Danske Bank A/S v. YoonGoo cho
Claim Number: FA1402001544048
Complainant is Danske Bank A/S (“Complainant”), represented by Kasper Frahm of Plesner Law Firm, Denmark. Respondent is YoonGoo cho (“Respondent”), Republic of Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <danske.com>, registered with Megazone Corp. dba hosting.kr.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2014; the National Arbitration Forum received payment on February 18, 2014. The Complaint was received in both Korean and English.
On February 24, 2014, Megazone Corp. dba hosting.kr confirmed by e-mail to the National Arbitration Forum that the <danske.com> domain name is registered with Megazone Corp. dba hosting.kr and that Respondent is the current registrant of the name. Megazone Corp. dba hosting.kr has verified that Respondent is bound by the Megazone Corp. dba hosting.kr registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 28, 2014, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of March 20, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@danske.com. Also on February 28, 2014, the Korean language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is the largest bank in Denmark and a leading player in the Northern European financial markets. Complainant was founded in 1971 and changed its name to “Den Danske Bank” in 1976. In 2000 Complainant shortened its name to “Danske Bank.” Complainant has around 5 million customers around the world.
2. Complainant has rights in the DANSKE marks through its registrations with the Danish Patent and Trademark Office (“DPTO”).
a. Complainant provides evidence of its Danish trademark registrations for the DANSKE CAPITAL mark (Reg. No. 200,601,809, registered May 19, 2006)
b. Complainant further provides evidence of its Danish trademark registration for the DANSKE EQUITIES mark (Reg. No. 200,603,710, registered December 20, 2006).
3. Complainant has rights in the DANSKE mark through its registrations with the European Union’s Office for Harmonization in the Internal Market (“OHIM”).
a. DANSKE (Reg. No. 3,136,868 filed April 15, 2003, registered May 18, 2005).
4. Respondent’s <danske.com> domain name is identical to Complainant’s DANSKE mark.
a. Respondent merely adds the generic top-level domain (“gTLD”) “.com”.
5. Respondent has no rights or legitimate interests in the <danske.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. The word “Danske” only makes sense in the Nordic countries of Denmark, Sweden, Norway, Iceland and the Faroe Islands. Complainant argues that because Respondent resides in South Korea, it is unlikely that Respondent should be commonly known by the disputed domain name.
ii. The WHOIS information for the disputed domain name lists the registrant as “Yon Goo cho.” See Exhibit 4.
b. Respondent is not making a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name.
i. Respondent uses the disputed domain name as a parked website comprised of links and advertisements. Complainant states that all 10 links on the front page are for financial services and lead to pages with advertisements and links for Complainant’s competitors.
6. Respondent registered and is using the <danske.com> domain name in bad faith.
a. Respondent has a pattern of bad faith registration as demonstrated by previous adverse UDRP decisions.
b. Respondent’s disputed domain name resolves to a website displaying links to Complainant’s competitor’s websites.
c. Respondent uses the disputed domain name to attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Respondent is purposely diverting Internet users to its website for monetary services.
Respondent targeted Complainant by using its DANSKE mark which has no meaning except for its trademark meaning. Complainant is one of the largest financial institutions in Northern Europe, and it is reasonable to infer that Respondent was aware of Complainant and Complainant’s rights in the DANSKE mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings in Korean. However, Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant is Danske Bank A/S of Copenhagen, Denmark. Complainant is the largest bank in Denmark, founded more than one hundred years ago, and the owner of domestic and international registrations for the marks, DANSKE and DANSKE BANK. Complainant asserts that it has been using the marks in their exact or comparable form since at least as early as 2000 in connection with its provision of banking and financial services.
