The Complainant is F&C Management Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Keltie LLP, UK.
The Respondent is Thames River of London, UK. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2014. On February 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 12, 2014, the Registrar 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 February 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for service of a Response was March 16, 2014. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on March 17, 2014.
The Center appointed Steven A. Maier as the sole panelist in this matter on March 20, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a UK registered company. It is a provider of financial services.
The Complainant, through its subsidiary companies, is the ultimate owner of the following trademark registrations:
(1) Community Trade Mark number 003831518 for THAMES RIVER, filed on May 12, 2004 and registered in International Class 36 for a range of financial services.
(2) Community Trade Mark number 003851623 for a figurative “boat” device including the words THAMES RIVER CAPITAL, filed on May 25, 2005 and registered in International Class 36 for a range of financial services.
(3) Community Trade Mark number 009188558 for a figurative “boat” device including the words THAMES RIVER, filed on June 18, 2010 and registered in International Class 36 for a range of financial services.
The Complainant is also the parent company of a UK registered company named Thames River Capital Group Limited.
The Respondent registered the Domain Name on December 28, 2013.
At the date of the Center’s formal compliance review, February 24, 2014, the Domain Name resolved to a website at “www.”, which purported to be a website of Thames River Capital Group Limited. The website included in its header both the name of that company and a “boat” device similar to that of the Complainant, including the words “Thames River”. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant relies on its trademark registrations referred to above.
The Complainant states that it is an international company which specializes in investment and asset management and has operated since 1868. It acquired Thames River Capital Group Limited and its subsidiary companies on September 10, 2010. It submits evidence that Thames River Capital Group Limited traded under the marks THAMES RIVER and THAMES RIVER CAPITAL and the “boat” device since at least March 2001 and that it registered the domain name in 1998.
The Complainant submits that the Domain Name incorporates the whole of its trademark THAMES RIVER and is identical or highly similar to both that mark and its mark THAMES RIVER CAPITAL.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii) of the Policy).
The Complainant states that it has no association with the Respondent and has never authorized the Respondent to use its trademark THAMES RIVER.
The Complainant submits that it has used the name and mark THAMES RIVER online since at least 1998 and that there is no legitimate reason for the Respondent to have chosen that name and to have used it in conjunction with the Complainant’s “boat” device.
The Complainant further relies on the matters set out below in connection with the issue of bad faith.
The Complainant submits that the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainant submits that the Respondent is using the Domain Name to pass itself off as the Complainant and for the purposes of a fraudulent venture. It points out the fact that the Respondent’s website purports to be that of the Complainant’s subsidiary, Thames River Capital Group Limited, and submits that it uses that company’s prior business address as well as the Complainant’s trademarks THAMES RIVER CAPITAL and the “boat” device.
The Complainant states that it first became aware of the Respondent’s website in January 2014 when it received a complaint from a customer who had arranged a loan with the Respondent believing it to be the Complainant. The Complainant exhibits documentation relating to a purported $30m facility which is printed on stationery bearing the name Thames River Capital Group Limited together with the Complainant’s “boat device”.
The Complaint submits that its activities under the name Thames River Capital were subsumed within the main F&C group following its acquisition of that business and that the Respondent is fraudulently holding itself out as the Thames River Capital business to Internet users who may be unaware of that change.
The Complainant states that it has become aware of at least three other instances of customer confusion since January 2014 as a result of the Respondent’s website.
The Complainant states that it attempted to contact the Respondent at the email address appearing on the WhoIs search of the Domain Name and the postal address shown on the Respondent’s website, but both communications were returned undelivered.
The Complainant requests a transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish that all three of the above elements are present. A. Identical or Confusingly Similar
The Complainant has established that it is the proprietor of a Community Trade Mark registration for the mark THAMES RIVER. Ignoring the space between the words, the Domain Name is identical to the Complainant’s mark but for the addition of a letter “s” and the generic Top-Level-Domain (“gTLD”) “.com”. In the view of the Panel the addition of the letter “s” does not serve to distinguish the Domain Name from the Complainant’s trademark. Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant submits that the Respondent has failed to demonstrate that it has any rights or legitimate interests in respect of the Domain name, and in the view of the Panel, has made out a prima facie case in that regard. Paragraph 4(c) of the Policy sets out a number of matters upon which the Respondent may rely to demonstrate that it has rights or legitimate interests in respect of the Domain Name. While it was open to the Respondent to reply to the Complainant’s case, no Response has been received from the Respondent in this proceeding and there is no other evidence available to the Panel to suggest that the Respondent has any rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Complainant has submitted credible evidence that the Respondent is using the Domain Name for the purposes of a website which impersonates the Complainant’s subsidiary company and which may be implicated in fraudulent financial activities. In particular, the Complainant has produced evidence that the Respondent’s website falsely presents itself as that of the Complainant’s subsidiary, Thames River Capital Group Limited, using not only the name of that company but also its prior business address and the Complainant’s THAMES RIVER mark including its distinctive “boat” device. The Respondent has not disputed the Complainant’s claims and the Panel finds in the circumstances that the Respondent has used the Domain Name intentionally to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website (paragraph 4(b)(iv) of the Policy). Accordingly, the Panel concludes that the Domain Name has been registered and is being used in bad faith. 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 Domain Name, , be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: April 1, 2014
Full & Egal Universal Law Academy