Complainant is Allianz Asset Management of America L.P. of Newport Beach, California, United States of America (“USA”), represented by Dechert LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Michail Alexandrow of Milan, Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with Ascio Technologies Inc. (the“Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2013. On October 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2013, the Registrar 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 November 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 4, 2013.
The Center appointed Ross Carson as the sole panelist in this matter on December 12, 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
Complainant is an independent legal entity existing under the laws of Delaware, USA. Complainant is the owner of goodwill and reputation and registered trademark rights in the name and registered trademark PIMCO internationally.
Through continued use of the trademark and trade name PIMCO by Complainant’s group of companies since 1971, Complainant has established significant goodwill and reputation in the PIMCO trademark in the USA, the European Union and worldwide, particularly in relation to the provision of investment management and related services. Complainant’s companies have operated in Europe since 1997 and now have offices in 13 cities around the world (Milan, London, Munich, Amsterdam, Hong Kong, New York, Newport Beach, Rio de Janeiro, Singapore, Sydney, Tokyo, Toronto and Zurich) together with 2380 employees. As of June 30, 2013, Complainant’s group of companies had USD 1.97 trillion in assets under management, USD 1.61 trillion in third party client assets and EUR 482 billion in assets under management by Complainant’s European entities.
Complainant is the registered owner of numerous trademark registrations for the trademark PIMCO in many countries in America, Europe and elsewhere in the world. Among the registered trademarks are:
- Community Trademark Registration No. 797548 for the trademark PIMCO registered August 18, 2000 for goods and services in International Classes (“IC”) 16, 35 and 36.
- USA Trademark Registration No. 1459510 for the trademark PIMCO registered September 29, 1987 for services in IC 36: Investment counseling [Investing capital and managing investments for pension funds and others]. First use: December 31, 1971. First use in commerce: December 31, 1971.
- USA Trademark Registration No. 3751298 for the trademark PIMCO registered February 23, 2010 for services in IC 36: Investment counseling [Investing capital and managing investments for pension funds and others]. First use: December 31, 1971. First use in commerce: December 31, 1971.
The disputed domain name was registered by Respondent on September 29, 2013. 5. Parties’ Contentions A. Complainant A.1 Identical or Confusingly Similar
Complainant submits that Complainant’s group of companies has been carrying business of investment counseling in association with the trade name and trademark PIMCO in the USA since 1971 and subsequently in the Americas, Europe, Asia and elsewhere. Complainant is the owner of numerous trademark registrations in many parts of the world for the trademark PIMCO as noted in Section 4 above. Through extensive use and business operations in many large cities on different continents, the trademark PIMCO has become well known in distinguishing the investment services provided by Complainant’s group of companies. Complainant’s group of companies are responsible for advising or investing substantial amounts of money on behalf of their clients as set out in Section 4 immediately above.
Complainant submits that the disputed domain name is identical or confusingly similar to the trademark PIMCO in which Complainant has extensive rights. The disputed domain name is comprised of two words being “pimco” and “invest”. The only word which has any real trademark significance is “pimco” which is identical to Complainant’s PIMCO trademark. The word “invest” is entirely descriptive and non-distinctive from a trade mark perspective. The word “invest” would be treated by the general public as perfectly applicable to Complainant’s business and would be expected to be used in relation to Complainant’s business since the business is that of an investment manager.
Complainant further submits that It is well-established by previous UDRP decisions that a disputed domain name incorporating a distinctive trademark (such as the trademark PIMCO in this case) in its entirety creates sufficient similarity between the mark and the disputed domain name as to render it confusingly similar (see, e.g., Minnesota Mining & Manufacturing v. JonLR,WIPO Case No. D2001-0428; and Eauto, LLC v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises Inc.,WIPO Case No. D2000-0047). The addition of the generic Top-Level Domain “.com” is irrelevant for the purpose of comparing the disputed domain name with Complainant‘s trademark. In this regard, Complainant relies on the case Laerdal Medical Corporation v. Lock’s Computer Supply,WIPO Case No. D2002-0063. It is established case law that the inclusion of a hyphen is also irrelevant as it is not a distinguishing feature. See, for example, InfoS, Inc. v. Tenenbaum Ofer,WIPO Case No. D2000-0075.
