Complainant is Close Brothers Group Plc of London, United Kingdom of Great Britain and Northern Ireland, represented by A.A.Thornton & Co, United Kingdom.
Respondent is Domain Admin of Tuvalu and California, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2010. On September 10, 2010, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain names. On September 10, 2010, Dynadot, LLC transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2010. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on October 7, 2010.
The Center appointed Ross Carson as the sole panelist in this matter on October 18, 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
In 1878 Close Brothers and Company was formed as a London partnership and the Company has traded under the name Close Brothers since then. Complainant’s business relates to all aspects of financial services and banking. Complainant went public in 1982 as a fully quoted company on the London Stock Exchange. In September, 1995, Complainant announced its twentieth year of unbroken profit increases with profits before tax rising to GBP 33.95 million. Complainant announced pre-tax profits of GBP 144 million in the year 2000 which represented 25 years of continuous increases in profits and earnings per share at a rate of over 25% per year compound.
Complainant is the registered owner of Community Trade Mark 002328318 for the trade mark CLOSE BROTHERS filed on July 26, 2001 and registered on January 24, 2003 in relation to insurance; financial affairs; monetary affairs; real estate affairs; financial banking services; investment banking services; merchant banking services; financial investment services; asset finance and management services; corporate finance services; loan and mortgage services; debt factoring services; invoice discounting services; debt collection services; financial planning and investment advisory services; investment and financial management services; treasury services; market making services; insurance administration services; asset management and administration services; fund management and administration services; investment management services; consultancy, information and advisory services relating to all the foregoing. Complainant has a further United Kingdom registration for the trade Mark CLOSE BROTHERS, registration number 2490485 having a date of registration in 2008.
The disputed domain name was registered on March, 21, 1999, prior to the application date and registration date of Complainant’s registration number 002328318 for the trade mark CLOSE BROTHERS.
The disputed domain name was registered on November 20, 2001, subsequent to Complainant’s application date of July 26, 2001 for the trade mark CLOSE BROTHERS but prior to Complainant’s registration date of January 24, 2003 for Registration Number 002328318 for the trade mark CLOSE BROTHERS. 5. Parties’ Contentions A. Complainant A.1 Identical or Confusingly Similar
Complainant states that as found in section 4 above, Complainant is the owner of Community trade mark registrations for the trademarks CLOSE BROTHERS the earliest of which was registered on January 24, 2003 in relation to insurance; financial affairs; monetary affairs; real estate affairs; financial banking services; investment banking services; merchant banking services; financial investment services; asset finance and management services; corporate finance services; loan and mortgage services; debt factoring services; invoice discounting services; debt collection services; financial planning and investment advisory services; investment and financial management services; treasury services; market making services; insurance administration services; asset management and administration services; fund management and administration services; investment management services; consultancy, information and advisory services relating to all the foregoing.
Complainant submits that it had goodwill and a reputation in the common law trade mark CLOSE BROTHERS in relation to financial services and banking prior to the registration of the disputed domain names by Respondent.
Complainant states that prior UDRP panels have found that common law trade marks in which a complainant can establish a reputation and goodwill will support rights in the trade mark in question for the purposes of paragraph 4(a) of the Policy. See, First National Telecom Services Limited .v. Richard Gibbs,WIPO Case No. D2004-0363, in which the panel stated that “[t]he Complainant who can establish that he has a goodwill and reputation in a mark protectable by way of passing off action has ‘rights’ in the trade mark or service mark in question for the purposes of paragraph 4(a) of the Policy”.
Complainant also relies on the comments of the panel in Margaret Drabble v. Old Barn Studios Limited,WIPO Case No. D2001-0209 in which the panel stated that “the easiest way of defining a common law trade mark is to say that it is an unregistered mark used by its proprietor in the course of trade, the unauthorized use (or imitation) of which by another trader will lead to passing off. Passing off is a tort based upon the proposition that it is unlawful to represent, contrary to fact, that one’s goods or services are the goods or services of another. Commonly, such misrepresentations are made by using a name or mark, which identifies the claimant or is otherwise a symbol of his goodwill”.
Complainant states that it is a well known and well respected financial company which has been in business in the financial sector for over 100 years. As stated in a Witness Statement by the Secretary of Complainant supported by six annexes, Complainant who has been in business since 1878 went public in 1982 as a fully quoted company listed on the London Stock Exchange and it remains a fully quoted company listed on the London Stock Exchange. As found in paragraph 4 above, Complainant carried on a substantial business in the financial and banking sector prior to the creation of the disputed domain names in 1999 and 2001. Complainant’s pre tax profits in the year 2000 were GBP 144 million which represented 25 years of continuous increases in profits and earnings per share at a rate of over 25% per annum compound. Attached as annexes to the Complaint were samples of press reports over the years relating to Complainant’s services and activities offered in association with its trade mark CLOSE BROTHERS; samples of advertisements placed by Complainant promoting its financial and banking services in association with its trade mark CLOSE BROTHERS; and examples of one of Complainant’s recent advertising campaigns relating to a new financial product offered in association with its CLOSE BROTHERS trade mark.
