WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jupiter Investment Management Group Limited v. Juan Ortega, Ortega Capital
Case No. D2008-0061
1. The Parties
The Complainant is Jupiter Investment Management Group Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Nabarro, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Juan Ortega, Ortega Capital of Madrid, Spain.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Key-Systems GmbH dba .
3. Procedural History
The Complaint (naming as Respondent “Juan Ortega (t/a Jupiter capital research and/or Ortega Capital)”) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2008. On January 16, 2008, the Center transmitted by email to Key-Systems GmbH dba a request for registrar verification in connection with the domain name at issue. On January 17, 2008, Key-Systems GmbH dba transmitted by email to the Center its verification response confirming that the Respondent Juan Ortega, Ortega Capital is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 31, 2008. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2008.
The Center appointed Alfred Meijboom as the sole panelist in this matter on February 28, 2008. 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 UK fund management group. It holds a number of trademark registrations containing the word JUPITER, including the Community trademark registration of the word JUPITER of March 16, 1999 (Reg. No. 641712) covering, inter alia, fund and investment trust management and corporate finance.
The Domain Name was registered on March 13, 2007. The Domain Name resolves to a website that generates a page of links to an investment research service and information on financial advice under the name Jupiter Capital Resources.
5. Parties’ Contentions
A. Complainant
The Complainant contends that ignoring the suffix “.com”, it is evident on a visual, aural and conceptual analysis of “JUPITERCR” that “JUPITER” is the distinctive and dominant component that is recognized and identified by the public. Accordingly, the Complainant submits that the Domain Name is identical or confusingly similar to the Complainant’s JUPITER trademark.
The Complainant avers that it has not licensed the Respondent to use its JUPITER trademark and that it is not a generic name in the relevant sector. According to the Complainant the Domain Name has been chosen to create a false association with the Complainant to support and provide false credentials for the Respondent’s unregulated and illegal activities, and the Complainant contends that this cannot possibly amount to a legitimate interest in the Domain Name.
Furthermore, according to the Complainant, the website to which the Domain Name resolves is a tool used as part of a boiler room scam to support the Respondent’s activities whereby individuals cold call people in the United Kingdom of Great Britain and Northern Ireland (“UK”) offering share investment opportunities. When questioned as to their credentials (presumably by the Complainant or its agent) they identify themselves as “Jupiter Capital” and direct a person’s attention to their website at the Domain Name. In addition they claim that Jupiter Capital is or is connected with the Complainant, contrary to the fact. The Complainant has submitted into evidence statements of members of the UK public who had been contacted in this way.
The Complainant has brought Jupiter Capital’s activities to the attention of the Financial Services Authority (FSA) (the UK’s independent financial services regulator) and following an investigation by the FSA, Jupiter Capitals is identified by the FSA as an “unauthorized overseas firm operating in the UK”. The Complainant has submitted a list of the FSA of firms identified as such containing Jupiter Capital Resources, plus an “Alert” of the FSA of October 29, 2007 warning investors against Jupiter Capital Resources and the website at the Domain Name.
The Complainant asserts that it is clear the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s JUPITER trademark as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on the Respondent’s website. This constitutes evidence that the Domain Name is being used in bad faith according to paragraph 4(b)(iv) of the Policy. In addition the Complainant avers that the Respondent’s use of the Domain Name unfairly disrupts the business of the Complainant, since such use is likely to mislead customers into believing that the Respondent either is the Complainant, or is associated with the Complainant and also to direct customers seeking the Complainant’s website to the Respondent’s website.
Consequently, the Complainant contends that the Domain Name was registered or acquired in bad faith and is being used in bad faith.
The Complainant requests the Panelist to issue a decision that the Domain Name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Selection of Language
The Complaint was filed in English. According to Paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679).