Complainant submits in conclusion that the disputed domain name is identical or confusingly similar to Complainant’s PIMCO trademark. A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that the disputed domain name was registered in September 2013, 42 years after Complainant’s business was founded and 16 years after its business launched in Europe. Due to the reputation of Complainant’s business in the world of financial services, in particular investment management, it is reasonable to assume that Respondent must have known of Complainant’s business at the time the disputed domain name was registered. This is particularly so given that Complainant’s business has an office in Milan where Respondent is located. Indeed, Complainant cannot see how Respondent can legitimately deny knowledge of Complainant’s business when it has listed Complainant’s business’ Milan address as its own address when registering the disputed domain name (compare the WhoIs print out at Annex A with the address of Complainant’s Milan business office at “”).
Complainant further submits that Respondent chose the disputed domain name because it knew that it included Complainant’s well known PIMCO trademark associated with the Complainant and its business and as a result would draw traffic to its website, particularly when Respondent uses the word “invest” in conjunction with Complainant’s trademark, being a direct reference to the field in which Complainant’s business operates and the services which the business provides.
Complainant further submits that Respondent is unable to rely on any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name.
Complainant submits that the disputed domain name presently hosts a parked website which states that “the site is under construction (“Seite im Aufbau”)”. However, until Respondent was notified of the dispute, the website at the disputed domain name, the original website, provided information about investment solutions offered to customers in the EMEA region under Complainant’s trademark. Those solutions would notionally compete with Complainant’s business‘ services. The original website also included, as its contact details, the contact details of Complainant’s business’ Milan office. The change to the parked version of the website was made following a cease and desist letter sent by Complainant’s counsel to Respondent on behalf of the Complainant. Complainant concludes that Respondent’s use of the disputed domain name (both in its original form and its subsequent parked form) cannot constitute use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. In this respect, Complainant relies on the case of Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946, where it was held that “use of the Complainant’s trademark to offer for sale or to direct customers to the products of the Complainant‘s competitors is objectionable, and therefore not bona fide, as a misleading use of a trademark, as a form of unfair competition, and also for reasons of consumer protection, as it amounts to a form of ‘bait and switch‘ selling”. In such a scenario, Complainant also relies on the case of Abbott Laboratories v. United Worldwide Express Co., Ltd.,WIPO Case No. D2004-0088, where it was held that “the Respondent‘s registration and use of the Domain Name without Complainant’s permission for a website selling both Complainant’s products and directly competing products does not constitute a bona fide offering of goods”and where it expressly referred to the case of Compaq Information Technologies Group, L.P. v. Express Technology, Inc., NAF Claim No. 00104186, where it was held that the holding use of the domain name to sell competing products does not constitute a bona fide offering of goods and services.
Complainant further relies on the decision in Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Ulexis a/k/a Lawfirm, NAF Claim No. 0097684, where it was held that there was no legitimate interest when respondent used the disputed domain name to offer similar / related services and to divert potential customers to its competing website.
Complainant further submits that the disputed domain name has been used in connection with a webpage that imitates Complainant’s real website, particularly given that it used and referred to Complainant’s business’ Milan address. Such use cannot be understood to be legitimate (see Google Inc. v. Billa Rajinikar Reddy, WIPO Case No. D2009-1390). The parked version of the website which is presently available at the disputed domain name cannot constitute bona fide use of the disputed domain name in connection with goods or services as no goods or services are offered.
Complainant submits that there is no obvious reason why the disputed domain name has been selected by Respondent for the website, leading to the suggestion that it was selected to trade off the reputation of the Complainant’s PIMCO trademark. In this regard, Complainant relies on the UDRP decision in Madonna Ciccone v. Dan Parisi,WIPO Case No. D2000-0847 in which the panel held that such a use was not bona fide.
Complainant further submits that Respondent also cannot argue, under paragraph 4(c)(iii) of the Policy that it is making legitimate noncommercial or fair use of the disputed domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue. The disputed domain name is presently parked and no use is being made of it by Respondent. However, given that Respondent has registered a domain name comprised of Complainant’s PIMCO trademark and a non distinctive and descriptive suffix with which Complainant’s business and Complainant is most widely associated, under no circumstances would any use of the disputed domain name by Respondent constitute legitimate or fair use of the disputed domain name unless it was authorized by Complainant. Any use of the disputed domain name, particularly in light of Complainant’s prior use of its PIMCO trademark, would take unfair advantage of Complainant’s rights in its trademark and misleadingly divert users to Respondent’s website instead of Complainant’s business’ website by use of the Complainant‘s trademark. Such use is neither a legitimate nor a fair use of the disputed domain name and, in this regard, the Complainant relies on the decision in Microsoft Corporation v. Superkay Worldwide, Inc.,WIPO Case No. D2004-0071.
