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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LGT Gruppe Stiftung v. WhoisGuard Protected, WhoisGuard, Inc. / Trina Trixie, trix tech

Case No. D2020-2179

1. The Parties

The Complainant is LGT Gruppe Stiftung, Liechtenstein, represented by Isler & Pedrazzini AG, Switzerland.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Trina Trixie, trix tech, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <lgt-uk.com> (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 August 18, 2020. On August 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 19, 2020, 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 August 21, 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 amended Complaint on August 26, 2020.

The Center verified that the Complaint together with the amended 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 August 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2020.

The Center appointed Ellen B Shankman as the sole panelist in this matter on October 5, 2020. 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 date of the Domain Name registration was confirmed by the Registrar to be September 17, 2019.

The trademark LGT serves as a house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions world-wide. The Complainant is part of the LGT Group, a private banking and asset management group owned and operated by the princely House of Liechtenstein. It is the owner of the domain name <lgt.com>, registered on March 3, 1998 as well as of the following trademark registrations.

The Complainant provided evidence of multiple trademark registrations for the mark LGT including, inter alia, United Kingdom trade mark No. 2024487 (registered on May 3, 1996) and European Union Trade Mark No. 0641907 (registered on September 11, 1995) both for word marks that predate the date of the Domain Name registration for a variety financial services.

The Complainant also provided screenshots of a website that the Domain Name previously resolved to that imitates LGT financial services and which invites the user to provide personal information.

The Panel also conducted an independent search to determine that the Domain Name currently resolves to a warning page stating that there is a deceptive site.

5. Parties’ Contentions

A. Complainant

The Complainant asserts to be part of the largest family-owned private banking and asset management group in the world, owned and operated by the princely House of Liechtenstein, employing over 3,600 people in over 20 locations in Europe, Asia, the Americas, and the Middle East, having over CHF 227.9 billion worth of assets under its management. It further states to have been using the LGT trademark since 1996, which has acquired a high reputation in the field of private banking and asset management and therefore may be considered a very well-known trademark in the financial industry.

The Complainant argues that the Domain Name combines the distinctive and well-known LGT trademark with the geographical term “uk”, and thus is confusingly similar with its trademark and enhances confusion by presuming to be the country website for the Complainant.

The identity of the actual registrant was originally concealed by a privacy protection shield, and the Respondent was later identified to be an individual in Nigeria. The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name given that:

(i) a global search conducted by the Complainant disclosed no applications or registrations for LGT trademark applications or registrations under the Respondent’s name; and

(ii) there is no affiliation between the Respondent and the Complainant or any other members of the LGT Group, neither having the Complainant or any other member of the LGT Group granted the Respondent a license or otherwise consented to the registration and use of the Domain Name by the Respondent.

Further, the Complainant asserts that the bad faith of the Respondent is evident given that the Respondent created a website that falsely presented itself as the website of the Complainant. The website, which now has been taken down and shows a warning page, was clearly intended for fraudulent purposes. Previously, the website contained a login form inviting visitors to provide the Respondent with sensitive data. In addition to the above, according to the Complainant, the Respondent’s bad faith may also be corroborated by the Respondent’s choice to conceal its identity to shield it from any direct legal action by the Complainant.

The registration and use of the Domain Name is an intentional attempt to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant‘s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the Respondent deliberately registered the Domain Name incorporating the Complainant’s trademark LGT. Obviously, also by choosing the Domain Name, the Respondent intends to create the misleading impression that its business is at least closely associated with the Complainant, and to have a free ride on the fame and goodwill of the Complainant’s trademarks and profit from consumer confusion. The Respondent is using the Domain Name in order to raise traffic on its web portal and to obtain commercial gain from the false impression created tor the Internet users with regard to an affiliation/identity with the Complainant, thereby likely being fraudulently induced to provide the Respondent with sensitive and valuable data. As a consequence, the Domain Name has been registered and is being used in bad faith.

To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark LGT, in respect of a financial goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the geographical term “uk” to the mark LGT does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

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

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

(iii) that the Domain Name has been registered and is being used in bad faith

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name.

In accordance with paragraph 14(a) 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 Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for LGT.

Further, the Panel finds that the Domain Name integrates the Complainant’s mark LGT in its entirety with the addition of the descriptive geographic element “uk”. The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the geographic term to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.

Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is persuaded that the Respondent deliberately registered the Domain Name incorporating the the Complainant’s trademark LGT to create a misleading and fraudulent impression of association and confusion with the Complainant. The content of the previous website clearly shows that the Respondent was well aware of the Complainant’s activities and trademarks and intended opportunistically to benefit on the goodwill of the Complainant’s trademarks and to profit from consumer confusion, and to obtain sensitive and valuable data in bad faith. The Panel finds that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark LGT and uses it for the purpose of misleading and diverting Internet traffic and for opportunistic fraudulent behaviour. That the current website has been identified by the browser to be dangerous for consumers underscores this finding.

Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant and the fraudulent imitative website, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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 <lgt-uk.com> be transferred to the Complainant.

Ellen B Shankman
Sole Panelist
Date: October 19, 2020

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