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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wirecard AG v. Mr. Maxim Alexander Volkov

Case No. D2008-0120

 

1. The Parties

Complainant is Wirecard AG, Grasbrunn, Germany, represented by Jones Day, Germany.

Respondent is Mr. Maxim Alexander Volkov, Minneapolis, Minnesota, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <wirecard.biz> (the “Domain Name”) is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2008. On January 28, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On January 29, 2008, the Registrar transmitted by email to the Center its verification response, confirming that 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”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 31, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 25, 2008.

The Center appointed Assen Alexiev as the sole panelist in this matter on March 3, 2008. 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

Complainant is Wirecard AG, a corporation registered in Germany in 1999, and listed on the German stock exchange in Frankfurt. Complainant is now one of the leading providers of payment systems with integrated risk management services, banking and financing services, and the corresponding technical services. Its services are provided worldwide.

Complainant is the owner of the WIRECARD trade marks registered on a worldwide basis, including the follows registrations:

- Community trademark No. 004825998 WIRECARD, applied for on December 26, 2005 and registered on July 2, 2007, for goods and services in International classes 9, 36, and 42;

- Community trademark No. 004862744 WIRECARD, applied for on January 19, 2006 and registered on December 21, 2006, for goods and services in International classes 9, 36, and 42;

- Community trademark No. 001460054 WIRE CARD, applied for on January 13, 2000 and registered on April 18, 2001, for goods and services in International classes 9, 36, 38, and 42;

- Community trademark No. 001866821 WIRE CARD & device, applied for on September 21, 2000 and registered on March 19, 2002, for goods and services in International classes 9, 36, 38, and 42;

- German trademark No. 39833006.9 WIRE CARD, applied for on June 12, 1998 and registered on September 29, 1998, for goods and services in International classes 9, 38, and 42;

- United States trademark No. 2670831 WIRE CARD, applied for on February 7, 2000 and registered on January 7, 2003, for goods and services in International class 35;

- United States trademark No. 2909405 WIRE CARD & device, applied for on September 21, 2000 and registered on December 14, 2004, for goods and services in International classes 9, 35, 36, and 42;

- International Registration No. 756090 WIRE CARD & device, registered on March 14, 2001 for the territories of seven countries, for goods and services in International classes 9, 36, 38, and 42.

Complainant operates its official website under its domain name <wirecard.com>. Complainant has also registered other domain names using the name “Wirecard” under numerous gTLDs and ccTLDs.

The Domain Name was registered on May 12, 2007.

 

5. Parties’ Contentions

A. Complainant

Complainant contends to know Respondent’s name well. Shortly before September 5, 2007, when Complainant became aware that Respondent had registered the Domain Name, Complainant had sent a cease and desist letter to Respondent regarding a different domain name <wirecardag.us>, which was also registered by Respondent. On August 22, 2007, the letter was returned because the address was unknown to the United States Mail Service. On August 31, 2007, Complainant sent another cease and desist letter via e-mail. Respondent did not reply. Further research showed that the domain name <wirecard.us> was also registered for a Mr. Maxim Volkov.

According to Complainant, the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The addition of the suffix “.biz” does not prevent a domain name from being identical or confusingly similar to and is not sufficient to render a domain name distinctive from prior rights, deriving from trademarks, trade name or domain names of the Complainant.

Complainant claims that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has no other intention than either to hijack the Domain Name in order to prevent the Complainant to register it, or to use it for illegitimate activities. Although there was still no content set-up under the Domain Name until January 15, 2008, it cannot be excluded that Respondent currently uses the e-mail function of the Domain Name. This way, Respondent could mislead recipients of his e-mails by generating the impression that the origin of the e-mails was with Complainant. Due to the strong online presence of Complainant, Respondent is well aware of the goodwill and the fame of Complainant’s trademark WIRECARD, and it cannot be excluded that he will take advantage of this fact. The Google search for the term “wirecard” leads to 431,000 hits, all of which lead to Complainant. Complainant hereby contends that Respondent has no relationship with Complainant, and the trademark WIRECARD is not one that Respondent would legitimately choose in the context of provision of goods or services via the Internet, unless he is seeking to create an impression of an association with Complainant.