Complainant submits that it has not licensed or otherwise permitted or authorized Respondent to use its PIMCO trademark or to apply for a domain name incorporating its trademark. Respondent’s name does not include Complainant’s trademark or anything similar and it is not commonly known by Complainant’s trademark.
It is therefore submitted that Respondent has no rights or legitimate interests in respect of the disputed domain name. A.3 Registration in Bad Faith
Complainant submits that the disputed domain name was registered in September 2013, 42 years after Complainant’s business was founded and 16 years after the business launched in Europe. Due to the reputation of Complainant’s business in the world of financial services, in particular investment management, it is reasonable to assume that Respondent must have known of Complainant’s business at the time the disputed domain name was registered. This is particularly so given that Complainant’s business has an office in Milan where Respondent is located. Indeed, Complainant’s cannot see how Respondent can legitimately deny knowledge of Complainant’s business when it has listed Complainant’s Milan business address as its own address when registering the disputed domain name (compare the WhoIs print out at Annex A with the address of Complainant’s business’ Milan office at “/en/ourfirm/pages/contactus.aspx?location=Milan”.)
Complainant further submits that in this case the only feasible possibility seems to be that Respondent registered the disputed domain name in order to unfairly benefit from Complainant’s rights in its PIMCO trademark. In this regard, Complainant refers to the UDRP decision in Comerica Inc. v. Horoshiy, Inc.,WIPO Case No. D2004-0615 where the panel stated: “In particular, Respondent has registered a series of domain names that are rooted in a name that is neither generic nor identified with an idea, practice, or activity that is distinguishable from the business and custom of Complainant. Comerica is not a word that is in common use. Nor is it identified with a legitimate business or activity apart from the business of Complainant. By adding such words as “banking”, “retire” and “web” to “Comerica” in the disputed domain names, the only reasonable conclusion to draw is that Respondent has deliberately sought to appropriate Complainant’s name with a view to using that name in some future venture, whether by selling the disputed domain names to others, by purporting to provide a service related to Complainant’s business, or by engaging in some other unlawful design. See, e.g., Panavision Int ‘1 L.P. v. Toeppen, 945 F Supp 1296 (C.D. Cal. 1996). “This reasoning is directly applicable to this case, subject to the switching of the word “invest” for “banking” and “retire”.
Complainant further submits that Respondent’s bad faith is exacerbated by the fact that Complainant’s trademark is well known and it again refer to the fact that Respondent registered the disputed domain name using the address of Complainant’s Milan business office. Bad faith exists where there can be no question that Respondent knew or should have known about Complainant’s trade mark rights before registering the disputed domain name. See,Yahoo! Inc v. Yahoo-Asian Company Limited,WIPO Case No. .D2000-0051 and Nike, Inc v. B.B. de Boer,WIPO Case No. D2000-1397. Given the use of and reference to Complainant’s Milan business office by Respondent, there is no doubt that Respondent was aware of Complainant’s business when it registered the disputed domain name. A.4 Use in Bad Faith
Complainant submits that contrary to paragraph 4(b)(iii) of the Policy, Respondent has registered the disputed domain name primarily for the purpose of disrupting the Complainant’s business. Respondent must have been aware of the reputation of Complainant’s PIMCO trademark when it registered the disputed domain name. Respondent’s use of Complainant’s trademark in the disputed domain name and also on its website is intended to lead consumers to believe that they have reached Complainant’s business’ website and so divert internet traffic from Complainant’s business thereby interfering with Complainant’s business. Respondent could not have chosen or subsequently used the word “pimco” in the disputed domain name for any reason other than to trade on Complainants rights in that name and to confuse internet users and by that means to attract them to a website with a name which is the same as that of the trademark with the intention to profit from the reputation and goodwill in the trademark. That is, in itself, evidence of bad faith, both generally and specifically within the meaning of paragraph 4(b)(iii) of the Policy. In this regard, it refers to and relies on the case of Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052, where the panel stated that “Respondent is using the domain name to run a business in open competition with the Complainant. Such a business is lawful in itself but it is contrary to the Policy to conduct it by using domain names that have been registered primarily to disrupt the rival’s business. It is clear that the Complainant wants customers to come directly to it and it is equally clear that the Respondent is trying by means of the domain names to divert or siphon off as many of them as it can and to get the business for itself. That is clearly disrupting the business of a competitor, for it is interrupting the progress of that business.”
