The Complainant is MKP Capital Management LLC of New York, New York, United States of America (the “USA”) and MKP Capital Europe LLP of London, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by Allen & Overy LLP, UK.
The Respondent is Juri Morgan of Belgrade, Serbia/ Identity Protection Service Limited of Surrey, UK. 2. The Domain Names and Registrars
The disputed domain names and are registered with Webfusion Ltd. (the “First Registrar”) and GoD, LLC (the “Second Registrar”), respectively. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2013. On August 9, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 9, 2013, the Second Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 12 and 19, 2013 the First Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 20, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center also informed the Complainant about an inconsistency found in the Complaint on August 22, 2013. The Complainant filed an amendment to the Complaint on August 23, 2013.
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” 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 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2013.
The Center appointed Ross Wilson as the sole panelist in this matter on September 25, 2013. 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, comprising two entities, operates a diversified alternative investment management business with USD 7 billion in assets under management. The first entity, MKP Capital Management LLC, established in 1995, is a Registered Investment Adviser with the Securities and Exchange Commission (the “SEC”), is registered with the US Commodity Pool Operator and is a member of the US Commodity Futures Trading Commission. The second entity, MKP Capital Europe LLP, was established by the first entity, MKP Capital Management LLC, in 2010 in order to provide it with a base in the UK for its investment management business. It is registered with the UK Financial Services Authority.
Both companies do business under the MKP CAPITAL mark and trade though private investment vehicles under the MKP brand. The Complainant owns and uses the domain name to advertise their advisory business. The domain name was registered on September 4, 1997 and has been used continuously by the Complainant since at least January 24, 2001.
The disputed domain name was registered on June 5, 2013 and the disputed domain name was registered on May 30, 2013.
In June 2013, the UK’s regulatory authority for financial institutions, the Financial Conduct Authority (the “FCA”), informed the Complainant that an unauthorized firm using the disputed domain names had cloned the Complainant’s website. The FCA subsequently issued a public statement warning investors against dealing with the unauthorized firms of MKP Capital Europe and MKP Europe which were described as clones of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that it has acquired protectable rights in its longstanding and extensive use of the MKP, MKP CAPITAL and MKP CAPITAL EUROPE marks and that both disputed domain names are confusingly similar to its marks. The Complainant states that at no time were the disputed domain names used fairly or for any legitimate interest as they were registered with the intention of being used to defraud investors. The Complainant contends that the Respondent was aware of the Complainant’s rights when it registered the disputed domain names. According to the Complainant the sole reason for registering the disputed domain names was to deceive potential investors and convince them that the websites were part of the Complainant’s legitimate business in order to defraud them. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issue: Consolidation of Multiple Complainants and Respondents
The Complainant parties have requested that their complaints be considered by way of a single consolidated complaint and that the Respondent parties be consolidated into the single complaint. As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0) panels have articulated principles governing the question of whether or not a complaint filed under the UDRP by multiple complainants be brought against one or more respondents. The relevant criteria for a consolidation of complainants involve the complainants having a common grievance against the respondent or the respondent engaging in common conduct that has affected the complainants’ individual rights in a similar fashion and it would be equitable and procedurally efficient to permit consolidation. The consolidation criteria in the case of complaints brought against more than one respondent involve situations where the domain names or the websites are subject to common control and the consolidation would be fair and equitable to all parties.
The circumstances in this case involve two Complainant parties which are individual but related legal entities. The Complainant party based in the USA established the other in the UK to provide a business base for its investment management business. The two Complainant parties do business under the MKP Capital Mark and trade through private investment vehicles under the MKP brand. The Complainant considers the two entities form part of the same business and has shared goodwill in the MKP name giving them a common legal interest in the relevant rights that are affected by the Respondent’s conduct. Also they share a common grievance against the two Respondent parties each of whom cloned the Complainant’s business. Based on these circumstances, the Panel considers the common grievance requirement for consolidating the two Complaints as requested has been met.
With respect to the consolidation of the two Respondent parties it is difficult to directly establish common control by reference to the disputed domain names or the websites to which they resolve principally because the disputed domain name registration details appear to be fictitious and the websites were removed by the actions of the FCA. Nevertheless it is possible to infer that they were engaged in common conduct and that common control existed as both the disputed domain names were registered within seven days of each other and their websites were used to clone the Complainant’s businesses within days of registration (as evidenced by the FCA advising the Complainant of the cloning alert on June 10, 2013).