As contended by Complainant, the Domain Name was registered and is being used in bad faith. Due to the fame and distinctiveness of the WIRECARD trademark, the registration of the Domain Name qualifies as being made in bad faith per se. The trademark and company name of Complainant is a fancy mark without any meaning and the use of the word Wirecard can only refer to the trademark and company name of Complainant (see, e.g., Adidas AG v. Zhifang Wu, WIPO Case No. D2007-0032; Victoria’s Secret et al v. Powerbiz, NAF No. FA0101000096497; Geoffrey, Inc. v. Peter Ioannou, NAF No. FA0111000102481).

Complainant submits that it is reasonable to allege that Respondent already knew Complainant, including its trademark, company name and domain name, at the time of the registration of the Domain Name. Therefore, Respondent already knew, or at least should have known, that the registration of the Domain Name without permission of the Complainant would constitute bad faith. Respondent’s actual or constructive knowledge of Complainant’s trademark and company name can be inferred from (a) the world-wide use and reputation of the WIRECARD brand and services; (b) the fact that a simple check of trademark records of trademark offices in the United States of America, the European Union, Germany, etc., would have made Complainant’s trademarks known to Respondent, and (c) the fact that Complainant owns several domain names incorporating the WIRECARD trademarks and has been providing services worldwide over its official website “www.wirecard.com” since 1999. Finally, due to the wide use and reputation of Complainant’s trade mark and company name WIRECARD and in the absence of any legitimate prior use by Respondent, the primary purpose of Respondent registering the Domain Name was probably to use it in bad faith for his own activities, attracting Internet users for commercial gain, and thereby disrupting the business of Complainant and damaging its reputation (see, e.g., Wirecard AG v. Konstantin B. Pacevich, WIPO Case No. D2007-0650; BioCare Ltd. v. UK Scientific.com Ltd, WIPO Case No. D2002-0345). In this respect, Complainant submits that when Internet users finally discover that the Domain Name or website is not operated by Complainant, this cannot cure the initial interest confusion experienced by them when viewing, using or typing in the Domain Name.

Alternatively, Respondent’s intention was to sell the Domain Name back to Complainant or to one of its competitors.

Complainant requests that the Domain Name be transferred to it.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Pursuant to Policy, Paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:

(i) That the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That Respondent has registered and is using the Domain Name in bad faith.

By Rules, Paragraph 5(b)(i), it is expected of a Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with Rules, Paragraph 2(a), and Respondent was given a fair opportunity to present its case.

In the event of a default, under Rules, Paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, Respondent’s default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his decision on the basis of the statements and documents submitted by Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

Complainant has provided evidence for the registration of the trademark WIRECARD either as a word mark or as a combined mark in many countries around the world, including the United States of America. Therefore, the Panel is satisfied that Complainant has demonstrated rights in this trademark.

It is an established practice under the UDRP to disregard the suffixes such as “.biz” for the purposes of the comparison under Policy, Paragraph 4(a)(i), so the relevant part of the Domain Name to be considered, is the sequence “wirecard”. This sequence is identical to the WIRECARD word trademarks of Complainant, and confusingly similar to the combined trademarks of Complainant, being identical to their word elements. Therefore, the Panel finds the Domain Name to be identical or confusingly similar to trademarks in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant has contended that Respondent has no rights or legitimate interests in Domain Name, stating numerous arguments in this regard.

Thus, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

Once Complainant makes out a prima facie case under Policy, Paragraph 4(a)(ii), the burden shifts to Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Name.

