The Complainant is Ik Investment Partners Norden AB of Stockholm, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.
The Respondent is Paul Chibros of Seattle, Washington, United States of America ("US"). 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 21, 2014. On March 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 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 March 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 22, 2014.
The Center appointed Richard Tan as the sole panelist in this matter on April 29, 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 company active in the financial service business, incorporated in Sweden, with offices in Stockholm, Hamburg, London and Paris.
The Complainant was established in 1989 and its business has grown steadily since then and has today over EUR 7 billion in found commitments. The Complainant owns a website with the domain name at which information on its business can be found.
The Complainant owns registered Community Trademark No. 006931001 and Community Trademark No. 006930994 for the mark IK INVESTMENT PARTNERS in Nice class 36 for financial affairs, financial analysis and advice, fund investments and private equity investments, with application dates on May 8, 2008.
The Respondent registered the disputed domain name on November 23, 2013. The disputed domain name does not resolve to any active website. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademark IK INVESTMENT PARTNERS in which it has rights by virtue of its prior registration of the marks it owns, as mentioned above.
The main difference between the disputed domain name and the Complainant's trademark is the omission of the letters "ment'" in the word "investment" in the Complainant's trademark. The Complainant contends that the word "invesf" is also the verb form of the noun "investment" and the change to a verb in the disputed domain name from the noun form in the Complainant's trademark is not sufficient to distinguish the disputed domain name from the trademark. The disputed domain name is both visually and phonetically similar to the registered trademarks above. It argues that the addition of the generic Top-Level Domain ("gTLD"), ".com", is irrelevant to an assessment of confusing similarity between a trademark and the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainant and the Complainant has not given the Respondent any permission to use the trademark as a domain name. It also argues that the Respondent is not using the disputed domain name, which does not resolve to any website, and that the non-use of the disputed domain name shows that the Respondent lacks a legitimate interest in the disputed domain name. Further, there is no evidence that the Respondent has been commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant contends that the disputed domain name has been registered and is used in bad faith. The Complainant's trademarks were registered before the Respondent became the owner of the disputed domain name. The Complainant contends that the Respondent was well aware of the Complainant's trademarks and business when registering the domain name. The Complainant used its trademark at its website at the domain name owned by the Complainant almost one month before the disputed domain name was registered on November 23, 2013. This suggests that the Respondent registered the disputed domain name in bad faith. The non-use of the disputed domain name is also an example of bad faith by the Respondent. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Having regard to the Complainant's trademark registrations, the Panel accepts that the Complainant has rights in the mark IK INVESTMENT PARTNERS.
The Panel finds that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name.
In this Panel's assessment, this threshold test is satisfied. The similarity between the disputed domain name and the Complainant's trademark is obvious. The word "investment" in the Complainant's trademark and business name has been reduced to "invest" in the disputed domain name, which however retains and incorporates the dominant part of the Complainant's trademark "IK", and the word "PARTNERS". In this Panel's view, the disputed domain name is both visually and phonetically similar to the registered trademark, as the Complainant contends. Further, the addition of the gTLD ".com", is insufficient to escape a finding of substantial or confusing similarity, as it is a technical requirement of registration: see, inter alia, CSC Holdings, Inc. v. Elbridge Gagne,WIPO Case No. D2003-0273; CITGO Petroleum Corporation v. Horace A. "Woofer" Smith,WIPO Case No. D2003-0054; EasyGroup IP Licensing Limited v. Amjad Kausar,WIPO Case No. D2003-0012; Microsoft Corporation and MSNBC Cable LLC v. Seventh Summit Ventures,WIPO Case No. D2002-0567; Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015.
This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant's trademark in which the Complainant has rights. B. Rights or Legitimate Interests
As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant has contended that the Respondent registered the disputed domain name after the Complainant established its rights in its mark, that the Respondent is not commonly known by the disputed domain name, that the Respondent has never been known by that name or mark or used the disputed domain name, that the Respondent has not been granted any license or other rights to use the Complainant's marks for any purposes and that the Complainant is in no way associated or affiliated with the Respondent. Further, there is no evidence that the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent has not filed a Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain name.
The Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain name has been registered and used in bad faith.
The Complainant submits that the Respondent has registered and used the disputed domain name in bad faith. On the evidence, the Respondent has no license or other authorization to use the Complainant's trademark. The Panel also accepts the Complainant's assertion, absent any evidence to the contrary, that
the Respondent knew or must have known about the Complainant's mark and business when registering the disputed domain name as the Complainant's use of its trademark in its business activities and on its website pre-dated the Respondent's registration of the disputed domain name.
Further, the Respondent's lack of any active use of the disputed domain name, for example, resolving to a website, even without any active attempt to sell the disputed domain name (passive holding) does not prevent a finding of bad faith. Having regard to all the circumstances of the case, the Panel concludes that the Respondent is acting in bad faith.
The Panel finds that the Respondent's registration and use of the disputed domain name was in bad faith within the meaning of 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 the Complainant.
Richard Tan
Sole Panelist
Date: May 12, 2014
Full & Egal Universal Law Academy