Complainant further submits that contrary to paragraph 4(b)(iv) of the Policy, Respondent operated the disputed domain name intentionally to attract for commercial gain Internet users to its websites or other on-line locations by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its websites of a product or service on its websites. Given that Complainant’s business is internationally renowned in investment management and that Complainant has significant goodwill and reputation in the PIMCO trademark, it is inevitable that Internet users will be confused into believing that any website at the disputed domain name is registered to, operated or authorized by Complainant. This would have been especially so when Respondent operated the original website, notionally in competition with Complainant’s business. In this regard Complainant relies on the UDRP decision in Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453, where it was held that “The Panel concludes that knowledge of the mark at the time of registration followed by use in commerce without a legitimate interest and likely to create confusion (and thus allow the Respondent to free-ride on the Complainant’s goodwill), is the proper test and that the Respondent has, in fact, “intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark”.
Complainant submits that the disputed domain name has also been used in a way that is likely to dilute the reputation of Complainant’s trademark and such is evidence of bad faith. The mere registration alone of the disputed domain name by Respondent and not Complainant has meant that the trademark is not as unique as it was prior to the registration of the disputed domain name, particularly in relation to investment management. This lack of uniqueness and dilution means that Complainant’s trademark is not acting as a guarantee of origin that the services provided in relation to the trademark are provided uniquely by or with the endorsement of Complainant and is thereby adding to the dilution of the reputation in the trademark.
Complainant further submits that Respondent is currently holding the disputed domain name passively. UDRP panels have consistently held that passive holding of domain names can be considered bad faith registration and use of the domain name (in particular, see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Polaroid Corporation v. Jay Strommen,WIPO Case No. D2005-1005). Indeed, in the Telstra Corporation Limited v. Nuclear Marshmallows, Supra, there were four particular circumstances of the case which led the panel to its conclusion. Three of those are present in this case, namely:
i. Complainant’s trademark have a strong reputation and are widely known; and
ii. Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name; and
iii. Respondent has taken active steps to conceal its true identity.
As a result, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by Respondent that would not be illegitimate, such as by passing off, an infringement of consumer protection legislation or an infringement of Complainant’s rights under trademark law and as such Complainant submits this equates to further evidence that the disputed domain name was registered, and is being used, in bad faith. Complainant also refers to Ferrari S.p.A. v. American Entertainment Group Inc,WIPO Case No. D2004-0673 because, just as in that case, in this case the disputed domain name has been registered to exploit the name of the trademark in a bid to attract Internet users to the website at the disputed domain name. Such continuous exploitation of Complainant’s PIMCO trademark, albeit via intermittent passive holding, constitutes bad faith use.
Complainant further submits that the disputed domain name was registered more than 42 years after Complainant’s business was founded and started trading under the trademark PIMCO and Complainant has substantial goodwill and reputation in its trademark. Accordingly, in the absence of any right or legitimate interest in the disputed domain name, the registration of the disputed domain name by Respondent and its subsequent use of it, cannot have been in good faith (see General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087 and Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568). 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 Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed 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 disputed domain name; and
(iii) the disputed 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. See 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 trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the registered owner of numerous trademark registrations for the trademark PIMCO in many countries in America, Europe and elsewhere in the world. Among the registered trademarks are:
- Community Trademark Registration No. 797548 PIMCO, registered on August 18, 2000, for goods and services in IC 16, 35 and 36.
- USA Trademark Registration No. 1459510 PIMCO, registered on September 29, 1987, for services in IC 36: Investment counseling [Investing capital and managing investments for pension funds and others]. First use: December 31, 1971. First use in commerce: December 31, 1971.
- USA Trademark Registration No. 3751298 PIMCO, registered on February 23, 2010, for services in IC 36: Investment counseling [Investing capital and managing investments for pension funds and others]. First use: December 31, 1971. First use in commerce: December 31, 1971.
The disputed domain name incorporates Complainant’s trademark PIMCO in its entirety, adding only a hyphen and the generic term “invest”. It is established case law that the inclusion of a hyphen is irrelevant in a determination of confusing similarity as it is not a distinguishing feature. See for example, InfoS, Inc. v. Tenenbaum Ofer,WIPO Case No. D2000-0075. The generic term “invest” is clearly related to the investment services provided by Complainant in association with its PIMCO trademark. Many UDRP panels have found that domain names are confusingly similar to trademarks when the disputed domain name incorporates the 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). See also, Minnesota Mining & Manufacturing v JonLR,WIPO Case No. D2001-0428; and Eauto, LLC v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises Inc.,WIPO Case No. D2000-0047.