In the present case, the registrant Key-Systems GmbH has informed the Center that they do not have any records available regarding the language of the registration agreement, since the Domain Name was registered through their reseller Best Hosting LLC. When the Center inquired with Best Hosting LLC regarding the language of the registration agreement, they answered that they do not have a signed agreement with the Respondent, but that the Respondent had registered the Domain Name via their English website and corresponds with them in English. Furthermore, the Respondent has not objected to English being the language of the administrative proceeding.
Therefore, the Panel decides, under Paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.
Transfer of the Domain Name in Dispute
According to paragraph 4(a) of the Policy, the requested remedy can be granted if the Complainant asserts and proves each of the following:
(i) that the Domain Name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is or was being used in bad faith.
A. Identical or Confusingly Similar
The Complainant holds a number of trademark registrations containing the word JUPITER, including the registration of the word mark JUPITER in the European Community (Reg. No. 641712) covering, inter alia, fund and investment trust management and corporate finance, registered since March 16, 1999. The Panelist finds that the Complainant has rights in the JUPITER trademark.
For the purpose of assessing whether the Domain Name is identical or confusingly similar to the JUPITER trademark in which the Complainant has rights, the “.com” suffix is disregarded, it being a necessary component for registration and use of a domain name. The difference between the JUPITER trademark and the Domain Name is the addition of the letters “cr”, presumably referring to “Capital Resources”, at the end. The Panelist is of the opinion that “jupiter” clearly is the dominant component of the Domain Name and that the mere addition of the letters “cr” does not reduce the likelihood of confusion but likely contributes to such confusion given that the Respondent holds itself out as “Jupiter Capital Resources” to the public. The likelihood of confusion is further increased by the fact that the Domain Name resolves to a website purportedly offering financial services under the name “Jupiter Capital Resources”, which services are identical or at least highly similar to those offered by the Complainant under the JUPITER trademark. As a result the Panelist considers the Domain Name , confusingly similar to the Complainant’s JUPITER trademark.
The Panel thus finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name. According to the consensus view among panels, this condition is met if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to rebut that showing by providing evidence of at least one of the three circumstances mentioned in paragraph 4(c) of the Policy.
The Complainant contends that it has not licensed the Respondent to use its JUPITER trademark and the Respondent did not dispute the Complainant’s claim to that effect. Nor could the Panelist establish any indications that the Respondent was previously known under the Domain Name or is using the Domain Name for a bona fide offering of goods or services, or for non-commercial or fair use. For these reasons, the Panelist finds that the Respondent has no rights or legitimate interest in the Domain Name.
The Panel thus finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panelist considers that the JUPITER trademark is not descriptive for financial services and has distinctive character. The Domain Name resolves to a website that generates a page of links to an investment research service and information on financial advice under the name “Jupiter Capital Resources”. Therefore, in accordance with ACCOR, Soci�t� Anonyme � Directoire et Conseil de surveillance v. Tigertail Partners,WIPO Case No. D2002-0625, the Panelist finds it is reasonable to conclude that the Domain Name, which consists of the JUPITER trademark in its entirety and the letters “cr” at the end, must have been registered by someone who was familiar with the JUPITER trademark. Therefore the Panelist finds that the Domain Name was registered in bad faith.
The Complainant must also prove that the Domain Name is being used in bad faith.
The Panelist takes the following circumstances into account. As said, the Domain Name resolves to a website purportedly offering financial services. Furthermore, the Complainant has provided evidence that the Respondent uses the Domain Name to mislead investors claiming that “Jupiter Capital Resources” is or is connected with the Complainant. Moreover, the FSA has warned investors against “Jupiter Capital Resources” and the website at the Domain Name explaining that Jupiter Capital is not authorized to carry on regulated activities such as advising on and dealing in investments.
By using the confusingly similar Domain Name in this way, the Respondent is attempting to redirect Internet users to his website, generating traffic for his own commercial purposes. In light of paragraph 4(b) of the Policy, the Panelist finds that the Respondent’s use of the Domain Name sufficiently satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Name “is being used in bad faith”.
The Panel thus finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, be transferred to the Complainant.
Alfred Meijboom
|Sole Panelist
Dated: March 10, 2008
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