Complainant submits that the disputed domain name is identical to Complainant’s common law trade mark CLOSE BROTHERS and the disputed domain name is confusingly similar to Complainants common law trade mark CLOSE BROTHERS, the letters “bros” found in the second disputed domain name constituting an abbreviation of the word “brothers”. A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant states that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant further states that there is no evidence that Respondent has been or is commonly known by the disputed domain names or has acquired any trade mark or service mark rights or goodwill in the name “Close Brothers” or “Close Bros”.
Complainant states that it has been unable to find out the identity of Respondent. The contact details are inconclusive and it appears that Respondent is trying to deliberately hide its identity. There is no relationship or permission from Complainant authorizing Respondent to use the trade mark CLOSE BROTHERS or “Close Bros”. Complainant further submits that Internet users familiar with Complainant’s services will be confused into believing that Respondent’s domain names are linked to websites that are authorized by Complainant and provide access to Complainant’s services.
Complainant submits that there is no evidence that Respondent is making a legitimate, noncommercial or fair use of the disputed domain names but on the contrary appears to be creating an impression of an association with Complainant.
Complainant further states that there is no evidence that Respondent is making a bona fide offering of goods or services through the disputed domain names. Rather the disputed domain names simply link to pages where customers looking for legitimate financial services from Complainant are linked to the websites of other financial providers. There also appear to be sponsored links thereby adding to the revenue of Respondent.
Complainant submits that based on the above Respondent clearly has no rights or legitimate interests in respect of the disputed domain names. A.3 Registration in Bad Faith
Complainant submits that Respondent due to the reputation of the Complainant must have been aware of Complainant prior to registering the disputed domain names. The links appearing on the web pages associated with the disputed domain names misleadingly divert Internet users to other sites, all of which relate to finance or investment which is the same area of business as Complainant.
Complainant further submits that Respondent has a history of registering famous marks as domain names. It has been involved in at least four previous determinations under the Policy, namely: Scottish & Newcastle Plc v. Domain Admin ,WIPO Case No. D2002-1142; Associated British Foods v. Domain Admin,WIPO Case No. D2005-0283; Emirates v. Domain Admin ,WIPO Case No. D2007-1674 and Sir Terrence Conran, Conran Limited v. Domain Admin,WIPO Case No. D2008-0356. All of these cases resulted in the domain names being transferred to the respective complainants. A.4. Use in Bad Faith
Complainant submits that the disputed domain names were registered in order to prevent Complainant from reflecting its trade mark CLOSE BROTHERS in a corresponding domain name.
Complainant further submits that by registering the confusingly similar domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online locations by creating a likelihood of confusion with Complainant’s trade mark CLOSE BROTHERS as to the source, sponsorship, affiliation or endorsement of the websites, their locations and products on the websites. The website addresses are misleadingly diverting users to other sites, all of which relate to finance or investment the same area of business as Complainant.
Complainant further submits that Respondent has registered the domain names for the purpose of disrupting the business of a competitor, by diverting customers to websites of companies in the same area of business as Complainant.
Complainant further states that Respondent has not complied with its obligations with respect to registration of the disputed domain names. Respondent’s details on the WhoIs database are incomplete. There is no email address or fax number, it simply states “c/o the Registrar”. Complainant did try to contact the Registrar directly to try to resolve this matter in relation to but did not receive any reply. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “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 requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trade mark and secondly demonstrate that the disputed domain names are identical to or confusingly similar to the trade mark in which Complainant has rights.
The Policy recognizes that a complainant may successfully assert common law or unregistered trademark rights. Common law rights are reviewed in paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. The Overview indicates that previous panels have held that in order to establish common law rights a complainant must show that the mark has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” may include length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.
Prior UDRP panels have found that common law trade marks in which a complainant can establish a reputation and goodwill will support rights in the trade mark in question for the purposes of paragraph 4(a) of the Policy. See, First National Telecom Services Limited .v. Richard Gibbs,WIPO Case No. D2004-0363, the panel stated that “[t]he Complainant who can establish that he has a goodwill and reputation in a mark protectable by way of passing off action has ‘rights’ in the trade mark or service mark in question for the purposes of paragraph 4(a) of the Policy”.
In 1878 Close Brothers and Company was formed as a London partnership and Complainant and its predecessors have traded in finance and banking under the name CLOSE BROTHERS since then. In 1982 Complainant went public as a fully quoted company listed on the London Stock Exchange. In September 1995 Complainant announced twenty years of unbroken profit increases with profits before tax rising to GBP 33.96 million. In the year 2000 Complainant announced pre-tax profits of GBP 144 million. Complainant provided copies of numerous articles appearing in the press over the years since 1990 relating to Complainant’s financial services and banking activities. As a quoted stock on the London Stock Exchange Complainant is required to file quarterly and annual financial reports relating to its business activities which reports are reviewed and commented on by financial reporters and financial analysts in newspapers reporting on financial institutions. Complainant also filed copies of advertisements which Complainant placed in various publications in the United Kingdom including examples of its most recent advertising campaign relating to financial services. The Panel finds that Complainant has established that its trade mark CLOSE BROTHERS is distinctive of its financial and banking services in the United Kingdom.
