The Complainant is Wellington Management Company, LLP of Boston, Massachusetts, United States of America, represented by Rahmat Lim & Partners, Malaysia.
The Respondent is Thomas Smith of Kuala Lumpur, Malaysia. 2. The Domain Name and Registrar
The Domain Name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2010. On August 13, 2010, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the Domain Name. On August 17, 2010, OnlineNic, Inc. d/b/a China-C 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2010.
The Center appointed Luca Barbero as the sole panelist in this matter on September 15, 2010. 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 Wellington Management Company, LLP, a Massachusetts limited liability partnership which is among the largest independent management and investment advisors in the world. The Complainant is the parent company of the Wellington Management group of companies and has associated companies in the People’s Republic of China, Hong Kong, SAR of China, the United Kingdom of Great Britain and Northern Ireland, Australia, Japan and Singapore.
The Complainant is the owner of several trademark registrations for WELLINGTON MANAGEMENT, including the Community Trademark Registration No. 8544819, registered on February 17, 2010, in class 36; the United States (“U.S.”) Trademark Registration No. 3,671,359, registered on August 25, 2009, in class 36; the Chinese Trademark Registration No. 4844174, registered on August 7, 2009, in class 35 and the Japanese Trademark Registration No. 5338149, registered on July 16, 2010, in class 36.
The Complainant is also the owner of numerous trademark applications, including the Applications No. T0908627A for WELLINGTON MANAGEMENT and design in Singapore, filed on August 5, 2009, in class 36 and No. 2010013937 for WELLINGTON MANAGEMENT in Malaysia, filed on July 29, 2010, in class 36.
The Complainant is furthermore the registrant of a number of domain names consisting in or including the sign WELLINGTON MANAGEMENT such as , registered on January 2, 1996; , registered on January 29, 2001; , registered on May 18, 2005; and , registered on January 30, 2001. The Complainant is also the owner of the domain name , registered on December 3, 1998.
The Respondent registered the Domain Name on July 5, 2010. 5. Parties’ Contentions A. Complainant
The Complainant points out that Wellington Management Company, LLP and its associated companies of Wellington Management are among the world’s largest independent investment management firms. The Complainant was first established in 1933 in Philadelphia to provide investment advisory and asset management services and retained the name “Wellington Management” since 1959. In 1979, the Complainant was reorganized as a partnership under Massachusetts’ partnership laws. Commencing in the 1980s, the Complainant has enjoyed phenomenal international growth expanding to Asia and Europe and serves today over 1,800 institutional clients based in more than 40 countries, including Malaysia.
The Complainant states that it has invested a considerable amount of money to build its WELLINGTON MANAGEMENT brand name and provides a detailed description of the evolution of the Complainant’s logo WELLINGTON MANAGEMENT since its adoption in 1959.
The Complainant states that, due to the long and extensive use and exposure of the WELLINGTON MANAGEMENT trademark and the “Wellington Management” name, the Complainant has acquired reputation and goodwill in the sign WELLINGTON MANAGEMENT, which is nowadays distinctive of the Complainant.
The Complainant contends that Domain Name is “phonetically, visually and conceptually identical with the Complainant’s ‘WELLINGTON MANAGEMENT’ name, house mark, trademarks and domain names” since it incorporates the entire WELLINGTON MANAGEMENT trademark, with the addition of the suffix “-llc”, which is a generic and non-distinctive suffix. The Complainant highlights that the Respondent has adopted and copied its trademark WELLINGTON MANAGEMENT in the Domain Name and also on every single webpage of the web site “www.”, wherein the name of the company in Malaysia is purportedly “Wellington Management LLC Sdn Bhd”. Moreover, according to the Complainant, since the Complainant is currently a limited liability partnership, the use in the Domain Name of the letters “LLC” is very similar to the abbreviation “LLP” of the Complainant’s name.
The Complainant also highlights that the web site “www.” reproduces verbatim the Complainant’s web site “www.” and that WELLINGTON MANAGEMENT trademark is reproduced on each web page of the Respondent’s web site.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainant states that there is no evidence of a bona fide offering of services on the part of the Respondent since, although its web site “www.” appears to suggest the provision of investment management services, the registrant contact, administrative contact, technical contact and the billing contact of the Domain Name seem to be fictitious. The Complainant also states that the Respondent’s use of the Domain Name “reeks of mala fide intentions to tarnish the reputation and goodwill associated with the Complainant’s ‘WELLINGTON MANAGEMENT’ name, house mark, trade marks and domain names”.
