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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Singular Bank, S.A.U. v. Park HyungJin

Case No. D2021-3459

1. The Parties

The Complainant is Singular Bank, S.A.U., Spain, represented by UBILIBET, Spain.

The Respondent is Park HyungJin, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <self-bank.com> is registered with TurnCommerce, Inc. d/b/a NameBright.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2021. On October 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 October 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2021. The Respondent did not submit any response by the due date. Accordingly, the Center notified the Respondent’s default on November 18, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on December 7, 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.

The Respondent sent an email communication to the Center on December 8, 2021, in which he alleged a formal deficiency in the Complaint due to the Respondent’s identified address.

4. Factual Background

The Complainant is a bank that has traded in Spain since 2000 and undergone several changes in ownership since that time. It was formerly named Self Trade Bank S.A.U. and adopted its current name in 2020. The Complainant holds various trademark registrations, including Spanish trademark registration number M2812978 for SELF BANK, applied for on February 12, 2008 and registered on August 16, 2008, specifying insurance, financial business and other services in classes 35, 36, 38 and 41. That trademark registration remains current. The Complainant is also the registrant of the domain name <selfbank.es> that it uses in connection with its digital platform, known as “Self Bank”, where it offers investment management services and other financial products.

The Respondent is an individual resident in the Republic of Korea. According to evidence provided by the Complainant, the Respondent’s name is associated with over 7,500 domain names, some of which incorporate third party trademarks or misspellings of trademarks, such as <allianzras.com>; <androidfone.com>; <applephone.net>; <atarishop.com>; <baclaysbank.com>; and <ciscoiphone.com>.

The disputed domain name was created on July 12, 2009. It resolves to a website displaying Pay-Per-Click (“PPC”) links to other websites offering debt financing, bank loans and credit cards, among other services. The website also displays a notice that the owner of the disputed domain name is offering it for sale for EUR 85,000. The disputed domain name is offered for sale for the same price on a broker’s website.

The Registrar confirmed that the language of the Registration Agreement is English.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s SELF BANK trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant is the owner of the trademark SELF BANK and it has not authorised, licensed or otherwise permitted the Respondent to use the mark. The disputed domain name resolves to a landing page displaying PPC links to different websites. This reveals clearly how the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and also shows that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The disputed domain name corresponds to a famous brand owned by the Complainant. The disputed domain name is for sale for USD 85,000, which is clearly more than out-of-pocket registration costs. The Respondent is also using the disputed domain name to seek PPC revenues by diverting Internet users trying to reach the Complainant’s corporate website.

B. Respondent

Apart from his email communication regarding an issue of procedure addressed in Section 6.1 below, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Procedural Issue: Respondent’s Address

In his sole communication in this proceeding, sent after the appointment of the Panel, the Respondent points out that the Complaint wrote his address incorrectly and submits that the Complainant must reinitiate the procedure.

Paragraph 3(b)(v) of the Rules requires the Complaint to provide inter alia all information (including any postal and e-mail addresses and telephone and telefax numbers) known to the Complainant regarding how to contact the Respondent or any representative of the Respondent, in sufficient detail to allow the Center to send the Complaint to the Respondent as described in paragraph 2(a) of the Rules.

The Panel observes that the Complaint misplaced a hyphen which altered the first two numbers in the Respondent’s street address but that the contact address information was otherwise correct. The courier confirmed that the written notice of the Complaint was delivered. The Respondent’s comment on the typographical error in his address as set out in the Complaint serves as confirmation that the Center has achieved actual notice of the Complaint to the Respondent. Therefore, the Panel finds that the Complaint satisfies the formal requirement in paragraph 3(b)(v) of the Rules. The Complainant is not required to reinitiate this procedure.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(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.

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the SELF BANK mark.

The disputed domain name wholly incorporates the SELF BANK mark. It also contains a hyphen between the words but the mark remains clearly recognizable in the disputed domain name. The only other element is a generic Top-Level Domain (“gTLD”) suffix (“.com”) but, as a mere technical requirement of domain name registration, this element can be disregarded in the comparison between the disputed domain name and the trademark for the purposes of the first element in paragraph 4(a) of the Policy.

Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or

(iii) [the Respondent is] making a legitimate non-commercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first and third circumstances set out above, the disputed domain name resolves to a landing page that displays PPC links to other sites offering services that compete with, or are related to, the Complainant’s services. These links operate for the commercial gain of the Respondent, if he is paid to direct traffic to the linked sites, or the commercial gain of the operators of the linked sites, or both. The landing page also offers the disputed domain name for sale. The Complainant submits that it has not authorised, licensed or otherwise permitted the Respondent to use the SELF BANK mark. In the Panel’s view, this evidence demonstrates that the disputed domain name is not being used in connection with a bona fide offering of goods or services and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Park HyungJin”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not address the substantive issues in the Complaint.

Therefore, based on the record of this proceeding, the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first and fourth circumstances are as follows:

“(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name; or

(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

As regards registration, the disputed domain name was created in 2009. The date on which the Respondent registered or acquired the disputed domain name is unclear but it must have been after the registration of the Complainant’s SELF BANK mark in 2008. The Complainant uses its SELF BANK mark online in connection with its digital platform. The disputed domain name wholly incorporates the SELF BANK mark as its operational element, adding only a hyphen between the words and a gTLD suffix. Although the mark is composed of descriptive words, the Panel notes that the Respondent is also the registrant of many other domain names that, like the disputed domain name, incorporate trademarks or misspellings of trademarks, including at least one other for a bank (<baclaysbank.com>). Accordingly, on the balance of probabilities, the Panel finds that the Respondent had the Complainant’s trademark in mind when he registered or acquired the disputed domain name.

As regards use, the disputed domain name resolves to a landing page that inter alia offers it for sale. The disputed domain name is also offered for sale on a broker’s website. The asking price is EUR 85,000, which the Panel considers very likely to be far in excess of the out-of-pocket costs directly related to the disputed domain name, even taking into account the cost of up to 12 years’ worth of renewal fees. In any case, the Respondent did not document any costs. Accordingly, the Panel finds that the circumstances of this case indicate that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name within the terms of paragraph 4(b)(i) of the Policy.

Further, the disputed domain name resolves to a landing page displaying PPC links to sites offering services that compete with, or are related to, the Complainant’s services. These links operate for the commercial gain of the Respondent, if he is paid to direct traffic to the linked sites, or the commercial gain of the operators of the linked sites, or both. Accordingly, the Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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, within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <self-bank.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: December 20, 2021

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