and by seeking commercial gain through confusion with the Complainant’s trademarks, per Paragraph 4(b)(iv).
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