The inclusion of the gTLD “.com” in the disputed domain name does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific gTLDs such as “.org”, “.net” or “.com” do 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 S. 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). See also, Laerdal Medical Corporation v. Lock’s Computer Supply,WIPO Case No. D2002-0063.
Therefore, the Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant’s trademark PIMCO. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainants must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademark PIMCO.
Complainant has been using its PIMCO trademark since at least 1971 to promote its investment services. Respondent appears to have registered or acquired the disputed domain names over thirty years later when Complainant’s PIMCO trademark was well-known in the Americas, Europe and elsewhere throughout the world. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use a well-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138.
There is no evidence in the record that Respondent has ever been known by or used the trademark PIMCO in association with its own investment services. Respondent originally used the disputed domain name in association with a website bearing the heading “PIMCO-INVEST, Your Global Investment”. “PIMCO provides investment solutions and support of excellence to customers around the world.” On the original website, Respondent offered and advertised real estate, solar PV, investment and gold & diamonds. The contact addresses were comprised of the e-mail addresses of Respondent and others at “PIMCO-”. The business address provided by Respondent on its original webpage was identical to Complainant’s business address in Milan. Respondent’s use the PIMCO trademark throughout the original website combined with the use of Complainant’s business address in Milan supports the contention that Respondent chose the disputed domain name only because it was seeking to create an association with Complainant. Use of the disputed domain name in relation to alleged investment services offered by Respondent is not a legitimate use of the disputed domain name. UDRP panels have stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark]”. See, Drexel University v. David Brouda,WIPO Case No. D2001-0067.
Shortly after Respondent was forwarded a cease and desist letter by counsel for Complainant alleging that the disputed domain name and content of the webpage associated with the disputed domain name, Respondent removed the original webpages and substituted an under construction webpage. Presently, Respondent continues to use the website for the under construction webpage stating: “the site is under construction (“Seite im Aufbau”)”. Respondent’s use of the disputed domain name (both in its original form and its subsequent parked form) cannot constitute use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. See, Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946, where it was held that “use of the Complainant’s trademark to offer for sale or to direct customers to the products of the Complainant’s competitors is objectionable, and therefore not bona fide, as a misleading use of a trademark, as a form of unfair competition, and also for reasons of consumer protection, as it amounts to a form of “bait and switch” selling”.
Respondent also cannot argue, under paragraph 4(c)(iii) of the Policy that it is making legitimate noncommercial or fair use of the disputed domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. The disputed domain name is presently parked and no use is being made of it by Respondent. However, given that Respondent has registered a domain name comprised of the Complainant’s PIMCO trademark and a non-distinctive and descriptive suffix “invest” with which Complainant’s business and Complainant is most widely associated, under no circumstances would any use of the disputed domain name by Respondent constitute legitimate or fair use of the domain name unless it was authorized by Complainant. Any use of the disputed domain name, particularly in light of Complainant’s prior use of its PIMCO trademark, would take unfair advantage of the Complainant’s rights in its trademark and misleadingly divert users to Respondent’s website instead of Complainant’s business website by use of the Complainant’s trademark. Such use is neither a legitimate nor a fair use of the disputed domain name. See, Microsoft Corporation v. Superkay Worldwide,Inc.,WIPO Case No. D2004-0071.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a 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 a domain name or domain names. Once this showing is made, the evidentiary burden shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon,WIPO Case No. D2004-0487 where the panel stated:“A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.” In this case, Respondent was given the opportunity by way of Response to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
Under the circumstances, 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 name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and is being used in bad faith. C.1. Registered in Bad Faith
Through continued use of the trademark and trade name PIMCO by Complainant’s group of companies since 1971 Complainant has established significant goodwill and reputation in the PIMCO trademark in the USA, the European Union and worldwide, particularly in relation to the provision of investment management and related services. Complainant’s companies have operated in Europe since 1997 and now have offices in 13 cities around the world (Milan, London, Munich, Amsterdam, Hong Kong, New York, Newport Beach, Rio de Janeiro, Singapore, Sydney, Tokyo, Toronto and Zurich) together with 2,380 employees. As of June 30, 2013, Complainant’s group of companies had USD 1.97 trillion in assets under management, EUR 1.61 trillion in third party client assets and EUR 482 billion in assets under management by Complainant’s European entities.