The disputed domain name incorporates the entirety of Complainant’s CLOSE BROTHERS trade mark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety. See eBay, Inc. v. Progressive Life Awareness Network,WIPO Case No. D2001-0068 (finding that the domain name incorporated the complainant’s mark in its entirety and holding it to be confusingly similar to complainant’s EBAY mark); Auxilium Pharmaceuticals, Inc. v. Kumar Patel, NAF Claim No. 642141, (finding confusingly similar to complainant’s AUXILIUM name and mark); MasterCard International Incorporated v. ZJ,WIPO Case No. D2007-0687 (finding confusing similarity and ordering the transfer of the domain to complainant).
The disputed domain name is a combination of “close” and the accepted abbreviation “bros.” of “brothers”. Internet users understand the disputed domain name as being synonymous with CLOSE BROTHERS. For the reasons expressed in the preceding paragraph the Panel finds that the disputed domain name is confusingly similar to Complainant’s trade mark CLOSE BROTHERS.
The inclusion of the top level domain descriptor “.com” in the disputed domain names does not affect a finding of confusingly similarity. Previous WIPO UDRP administrative panels have repeatedly held that the specific top level of the domain name such as “.org,” “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr.,WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the disputed domain names comprised of Complainant’s trade mark CLOSE BROTHERS or Close “bros”, the abbreviation of “brothers”, and the top level domain descriptor “.com” are confusingly similar to Complainant’s trade mark. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trade mark.
Complainant’s position is that there is no evidence that Respondent has ever used the disputed domain names in connection with any bona fide offering of goods or services. Respondent is using the disputed domain names to host websites featuring “pay-per-click” links to third party websites, including links to pages where Internet users looking for legitimate financial services provided by Complainant are linked to the websites of other financial service providers.
Complainant’s evidence is that Respondent has never been commonly known by the disputed domain names and has no rights and/or legitimate interests in any trade mark or service mark associated with the disputed domain names. There is no available evidence suggesting Respondent has any connection to the industry associated with the sale of financial products or services.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights to and legitimate interests in the disputed domain names.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of proof shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name.
A respondent is entitled to avail itself of the benefits of paragraph 4(c) of the Policy to demonstrate its rights and interests in the disputed domain name in responding to the Complaint. Respondent did not avail itself of the opportunity to file evidence establishing rights or legitimate interests in the disputed domain name.
The use by Respondent of webpages associated with the disputed domain names which incorporate “pay-per-click” links to third party websites offering financial products and services is not a bona fide use of the disputed domain names.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain names recognized under the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain names have been registered and used in bad faith. C. 1. Registered in Bad Faith
For the reasons expressed in section 6.A. above the Panel found that Complainant had established common law rights in the trademark CLOSE BROTHERS prior to the adoption of the confusingly similar domain names and by Respondent on March 21, 1999 and November 21, 2001 respectively.
Respondent has a history of registering well known trade marks as domain names. It has been involved in at least four previous determinations under the Policy, namely: Scottish & Newcastle Plc v. Domain Admin ,WIPO Case No. D2002-1142; Associated British Foods v. Domain Admin,WIPO Case No. D2005-0283; Emirates v. Domain Admin ,WIPO Case No. D2007-1674 and Sir Terrence Conran, Conran Limited v. Domain Admin,WIPO Case No. D2008-0356. All of these cases resulted in the domain names being transferred to the respective complainants.
A search for CLOSE BROTHERS in Google shows at least four full pages of links related exclusively to Complainant and its financial products and services. It is difficult to conceive of any circumstances where Respondent was not aware of Complainant’s trade mark CLOSE BROTHERS prior to the registration of the disputed domain names.
The Panel finds on the basis of the evidence submitted that Respondent registered the disputed domain names in bad faith. C. 2. Domain Name Used in Bad Faith
Respondent has been found to be involved in cybersquatting by using domain names confusingly similar to well known trade marks of others in bad faith in several previous UDRP cases.
Respondent is using the disputed domain names in bad faith to host websites featuring “pay-per-click” links to third party websites featuring financial products and financial services of third parties. This common “pay-per-click” scheme is misleading to consumers who will naturally believe that the domain names point to a site endorsed or otherwise associated with Complainant’s trademark CLOSE BROTHERS and Complainant’s financial products and services.
The Panel finds that Respondent is using the confusingly similar disputed domain names and to attract Internet users to Respondent’s websites for commercial gain by creating a likelihood of confusion with Complainant’s trade mark CLOSE BROTHERS as to source, sponsorship, affiliation or endorsement of Respondent’s website constituting bad faith use under paragraph 4(b)(iv) 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 names, and be transferred to Complainant.
Ross Carson
Sole Panelist
Dated: October 29, 2010
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