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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Esco Marginalen AB v. Whoisguard Inc. / Mladen Baralic

Case No. D2019-1274

1. The Parties

The Complainant is Esco Marginalen AB, Sweden, represented by Zacco Sweden AB, Sweden.

The Respondent is Whoisguard Inc. / Mladen Baralic, the United States of America.

2. The Domain Name and Registrar

The disputed domain name <marginalen.live> (the “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 June 4, 2019. On June 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 4, 2019, 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 June 5, 2019 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 June 10, 2019.

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 June 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2019.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on July 12, 2019. 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 for compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the parent company of the Marginalen Bank group of companies, a Swedish bank offering private banking services and corporate banking services. Marginalen Bank is owned by Marginalen AB, which in turn is owned by the Complainant. The Complainant and its subsidiaries offer a range of banking-related products. The Complainant was first established in 1979 through the company Inkasso Service Juridiska Byrå, which later became trading under the MARGINALEN brand. In 1998, Marginalen is formed, consolidating all companies under one brand name. Today, the company has approximately 300 employees and serves around 300 000 customers primarily in Sweden.

The Complainant owns trademark registrations for the trademarks MARGINALEN (word mark) and MARGINAL BANK (device marks), which have been registered in several countries, including in the European Union, with the trademark MARGINALEN Registration No. 000844290, registered on October 30, 2002. The Complainant also owns several domain names which incorporate its MARGINALEN trademark, such as <marginalen.se>, registered in 1995.

According to the Registrar, the Domain Name was registered on May 17, 2019. At the time of filing the Complaint, the Domain Name redirected to a website without much explanation, offering some type of web chat.

5. Parties’ Contentions

A. Complainant

The Complainant has registered trademark rights in MARGINALEN and MARGINAL BANK. The Complainant submits that the Domain Name is identical to the former trademark and confusingly similar to the latter trademark. The addition of the generic Top-Level Domain (“gTLD”) “.live” is irrelevant when determining the confusing similarity between the trademark and the Domain Name.

The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent is unable to demonstrate rights or legitimate interests in the Domain Name. The Respondent has not been allowed by the Complainant to make any use of its trademarks. The Respondent has intentionally chosen the Domain Name based on another trademark in order to generate traffic and income through a phishing site. According to the Complainant and its evidence, the Respondent has been using the Domain Name to redirect Internet users to websites that copied the Complainant’s websites, soliciting Internet users to enter their personal identification information. In some instances, Internet users have had their bank login details hijacked. Once the Complainant became aware of the phishing scam in question, the Complainant immediately contacted the host to have it shut down. The host did so shortly following the Complainant’s abuse report. However, the site has then been reactivated a number of times.

Based on the same evidence, the Complainant concludes that the Respondent had knowledge of the Complainant’s registered trademark and its products at the time of registration of the Domain Name. The Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on his website or location. It constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. It is also evidence that the Respondent registered and used the Domain Name primarily for the purpose of disrupting the business of the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights in the trademark MARGINALEN. The Domain Name is indeed identical to the Complainant’s trademark. The Panel may ignore the gTLD “.live”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made unrebutted assertions that is has not granted any authorization to the Respondent to register a domain name containing the Complainant’s trademark or otherwise make use of the mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered rights. The Respondent’s use of the Domain Name is clearly not bona fide.

The Panel finds the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Taking into account the Respondent’s use of the Domain Name, the Panel concludes that the Respondent knew of the Complainant and its business when the Respondent registered the Domain Name.

The Respondent has attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The use of a privacy protection service and the fact that the Respondent has not replied to the Complainant’s contentions, further point to bad faith.

The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 Domain Name <marginalen.live> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: July 15, 2019

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