Oney Bank v SuperPrivacy Service LTD c/o Dynadot / ekin sarimsak
WIPO Case No. D2022-3127
•07-11-2022
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
ONEY Bank v. SuperPrivacy Service LTD c/o Dynadot / ekin sarimsak
Case No. D2022-3127
1. The Parties
Complainant is ONEY Bank, France, represented by SafeBrands, France.
Respondent is SuperPrivacy Service LTD c/o Dynadot, United States / ekin sarimsak, Türkiye.1
2. The Domain Name and Registrar
The disputed domain name <oneyconnect.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2022. On August 25, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2022, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on August 26, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 26, 2022.
The Center verified that the Complaint, together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on September 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 28, 2022.
1 It is evident from the case file that SuperPrivacy Service LTD c/o Dynadot, United States, is a privacy protection service and that ekin
sarimsak, Türkiye, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term
“Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.
page 2
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on October 10, 2022. 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
Complainant is a company organized under the laws of France that is specialized since 1983 in consumer credit, electronic payment and payment card management.
Complainant has provided evidence that it is the registered owner of numerous trademarks relating to its company name and brand ONEY, including, but not limited, to the following:
| - | Word mark ONEY, International Registration (World Intellectual Property Organization, WIPO), registration number: 865742, registration date: August 11, 2005, status: active; |
| - | Word mark ONEY, International Registration (WIPO), registration number: 947985, registration date: July 11, 2007, status: active; |
| - | Word mark ONEY CONNECT, Institut National de la Propriété Industrielle (INPI), France, registration number: 4849464, application date: March 4, 2022, status: active; |
| - | Word mark ONEY CONNECT, European Union Intellectual Property Office (EUIPO), registration number: 018667007, application date: March 4, 2022, registration date: July 20, 2022, status: active. |
Moreover, Complainant has evidenced to own numerous domain names relating to its ONEY trademark, including since 2003 the domain name <oney.com>, which resolves to Complainant’s official website at “ where Complainant promotes its consumer credit related products and services.
Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of sales price at USD 25,000.
Turkey, who registered the disputed domain name on March 4, 2022 - the very same day when
Complainant’s ONEY CONNECT trademarks were applied for with INPI and EUIPO. By the time of the
rendering of this decision, the disputed domain name is parked with the registrar GoDaddy at
“ Complainant, however, has evidenced that at some point before the filing of the
Complainant requests that the disputed domain name be transferred to Complainant
5. Parties’ Contentions
A. Complainant
Complainant contends that, ever since 1983, it has become one of the leading financial partners in the
European Union with a portfolio of 10 million customers and considerable reputation.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s trademarks as it includes the dominant and distinctive element ONEY (which is a fanciful term), combined with the generic term “connect”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) searches on official trademarks databases (e.g. by EUIPO or WIPO) reveal no rights by Respondent in the fanciful term “Oney” which is not generic and not necessary to describe products, services or any other activity, and (2) the disputed domain name was proposed for online sale at a sales price at USD 25,000, demonstrating that Respondent’s will is to monetize and make profit of the registration of the disputed domain name. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since (1) the disputed domain name has been registered
page 3
the same day as the application of Complainant’s ONEY CONNECT trademarks, showing that Respondent operated a watch on Complainant’s activities to be able to register, as quickly as possible, a domain name relating to Complainant’s new trademarks, and (2) Respondent offered the disputed domain name for online
sale at a sales price of USD 25,000, demonstrating that Respondent’s will was to make unfair commercial
use of Complainant’s distinctive ONEY trademark.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in
which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is identical to the ONEY CONNECT trademark, and confusingly similar to the ONEY trademark, in both of which Complainant has rights.
In relation to the ONEY CONNECT trademark, the disputed domain name consists exclusively of the latter, from which identity arrives without saying. In relation to the ONEY trademark, the disputed domain name includes the latter in its entirety, simply added by the term “connect”. Numerous UDRP panels have recognized that where a domain name incorporates a trademark in its entirety, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview 3.0, section 1.8), that the addition of other terms (whether e.g. descriptive or otherwise) – such as e.g. the term “connect” – would not prevent the finding of confusing similarity under the first element of the UDRP.
Therefore, Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent obviously has not been authorized to use Complainant’s ONEY and/or ONEY CONNECT trademarks, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the fanciful term “Oney” on its own. Finally,
page 4
Respondent so far obviously has neither used the disputed domain name for a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose, but rather to offer it for online sale at a price of USD 25,000. Moreover, given that the disputed domain name incorporates Complainant’s reputed ONEY trademark in its entirety and Complainant’s newly registered ONEY CONNECT trademark even exclusively, the disputed domain name carries, as such, the high risk of implied affiliation with said trademarks which is why offering it for online sale cannot constitute fair use and, thus, cannot confer rights or legitimate interests in the disputed domain name, either (see WIPO Overview 3.0, section 2.5.1).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate
interests in respect of the disputed domain name. Having done so, the burden of production shifts to
Respondent to come forward with appropriate evidence demonstrating such rights or legitimate interests
(see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, it has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The circumstances to this case leave no serious doubts that Respondent was fully aware of Complainant’s rights in the ONEY and ONEY CONNECT trademarks (notwithstanding their claimed reputation) when registering the disputed domain name and that the latter clearly is directed thereto. The Panel agrees with Complainant’s line of argumentation that – given the timely coincidence between the application of Complainant’s ONEY CONNECT trademark and the registration of the disputed domain name on March 4, 2022, it is rather likely that Respondent had installed some kind of trademark watch to be able to register, as quickly as possible, a domain name relating to Complainant’s new trademark. Moreover, the fact that, at some point before the filing of the Complaint, the disputed domain name was offered on the Internet for online sale at a sales price of USD 25,000, is a clear indication that Respondent registered the disputed domain name primarily for the purpose of selling it to Complainant, most likely in far excess of its documented out-of-pocket costs directly related to the disputed domain name. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
In this context, it also carries weight in the eyes of the Panel that Respondent obviously provided false or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of Complaint dated September 6, 2022, could not be delivered. This fact at least throws a light on Respondent’s behavior which supports the Panel’s bad faith finding.
Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy set forth by paragraph 4(a)(iii).
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 <oneyconnect.com> be transferred to Complainant.
/Stephanie G. Hartung/
Stephanie G. Hartung
Sole Panelist
Date: November 7, 2022
0
0
0