Banque et Caisse d’Epargne de l’Etat, Luxembourg v Dilan Callahan,; CallahanTech

WIPO Case No. D2024-0455

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Banque et Caisse d’Epargne de l’Etat, Luxembourg v. Dilan Callahan,
CallahanTech

Case No. D2024-0455

1. The Parties

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

Freylinger S.A., Luxembourg.

The Respondent is Dilan Callahan, CallahanTech, United States of America.

2. The Domain Name and Registrar

The disputed domain name <spuerkeess-verification.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 January 31, 2024. On January 31, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2024, 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 February 7, 2024, 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 February 8, 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
Complaint, and the proceedings commenced on February 13, 2024. In accordance with the Rules,
paragraph 5, the due date for Response was March 4, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 7, 2024.

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The Center appointed Dawn Osborne as the sole panelist in this matter on March 14, 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 is a well-known international bank using the trademark SPUERKEESS, registered, inter alia as European Union TM no.009110552 since November 2, 2010, for financial services.

The disputed domain name registered in 2023 does not resolve to an active website.

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.

Notably, the Complainant contends that:

The disputed domain name is confusingly similar to the Complainant’s SPUERKEESS trademark, containing it in its entirety and adding only the generic term “verification’, a hyphen and the generic Top-Level Domain .com which do not prevent the Complainant’s mark being recognizable in the disputed domain name and confusingly similar to it.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorised the Complainant and the Respondent is not commonly known by the disputed domain name. Non-use of a domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The Respondent has not answered the Complaint or explained why it has registered the Complainant’s distinctive mark as part of a domain name without using it. The disputed domain name has been registered in bad faith. The Complainant suspects the name may have been registered for sale or as a blocking registration and is concerned about possible phishing.

B. Respondent

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

6. Discussion and Findings

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.

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.

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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 terms here “verification” and a hyphen may bear on assessment of the second
and third elements, the Panel finds the addition of such term 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.

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 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.

The Respondent has not been authorised by the Complainant and is not commonly known by the disputed domain name.

The disputed domain name has not been used. Passive holding does not equate to a bona fide offering of goods or services or a legitimate noncommercial or fair use and does not preclude a finding of lack of rights or legitimate interests.

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.

In the present case, the Panel notes that the Respondent has not used the disputed domain name.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have found that the non-use of a domain name 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.

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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 and (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use. WIPO Overview 3.0, section 3.3.

Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain name which suggests it is to be used for a log in procedure based on the Complainant’s mark. There is no response from the Respondent explaining why it has registered a domain name containing the distinctive mark of the Complainant, a well-known bank, when the Respondent appears to have no obvious connection with that mark or name suggesting that the disputed domain name may be intended for phishing purposes. Phishing is a serious allegation and the Respondent has not replied to deny this allegation of the Complainant. The Panel 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.

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-verification.com> be transferred to the Complainant.

/Dawn Osborne/
Dawn Osborne
Sole Panelist
Date: March 28, 2024