Swedbank AB v Gabson Frank, UK Company

WIPO Case No. D2024-0088

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Swedbank AB v. Gabson Frank, UK Company

Case No. D2024-0088

1. The Parties

The Complainant is Swedbank AB, Sweden, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Gabson Frank, UK Company, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names, <swedbank-group.com>, <swedbankgroups.com>, and <swed-bankse.com>, are registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2024. connection with the disputed domain names. On January 12, 2024, 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 January 25, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 14, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 20, 2024.

The Center appointed Alfred Meijboom as the sole panelist in this matter on February 28, 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

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4. Factual Background

16,000 people. The Complainant’s primary markets are Sweden, Estonia, Latvia, and Lithuania, where it has several hundred branches, and it has global operations across Norway, Finland, Denmark, Luxembourg,	The Complainant is a Swedish savings bank which was founded in 1820, and currently employes over and over half a million corporate customers.
The Complainant is owner of trademark registrations for SWEDBANK across various jurisdictions, including:
-	Swedish trademark SWEDBANK with registration number 188279, registered on September 23, 1983;
-	Unites Stated trademark SWEDBANK with registration number 1712203, registered on September 1, 1992; and
-	European Union trademark SWEDBANK with registration number 004897567, registered on March 5, 2007.

The Complainant also owns and operates numerous domain names in different Top-Level Domains (“TLDs”) containing the term “swedbank”, including <swedbank.se>, <swedbank.com>, and <swedbank.us>, as well as the domain name <swedbankgroup.com> since April 3, 2004.

The Respondent registered the disputed domain name, <swedbank-group.com>, on August 26, 2023, and the disputed domain names, <swedbankgroups.com> and <swed-bankse.com>, on November 25, 2023. All the disputed domain names are passively held.

The Complainant sent a cease-and-desist letter to the Respondent on September 1, 2023 to request voluntary transfer of the disputed domain name, <swedbank-group.com>, and, apparently in absence of a reply, sent an identical ceased-and-desist letter on September 6 and on September 11, 2023. The Respondent did not respond to any of these three letters.

The Complainant submitted evidence that the Respondent holds registrations for several other domain names that undisputedly misappropriate the trademarks of well-known brands and businesses in the financial sector.

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 the
Complainant’s SWEDBANK trademarks, to which they merely add the generic, descriptive terms “groups”
“group”, and “se”.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names because the Respondent was not sponsored by or affiliated with the Complainant in any way, and the Complainant has not given the Respondent permission to use the SWEDBANK trademarks in any manner, including in domain names, nor is the Respondent commonly known by the disputed domain names.

According to the Complainant the disputed domain names were registered in bad faith, because the
Respondent has created the disputed domain names that are confusingly similar to the Complainant’s
SWEDBANK trademarks, as well as the Complainant’s <swedbankgroup.com> and <swedbank.se> domain

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names, which demonstrate a prior knowledge of and familiarity with the Complainant’s brand and business. The Complainant also alleges that the disputed domain names currently resolve to inactive sites and are not being used, which passive holding constitutes a factor in finding bad faith registration and use of the disputed domain names, and which the Complainant considers an indication of an intention to hold the disputed

domain names for some future active use in a way which would be competitive with or otherwise detrimental
to the Complainant. In addition, the Respondent’s holding of several other domain names that
misappropriate the trademarks of well-known brands and businesses demonstrates that the Respondent is

engaging in a pattern of cybersquatting and/or typosquatting.

B. Respondent

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

6. Discussion and Findings

The Respondent did not file a Response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favor of the complainant. The complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in this proceeding. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.

Under the Policy, the Complainant must prove 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 respect of the disputed domain names; and

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

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 names. 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.

The entirety of the trademark is reproduced within the disputed domain names. Accordingly, the disputed
domain names are confusingly similar to the Complainant’s SWEDBANK trademark for the purposes of the

Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

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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 the disputed domain names.

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.

More particularly, in absence of a Response which could elucidate the Respondent’s current passive holding of and possible future intentions with the disputed domain names, the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain names.

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.

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.

In the present case, the Panel finds that the Respondent must have been aware of the Complainant’s SWEDBANK trademarks, which are distinctive and had been registered and used internationally decades before the registration of the disputed domain names, while the Respondent moreover registered the disputed domain names, <swedbankgroups.com> and <swed-bankse.com>, after it received the Complainant’s cease-and-desist letters with respect to the disputed domain name, <swedbank-group.com>. The Panel is all the more convinced that the Respondent intentionally targeted the Complainant when it registered the disputed domain names, as the Complainant has shown that the Respondent also registered domain names containing well-known trademarks of other financial institutions, which, in the absence of a response to the contrary, the Panel considers as evidence that the Respondent is engaged in a pattern of bad faith conduct.

Panels have found that the non-use of a domain name (including a blank 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 names 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

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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 reputation of the	any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or Respondent’s lack to respond to the Complainant’s cease-and-desist letters and the Complaint, and finds that in the circumstances of this case the passive holding of the disputed domain names 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 names, <swedbank-group.com>, <swedbankgroups.com>, and <swed-bankse.com>, be transferred to the Complainant.
/Alfred Meijboom/ Alfred Meijboom Sole Panelist Date: March 13, 2024