The Complainant states that the verifications conducted by the Complainant’s authorized representative suggested that the name indicated by the Respondent, Thomas Smith, is “very likely a fictitious, bogus and non-existent person” and that both the postal address and the telephone number are non-existent. The Complainant underlines that also the Malaysian company purportedly known as “WELLINGTON MANAGEMENT LLC Sdn Bhd” appearing on the header of the web site corresponding to the Domain Name is a non-existent legal entity.
The Complainant concludes with reference to the issue of the rights or legitimate interest, that the Respondent’s registration and use of the Domain Name is aimed to tarnish the valuable reputation and goodwill associated with the Complainant, and as such the Respondent is not making fair use of the Domain Name. In addition, according to the Complainant, the Respondent may also be using the Domain Name with intent for unlawful commercial gain by misleadingly diverting unsuspecting consumers to its web site.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the Domain Name was registered by the Respondent primarily for the purpose of disrupting the Complainant’s business. The Complainant highlights that the Respondent deliberately registered the Domain Name and copied the Complainant’s web site “www.” information and layout to intentionally deceive and mislead the Complainant’s institutional Malaysian clients and the relevant trade and public into a belief that the Domain Name is that of the Complainant’s or is otherwise associated, affiliated, endorsed by or connected with the Complainant, and that in Malaysia the Complainant is operating via its supposed affiliate “WELLINGTON MANAGEMENT LLC Sdn Bhd”.
The Complainant emphasizes that the indication of a false address and a not-existent telephone number is suggestive that the Domain Name is an instrument of fraud and that the false association and connection of the Domain Name with the Complainant would cause serious damage to the Complainant’s valuable goodwill and reputation and will result in the dilution and erosion thereof if the Respondent is allowed to continue operating the Domain Name.
The Complainant underlines that, in view of the use of the Domain Name for a web site on which the textual and visual content of the Complainant’s official web site are reproduced, together with the blatant adoption of the Complainant’s trademark on the Respondent’s web site, the Respondent intentionally attempted to attract for commercial gain, potential investors and institutions in Malaysia to the Respondent’s web site, by creating a likelihood of confusion with the Complainant’s WELLINGTON MANAGEMENT name and mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a service on the Respondent’s web site or location.
The Complainant informs the Panel that the Respondent’s authorized representative had, on August 4, 2010, written to the Domain Name’s web hoster M Sdn Bhd and that the web hoster suspended the Respondent’s Domain Name, which was then redirected to a blank page, with the sentence “This Account Has Been Temporarily Suspended by MesraH. If you are the owner of this domain/account, please contact us immediately.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the 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 being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of several trademark registrations for WELLINGTON MANAGEMENT, such as the Community Trademark Registration No. 8544819, registered on February 17, 2010, in class 36; the U.S. Trademark Registration No. 3,671,359, registered on August 25, 2009, in class 36; the Chinese Trademark Registration No. 4844174, registered on August 7, 2009, in class 35 and the Japanese Trademark Registration No. 5338149, registered on July 16, 2010, in class 36.
The Panel finds that the Domain Name is confusingly similar to the registered trademark WELLINGTON MANAGEMENT owned by the Complainant since the mere addition of the suffix “llc” is certainly not sufficient to exclude the confusingly similarity (Fry’s Electronics, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435). Moreover, the Panel finds that the addition of the suffix “llc”, which clearly is the abbreviation of the corporate form “limited liability company”, is apt to increase the confusing similarity with the Complainant’s trade name “Wellington Management LLP”. The Panel concurs with the view expressed in AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017 ( and ), in which it was found: “[t]he [p]anel is of the view that the addition of the generic abbreviation ‘-llc’ does not detract from the distinctiveness of the dominant part of the [d]isputed [d]omain [n]ames, to the contrary, it might add to the confusion on part of the Internet users who would assume that the [d]isputed [d]omain [n]ames are those of the [c]omplainant or one of its affiliates”.