Respondent is YoonGoo cho of the Republic of Korea. Respondent’s registrar’s address is listed as Seoul, Republic of Korea. Respondent registered the <danske.com> domain name on or about January 31, 2004.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts that it is the largest bank in Denmark and a leading player in the northern European financial markets. Complainant states that it was founded in 1971 and changed its name to “Den Danske Bank” in 1976. Complainant explains that In 2000 Complainant shortened its name to “Danske Bank.” Additionally, Complainant contends that it has rights in the DANSKE marks through its registrations with the DPTO and OHIM. The Panel notes Complainant’s registration for the DANSKE mark with OHIM (Reg. No. 3,136,868, filed April 15, 2003, registered May 18, 2005). Panels have concluded that providing evidence of a registration for a mark with a recognized trademark authority is sufficient to establish rights in a given mark. See Orange Glo Int’l, Inc. v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21, 2005) (finding the complainant had established rights in the OXICLEAN mark by virtue of trademark registrations with various authorities, including the Office for Harmonization in the Internal Market (“OHIM”)). The Panel additionally notes that the panel in Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) held that the relevant date for showing rights in a mark for the purpose of Policy ¶ 4(a)(i) dates back to Complainant’s filing date. Further, the panel in Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) found that a complainant need not register a mark in the country of respondent, as long as it can establish a registration in some jurisdiction. The Panel here finds that Complainant has established rights pursuant to Policy ¶ 4(a)(i) in the DANSKE mark dating back to the filing date of April 15, 2003.
Next, Complainant asserts that Respondent’s <danske.com> domain name is identical to Complainant’s DANSKE mark under Policy ¶ 4(a)(i). Complainant explains that Respondent’s <danske.com> domain name merely adds the gTLD “.com” to Complainant’s DANSKE mark. Panels have customarily found that adding the gTLD “.com” to a complainant’s mark does not differentiate it from the registered mark under Policy ¶ 4(a)(i). See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark). The Panel here finds that Respondent’s <danske.com> domain name is identical to Complainant’s DANSKE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant asserts that Respondent has no rights or legitimate interests in the <danske.com> domain name. Complainant further contends that Respondent is not commonly known by the disputed domain name. Complainant explains that the word “Danske” is applicable only in the Nordic countries of Denmark, Sweden, Norway, Iceland and the Faroe Islands. Complainant argues that because Respondent resides in South Korea, it is unlikely that Respondent has ever been commonly known by the disputed domain name. Additionally, Complainant states that the WHOIS information for the disputed domain name lists the registrant as “YoonGoo cho.” Previous panels have found that a respondent is not commonly known by the disputed domain name where there is no evidence on the record indicating that the respondent is commonly known by the same. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel here finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent is not making a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). Complainant claims that Respondent uses the disputed domain name as a parked website comprised of links and advertisements. Complainant states that all 10 links on the front page are for financial services and lead to pages with advertisements and links for Complainant’s competitors. The Panel notes that some of the links featured on Respondent’s website include, “Danske Bank,” “Netbank,” “Dansk Bank,” “Bank Online,” “High Interest Bank Accounts,” “Best Bank Online Banking,” “Netbank Bank,” “BankNordik-fordelsbank,” and “Learn Danish for free.” The Panel further notes that prior panels have continuously found that using an identical domain name to resolve to a parked website featuring links that compete with a complainant does not convey rights or legitimate interests to a respondent. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel here finds that Respondent has no rights or legitimate interests in the <danske.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant urges that Respondent has a pattern of bad faith registration as demonstrated by previous adverse UDRP decisions. The Panel notes that Complainant has cited two UDRP cases where Respondent was found to have registered and used the at issue domain names in bad faith. See Quest Commc’ns Int’l v. YoonGoo Cho d/b/a SebinTech Inc, FA 0237516 (Nat. Arb. Forum April 5, 2004); see also Renault Trucks v. Yoongoo Cho, D2005-0693 (WIPO Aug. 30, 2005). Previous panels have found evidence of bad faith where the respondent has a history of adverse UDRP rulings. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). The Panel here finds the prior cases cited above to be sufficient evidence of bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant contends that Respondent registered and is using the <danske.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant asserts that Respondent’s disputed domain name resolves to a website displaying links to Complainant’s competitor’s websites thereby disrupting Complainant’s business. The panel in the David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) decision found that the respondent acted in bad faith when it used a disputed domain name to resolve to a website advertising goods and services of complainant’s competitors and thus was disrupting the complainant’s business in bad faith. The Panel here finds that Respondent registered and is using the <danske.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent registered and is using the <danske.com> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant states that Respondent uses the disputed domain name to attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Complainant notes that Respondent is purposely diverting Internet users to its website displaying pay-per-click links in hopes of generating profit. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel found that respondent engaged in bad faith use and registration when it used a disputed domain name to resolve to a website featuring links to websites that featured links to competing and non-competing commercial websites from which respondent presumably received referral fees. The Panel here finds that Respondent registered and is using the <danske.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <danske.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 7, 2014
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