The disputed domain name was registered in September 2013, 42 years after Complainant’s business was founded and 16 years after Complainant’s business was launched in Europe. The disputed domain name is comprised of Complainant’s created trademark PIMCO and the descriptive word “invest” which is closely associated with Complainant’s business of investment counselling. Due to the reputation of Complainant’s business in the world of investment services, in particular investment management, it is reasonable to infer that Respondent must have known of Complainant’s business at the time the disputed domain name was registered. This is particularly so given that Complainant’s business has an office in Milan and the webpages associated with the disputed domain name shows that Respondent misleadingly gives the address of Complainant’s business office in Milan as the business address of Respondent.
The Panel finds on a balance of probabilities that Respondent registered the disputed domain name in bad faith. C.2. Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, inter alia, the following circumstances shall be evidence of the use and registration of a domain name in bad faith: by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 its website or location or of a product or service on its website or location.
The disputed domain name which is confusingly similar to Complainant’s PIMCO trademark originally resolved to a webpage bearing the heading “PIMCO-INVEST, Your Global Investment”. “PIMCO provides investment solutions and support of excellence to customers around the world.” On this original website, Respondent offered and advertised real estate, solar PV, investment and gold and diamonds. Personal e-mail contact addresses were comprised of the name of Respondent or others at “PIMCO-”. The business address provided by Respondent on its original webpage was identical to Complainant’s business address in Milan. Respondent’s use the PIMCO trademark throughout the original website combined with the use of Complainant’s business address in Milan supports the contention that Respondent chose the disputed domain name only because it was seeking to create an association with Complainant and is attempting to attract consumers for commercial gain. Respondent has done nothing to identify itself as being independent from Complainant. The Panel infers that Respondent is trying to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s well-known PIMCO trademark as Internet users looking for official information about PIMCO goods or services will be misled to Respondent’s website. See, Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453, where it was held that “The Panel concludes that knowledge of the mark at the time of registration followed by use in commerce without a legitimate interest and likely to create confusion (and thus allow the Respondent to free-ride on the Complainant’s goodwill), is the proper test and that the Respondent has, in fact, "intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark”.
The Panel thus finds that the original webpage which was removed after receipt of a cease and desist letter from counsel for Complainant had been used in bad faith for commercial gain by creating a likelihood of confusion with Complainant’s well-known PIMCO trademark before removal.
After receipt of the cease and desist letter, the website “www.” resolved to a webpage stating that the website was under construction, which is the current status of the website.
Previous UDRP panels have found that non-use of domain names which include well-known trademarks, which if used by a respondent would confuse Internet users into concluding that the website associated with the domain name belonged to the complainant constituted bad faith use under paragraph 4(a)(iii) of the Policy.
It is the prevailing view of UDRP panels that paragraph 4(b) of the Policy is not limitative, but that there is a general notion of use in bad faith. See, Atlantic Recording Corporation v. Paelle International,WIPO Case No. D2001-0065, where the panel found: “Since the hypotheses identified in paragraph 4(b) are not limitative, it is possible to say that Respondent’s inactivity or passive holding of the domain name, may prove that the domain name has been registered and is being used in bad faith.” See also, Telstra Corporation Limited v. Nuclear Marshmallows, Supra, where the panel has set out convincingly that the provisions in paragraph 4(b) of the Policy support the assumption that passive use can also be of bad faith. In the Telstra case the panel stated: “[…] inaction is within the concept. That is to say, it is possible in certain circumstances for inactivity by the Respondent to amount to the domain name being used in bad faith […] The question that then arises is what circumstances of the inaction (passive holding) […] can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case.” In the Telstra case, there were four particular circumstances of the case which led the panel to its conclusion. Three of those are present in this case, namely:
i. Complainant’s trademarks have a strong reputation and are widely known; and
ii. Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name; and
III. Respondent has taken active steps to conceal its true identity;
Respondent registered and initially used the disputed domain name in association with a webpage containing references to Complainant’s trademark and providing the same address as the address of Complainant’s business as Respondent’s address to cause confusion and attract Internet users to Respondent’s website for profit in bad faith. The Panel cannot conceive of any use of the currently passively held disputed domain name which would not mislead Internet users seeking Complainant’s goods to the a website associated with the disputed domain name should it be reactivated.
The Panel finds on a balance of probabilities that the currently passively held disputed domain name was registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy. 7. 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 name be transferred to Complainant.
Ross Carson
Sole Panelist
Date: December 22, 2013
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