In view of the above, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance any of the circumstances indicated in paragraph 4(c) of the Policy.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the Domain Name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. 852581).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Furthermore, there is no indication before the Panel that the Respondent, whose name, according to the WhoIs database, is Thomas Smith, is commonly known by the Domain Name. Moreover, the Panel finds that the redirection of the Domain Name to a web site nearly identical to the Complainant’s web site “www.”, on which the Complainant’ s trademark were published and the contents of the Complainant’s web site were reproduced verbatim, cannot be qualified either as a bona fide offering of goods or services, or a legitimate, noncommercial or fair use of the Domain Name.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As to bad faith at the time of the registration, the Panel notes that, in light of use of the trademark WELLINGTON MANAGEMENT since 1959 in connection with the Complainant’s investment management firms in the U.S. and in several other countries in the world - including Malaysia, where the Respondent is based - the Respondent was well aware of the Complainant’s trademark when he registered the Domain Name in July 2010.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang,WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O’Flynn,WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd.,WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions,WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group,WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the [c]omplainant’s mark DHL which has an extensive world wide recognition, would have been known to the [r]espondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the [c]omplainant gives rise to the presumption of opportunistic bad faith”.
Furthermore, the Panel considers as an additional element further indicating that the Respondent was well-aware of the Complainant’s trademark the fact that, according to the evidence submitted by the Complainant, the Domain Name was pointing to a web site where the Complainant’s trademark was published and the contents of the Complainant’s official web site were displayed.
The Panel finds that Internet users, in light of the contents of the web site which was linked to the Domain Name, may have been misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s web site. See, along these lines, Kelley Blue Book Company, Inc. v. Nikolay Golovin aka B,WIPO Case No. D2005-0837, in which the panel stated: “[b]ecause the disputed domain name is almost identical to [c]omplainant’s mark, users searching for [c]omplainant’s web site and inadvertently misspelling ‘Kelley’ may connect to [r]espondent’s web site, and after seeing its content, they may believe that it is [c]omplainant’s web site. The resulting confusion provides a ground for a finding of bad faith use”. See also, inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin,WIPO Case No. D2007-0286.
The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to the web site corresponding to the Domain Name for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site and services.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response in this case. Therefore, as stated in Sports Holdings, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1146, “it is open for the [p]anel to infer a prima facie case of bad faith registration. The [p]anel also notes that the [r]espondent has used the present domain name in a commercial website. The evidence before the [p]anel indicates that the [r]espondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the [r]espondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
Along the same lines is the decision Renegade LLC v. Kenneth Gibert,WIPO Case No. D2008-0646, in which the panel stated: “[t]he [c]omplainant argues that the [d]omain [n]ames were registered and used in bad faith to divert Internet users to the [r]espondent’s website for commercial gain based on confusion with the [c]omplainant’s mark. Again, the [r]espondent has not denied these allegations or provided any evidence to support a finding that it registered and used the [d]omain [n]ames in good faith”.
Furthermore, the Panel considers the false information originally provided by the Respondent in the WhoIs database as an additional indication of the bad faith of the Respondent, concurring with the views expressed inter alia in Steelcase Development Corporation v. Admin, Domain,WIPO Case No. D2005-1352 stating that the use of false contact information by the respondent is a further indication of bad faith (Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775). See along these lines Süd-Chemie AG v. ,WIPO Case No. D2000-0376, finding bad faith use and registration where the complainant “was unsuccessful in its attempt to contact the [r]espondent by using the contact details in the [r]egistrar’s registry”.
See also Birkenstock Orthopädie GmbH & Co. KG v. ugg outlets,WIPO Case No. D2010-0771, in which it was stated “[i]n addition, the address used by the [r]espondent for registering the [d]isputed [d]omain [n]ame is highly suspicious. Having reviewed various world geographical gazetteers, the [p]anel believes that there is no official city, state of province in China known as “Northampton”, “Northampton-shire” or “California”. Attempts of the Center at contacting the [r]espondent by email and mail have met with abject failure. The [p]anel can only conclude that the contact details provided by the [r]espondent is fictitious. An applicant for registration of a domain name has a duty to act honestly. The deliberate use of fictitious and/or ineffective contact particulars to register a domain name in the absence of extenuating circumstances speaks of bad faith registration and intention to use, and the subsequent use of the domain name will accordingly be tainted by bad faith as well (see Farouk Systems Inc. v. David,WIPO Case No. D2009-1245)”.
In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith. 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.
Luca Barbero
Sole Panelist
Dated: September 29, 2010
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