Banque et Caisse d’Epargne de l’Etat, Luxembourg v CurryHosting

WIPO Case No. D2023-5285

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Banque et Caisse d’Epargne de l’Etat, Luxembourg v. CurryHosting

Case No. D2023-5285

1. The Parties

The Complainant is Banque et Caisse d’Epargne de l’Etat, Luxembourg, represented by Office Freylinger

S.A., Luxembourg.

The Respondent is CurryHosting, Mia Curry, United States of America.

2. The Domain Name and Registrar

The disputed domain name <spuerkeess-valider.com> is registered with Nicenic International Group Co.,

Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20,

2023. On December 20, 2023, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On December 21, 2023, the Registrar transmitted
by email to the Center its verification response disclosing registrant and contact information for the disputed
domain name which differed from the named Respondent (Redacted for Privacy) and contact information in
the Complaint. The Center sent an email communication to the Complainant on December 21, 2023,
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 January 9, 2024.

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 paragraph 5, the due date for Response was January 30, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on January 31, 2024.

page 2

The Center appointed Eva Fiammenghi as the sole panelist in this matter on February 2, 2024. 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 Complainant, Banque et Caisse d’Epargne de l’Etat, Luxembourg, is a Luxembourgish company

incorporated in June 22, 1989, and is internationally active in the banking services. The Complainant is well known in the bank sector, and is widely exploiting the trademark SPUERKEESS for banking, insurance, and financial services.

The Complainant owns SPUERKEESS trademark registrations around the world and through ongoing use, including, but not limited to, the following:

- European Union trademark SPUERKEESS, Reg. No. 009110552, filed on May 17, 2010, and

registered on November 2, 2010, covering goods and services in classes 9, 16, 25, 35, 36, 38, 39, 41, 42,

43, 45.

- Benelux trademark SPUERKEESS and device, Reg. No. 0796132, filed on January 27, 2006, and

registered on May 5, 2006, covering services in class 36.

- Swiss trademark SPUERKEESS, Reg. No. 615157, filed on December 30, 2010, and registered on May 10, 2011, covering goods and services in classes 09, 16, 25, 35, 36, 38, 39, 41, 42, 43, 45.

The disputed domain name <spuerkeess-valider.com> was registered on October 28, 2023, and resolves to an inactive website with a mention that the website cannot be reached.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

The Complainant contends that the disputed domain name <spuerkeess-valider.com> is similar to the trademarks SPUERKEESS, which are entirely reproduced in the disputed domain name, with the addition of

the term “valider” and a hyphen to the end of the trademark.

The Complainant argues that the addition of this term creates a high risk of affiliation with the Complainant and is misleading the general public into thinking that the disputed domain name is linked to the

Complainant. The additional term “valider”, will in fact be understood by the French speaking public as referring to a validation of the website or for the validation of the Complainant’s services and considering that

the Complainant is a banking establishment, when consumers buy something on the Internet, they are
redirected to a website to validate the payment for their purchase.

The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name with legitimate interests. The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including its trademark.

page 3

The Complainant contends that the Respondent has registered the disputed domain name for potential use in phishing activities. The present passive holding of the disputed domain name should bee seen as evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:

(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 was registered and is being used in bad faith.

These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between

the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds the entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other term and element, here “valider” and a hyphen, may bear on assessment of

the second and third elements, the Panel finds the addition of such term and element does not prevent a
finding of confusing similarity between the disputed domain name and the mark for the purposes of the

Policy. WIPO Overview 3.0, section 1.8.

Based on the available record, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task

of “proving a negative”, requiring information that is often primarily within the knowledge or control of the

respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of

page 4

proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,
section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the

Policy or otherwise.

Based on the available record, the Panel finds the second element of the Policy has been established

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not

prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record,
the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the
circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each

case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the

degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a

response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s

concealing its identity or use of false contact details (noted to be in breach of its registration agreement).

WIPO Overview 3.0, section 3.3.

Having reviewed the available record, the Panel notes the distinctiveness and the reputation of the

Complainant’s trademark, and the composition of the disputed domain name, and finds that in the

circumstances of this case the passive holding of the disputed domain name does not prevent a finding of

bad faith under the Policy.

Based on the available record, the Panel finds that the Complainant has established the third element 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, <spuerkeess-valider.com>, be transferred to the Complainant.

/Eva Fiammenghi/

Eva Fiammenghi

Sole Panelist
Date: February 16, 2024