Respondent, by its default, has chosen not to present to the Panel any allegations or documents in its defense despite its burden under the Rules, Paragraph 5(b)(i) and 5(b)(ix) or the consequences that a Panel may extract from the fact of a default (Rules, Paragraph 14). If Respondent had any justification for the registering or using the disputed Domain Name, it could have provided it. In particular, Respondent has failed to contend that any of the circumstances described in Policy, Paragraph 4(c) - or any other circumstance - is present in its favour.

In fact, the only information available about the Respondent is the WhoIs information, provided by the Registrar, and the content of the website, associated to the Domain Name.

The WhoIs information contains no evidence of rights or legitimate interests of the Respondent in the Domain Name, apart from its rights as registrant of the latter. As evident from the case file, the postal address provided by Respondent in the United States of America is incorrect.

As contended by Complainant, the Domain Name was not linked to any website as of January 15, 2008. Given the scarce information available about Respondent, and in exercise of its powers under the Rules, Paragraph10, the Panel decided to visit the website at the Domain Name himself. Thus, the Panel found that, when typed in, the Domain Name leads to the website at “www.peterhost.ru”. This website is in Russian, and appears to be operated by a Russian company offering hosting, collocation, web development and other internet-related services. The website openly invites third parties to solicit new clients for “www.peterhost.ru” by offering commissions, discounts and other financial incentives. It is clearly stated that any redirection to “Peterhost.ru” from the third party’s website will be taken into account for the calculation of these financial benefits.

Can this redirection from the Domain Name to the website of “Peterhost.ru” justify rights or legitimate interests of Respondent in respect of the Domain Name?

Complainant has provided sufficient evidence for its numerous trademark registrations of the WIRECARD trademark in many countries. In addition, the Panel finds the trademark to be clearly distinctive and related exclusively to Complainant. Therefore, Respondent has no legitimate interest in using the WIRECARD mark as part of a domain name that redirects Internet users to a website where services unrelated to Complainant are offered. See, Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809.

For these reasons, the Panel accepts Complainant’s contention that the trademark WIRECARD is not one that Respondent would legitimately choose in the context of provision of goods or services via the Internet. Respondent’s attempt at creating an impression of association with Complainant cannot be justified, and the redirection to Peterhost.ru’s website cannot be regarded as giving rise to rights and legitimate interests of Respondent in the Domain Name.

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

C. Registered and Used in Bad Faith

The Domain Name is identical to the distinctive word trademark WIRECARD, and its exclusive relation to Complainant is proven by the latter. The information provided by Complainant is sufficient for the Panel to accept that WIRECARD is a service that is, or should be, known among its target consumers, and, more generally - among professionals in the communications field and other Internet professionals.

The administrative, billing and technical contact for the Domain Name is Peterhost.ru, a company whose business appears to be focused on various Internet-related services. The Domain Name redirects visitors to Peterhost.ru’s website. These circumstances lead the Panel to the conclusion that there may be a relation between Respondent and Peterhost.ru.

As contended by Complainant, Respondent has registered two other domain names identical or confusingly similar to Complainant’s trademark.

These facts support a finding that Respondent had knowledge of Complainant and its WIRECARD marks at the time of the registration of the Domain Name. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant and its products, its very use by a registrant with no connection to Complainant suggests “opportunistic bad faith”.

Further, Respondent is using the Domain Name to attract, Internet users, and redirect them to “www.peterhost.ru’s” website where services unrelated to Complainant are offered. Given the explicit offer of Peterhost.ru in this regard, it is likely that the redirection to its website is made for commercial gain. Therefore, on the balance of probabilities, the Panel finds that Respondent’s primary purpose in registering and using the Domain Name was to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website and the services on this website. This constitutes bad faith registration and use of the Domain Name under Policy, Paragraph 4(b)(iv). Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xingdong, WIPO Case No. D2003-0408.

Therefore, the Panel concludes that the Complainant has established the third element of the test under Policy, Paragraph 4(a).

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <wirecard.biz> be transferred to the Complainant.

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Assen Alexiev
Sole Panelist

Dated: March 17, 2008