Accordingly, the Panel considers the criteria for the Complainant and the Respondent consolidations have been met, the consolidations to be fair and equitable to all parties and both consolidations contribute to procedural efficiency. The Panel will proceed to a decision on the merits of the Complaint regarding the disputed domain names. 7. Discussion and Findings
The burden is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
To establish whether or not the Complainant has unregistered rights in the marks MKP, MKP CAPITAL and MKP CAPITAL EUROPE, the Complainant has to show that the names used have become distinctive identifiers with the Complainant or its goods and services. The Complainant provided evidence that the website associated with its domain name is used to advertise its advisory business. The website makes references to it having a history of over 15 years, that it was registered with the SEC in 2000 and that its London office has been registered with the FCA since 2011. In addition, the online media evidence provided indicates that the Complainant is known as MKP in the financial services sector with one media source confirming that the MKP company was founded in 1995. An article provided by the Complainant dated January 7, 2013 refers to the Complainant selling a minor stake in its operations and stated that the Complainant managed about USD 6 billion in global macro, credit and fixed-income hedge fund strategies. Overall, the third party evidence indicates that the Complainant is known as MKP Capital Management and is often referred to as either MKP or MKP Capital.
The Panel notes that the distinctive part of the Complainant’s marks MKP is not descriptive or a dictionary word. In conclusion, the Panel finds that there is sufficient evidence showing that the Complainant has unregistered rights in its marks.
The disputed domain names and incorporate the Complainant’s MKP mark in its entirety together with the suffixes “capeurope” and “europe” and the gTLD extension “.com”. It has been held in many previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).
The key difference between the Complainant’s MKP trademark and the disputed domain names is the addition of the elements “capeurope” and “europe”. Both elements link to the Complainant’s MKP CAPITAL and MKP CAPITAL EUROPE marks and are both descriptive on the business sector in which it operates and its intention to serve the European market. The “cap” element is a common abbreviation of the generic business sector word “capital” and also reflects the sector in which the Complainant operates. As expressed in Guccio Gucci S.p.A. v. Bravia Stoli,WIPO Case No. D2009-1170 connections to the Complainant’s business sector increase the likelihood of confusion to Internet users. The “europe” element merely acts as a geographical indicator which does not serve to differentiate the disputed domain names from the Complainant’s marks. In combination these elements are not sufficient to prevent the finding of confusing similarity between the disputed domain names and the Complainant’s mark.
The Panel finds that the Complainant’s MKP mark is readily recognisable within the disputed domain names. Therefore, the Complainant has proven under the circumstances that the disputed domain names are confusingly similar to the mark in which it has demonstrable rights and in doing so has satisfied the first element of the Policy. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, rights to or legitimate interests in a domain name can be demonstrated if a respondent:
- before receiving any notice of the dispute, was using the domain name in connection with a bona fide offering of goods or services; or
- has been commonly known by the domain name; or
- is making legitimate noncommercial or fair use of the domain name, without intention for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent has any rights or legitimate interests in the disputed domain names. The Respondent has chosen to use domain names confusingly similar to the Complainant’s mark in its entirety without authorization from the Complainant. Based on the evidence provided by the Complainant through the intervention of the FCA the disputed domain names were intended to divert Internet user traffic to the Respondent’s websites for fraudulent purposes. No rights or legitimate interests derive from such use of the disputed domain names incorporating the Complainant’s mark.
The Panel considers the Respondent lacks rights or legitimate interests. See Areva v. Domains by Proxy, Inc./ Sheng Xiang,WIPO Case No. D2011-0061 where the panel concluded that when the respondent registered the disputed domain name, it must have known that it was a trademark of the complainant and deliberately registered the disputed domain name precisely because it would be recognised as such.
Despite the opportunity provided through this administrative proceeding, the Respondent has chosen not to rebut the Complainant’s prima facie case or assert any rights or legitimate interests in the disputed domain names.
Based on the above, the Panel considers the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain names as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the disputed domain names in bad faith may be evidenced.
Paragraph 4(b) of the Policy sets out what is to be considered as evidence of the registration and use of a domain name in bad faith including “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The Complainant contends that the disputed domain names were registered and were being used in bad faith. The Complainant believes the Respondent choose the disputed domain names to create an impression of association with the Complainant that would attract Internet users for commercial gain. The Complainant’s evidence from the FCA reinforces its concerns about the fraudulent intentions of the Respondent.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain names in bad faith. In the Panel’s view, the Respondent’s registration of the disputed domain names represents a deliberate disregard of the Complainant’s rights. Clearly the Respondent knew of the Complainant’s mark at the time of registration because the Complainant’s mark is used in its entirety in the disputed domain names. As stated in Oakley, Inc. v. Joel Wong/BlueH- INC,WIPO Case No. D2010-0100 “It is therefore inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s rights […]”. Also, as expressed in Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641, where the selection in that case of the domain names is so obviously connected to the complainant’s trademark, their very use by someone with no connection with the company suggests opportunistic bad faith.
The Panel finds it most likely that the disputed domain names were registered and used by the Respondent in an intentional attempt to benefit from the goodwill of the Complainant’s mark for financial gain.
Noting that the Respondent has not rebutted any of the Complainant’s contentions, the apparent false contact details registered by the Respondent and the fact that the Respondent has no rights or legitimate interests in the disputed domain names, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. Therefore the Panel finds that the Complainant has demonstrated that the disputed domain names were registered and were being used in bad faith. 8. 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 and be transferred to the Complainant.
Ross Wilson
Sole Panelist
Date: October 9, 2013
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