Nomura International, Plc. v Norman Muranna, Norman Muranelley

WIPO Case No. D2023-4949

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Nomura International, Plc. v. Norman Muranna, Norman Muranelley

Case No. D2023-4949

1. The Parties

The Complainant is Nomura International Plc., United Kingdom (the “UK”), represented by

Potter Clarkson AB, Sweden.

The Respondents are Norman Muranna, Spain, and Norman Muranelley, Spain.

2. The Domain Names and Registrar

The disputed domain names <nomurainternationalplc.com> and <nomuraplc.com> are registered with

PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28,

2023. On November 28, 2023, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain names. On November 29, 2023, the Registrar
transmitted by email to the Center its verification response disclosing registrant and contact information for
the disputed domain names, 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 November 29, 2023, with the registrant and
contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the
Complainant to either file separate complaint(s) for the disputed domain names associated with different
underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity.

The Complainant filed an amended Complaint on December 1, 2023.

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 Respondents of the paragraph 5, the due date for Response was December 24, 2023. The Respondents did not submit any

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response. Accordingly, the Center notified the Respondents’ default on January 2, 20234.

The Center appointed Marilena Comanescu as the sole panelist in this matter on January 4, 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, Nomura International Plc., is part of the international Nomura financial services group.
The Nomura Group was formally founded in 1925 in Osaka, Japan and, since that date, it has grown to have
a presence in over 30 countries, employing over 27,000 employees globally, and having physical presence
in Europe for 25 years, including in Spain, where the Respondent is apparently located.

The Complainant, and its group, offers a range of financial services across a large of number of jurisdictions including asset management, retail banking and investment banking.

The Complainant owns worldwide trademark registrations for the mark NOMURA, such as the following:

- the UK trademark registration number UK00002169140 for the word NOMURA, filed on June 11, 1998, and

registered on June 4, 1999, covering services in International class 36; and

- the European Union trademark registration number 002615136 for the word NOMURA, filed on March 8,

2002, and registered on August 10, 2005, covering services in International classes 35 and 36.

The companies within the Nomura Group are licensed to use the trademarks of other companies within the

Nomura Group.

Th Complainant, directly or through its related companies, holds various domain names containing the mark
NOMURA, such as <nomura.com> registered in 1994, and <nomuraholdings.com> registered in 2001.

The disputed domain name <nomurainternationalplc.com> was registered on July 28, 2023, and the disputed domain name <nomuraplc.com> was registered on September 6, 2023.

At the time of filing the Complaint, both disputed domain names resolved to a landing webpage displaying a red screen.

According to Annex 6 to Complaint, the disputed domain name <nomuraplc.com> was used to send emails aimed to impersonate the Complainant, and its related companies, offering specific investment products.

Such emails include, inter alia, a link to the Complainant’s official website <nomura.com>, the Complainant’s registered company name and headquarters, as well as the Complainant’s red logo.

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 names.

Notably, the Complainant contends that the disputed domain names are confusingly similar to its internationally well-known trademark NOMURA; that the Respondent has no rights or legitimate interests in the disputed domain names; and that the Respondent registered and is using the disputed domain names in bad faith in order to create and use email accounts to contact members of the public and to offer them

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unofficial and fraudulent financial products which are designed to impersonate products offered by Nomura. damage, as well as significant reputational damages to the Complainant.

B. Respondent

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

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the

Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Consolidation: Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.

The disputed domain name registrants did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or

corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable

to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that the disputed domain names (i) display the same landing

page with a red screen (which is not a registrar’s standard landing page or an error page); (ii) have

registrants both based in mainland Spain, with identical first names, i. e. Norman, and similar surnames, with

identical first five letters, namely they both start with “Muran”; (iii) are both registered with the same

Registrar; (iv) were created in a similar manner, reproducing the Complainant’s trademark NOMURA

followed by additional terms, “international plc”, respectively “plc” and ultimately representing company

names of the Complainant and its affiliate; and (v) were registered within a short timeframe, of less than two
months from each other.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain

name registrants (referred to below as “the Respondent”) in a single proceeding.

B. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing

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(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between the Complainant’s trademark and the disputed domain names. 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 mark is recognizable within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

While the addition of other terms here, “international plc”, respectively “plc”, may bear on assessment of the

second and third elements, the Panel finds the addition of such terms do not prevent a finding of confusing
similarity between the disputed domain names 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.

C. 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 names. 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 names such as those enumerated in the

Policy or otherwise.

According to the evidence provided in the Complaint, the Respondent has used the disputed domain name

<nomuraplc.com> to send emails offering unauthorized financial products, inserting in such emails the

Complainant’s company name, registered address, and logo. Panels have held that the use of a domain

name for illegal activity (e.g., impersonation/passing off, or other types of fraud) can never confer rights or

legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Furthermore, the composition of the disputed domain names carries a high risk of implied affiliation, being

formed of the Complainant’s mark with generic terms, and ultimately representing the reproductions of the

Complainant’s company name, respectively of its affiliate, and suggests an affiliation with the trademark

owner. UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. WIPO Overview 3.0, section 2.5.1.

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

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D. 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 disputed domain names were registered in bad faith, with

knowledge of the Complainant and its trademark particularly since they reproduce the Complainant’s mark

(registered since at least 1999), company names and domain names. Furthermore, the use of the disputed
domain name <nomuraplc.com> enforces such finding.

According to the evidence provided in the Complaint and unrefuted by the Respondent, the disputed domain name <nomuraplc.com> was used to send email offerings of unauthorized financial products from an email

address associated with this domain name, using as well the Complainant’s official company name, address,

website and logo. Panels have held that the use of a domain name for illegal activity (e.g.,

impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4.

At the time of filing the Complaint, the disputed domain name <nomurainternationalplc.com> directs towards

a parked page with red screen and no content.

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 <nomurainternationalplc.com> 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 reputation of the Complainant’s trademark; the composition of the disputed domain name which is

highly similar to the Complainant’s trademark, domain names and company name; the use of the red color

on the landing page, similar to the Complainant’s logo color; the Respondent’s failure to respond in the

present proceedings; the use of inaccurate or incomplete contact information in the WhoIs; the

implausibility of any good faith use to which the disputed domain name may be put, 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 the third element of the Policy has been established.

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 names, <nomurainternationalplc.com> and <nomuraplc.com>, be transferred to the Complainant.

/Marilena Comanescu/

Marilena Comanescu

Sole Panelist
Date: January 16, 2024