The Complainant is GLG Partners Services Limited of George Town, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Bird & Bird LLP, United Kingdom.
The Respondent is Zhang Li Li of China. 2. The Domain Name and Registrar
The disputed domain name is registered with GuangDong NaiSiNiKe Information Technology Co Ltd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 16, 2014. On October 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 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. In response to a notification by the Center, the Complainant filed an amended Complaint on October 22, 2014.
On October 22, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 in both Chinese and English, and the proceeding commenced on October 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 18, 2014.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on November 27, 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. The Panel subsequently extended the decision due date to December 18, 2014. 4. Factual Background
The Complainant is part of the GLG group of companies which are ultimately owned by Man Group Plc. The GLG Group is discretionary, multi-product global investment manager managing funds for corporation pension funds, endowments, sovereign wealth funds, funds of funds, family offices, private banks and other institutions as well as high net worth individuals from around the world.
The Complainant is the registered proprietor of the GLG PARTNERS marks in the United Kingdom, the United States of America and in the European Union for a range of classes including, but not limited, in relation to: financial services; investment consulting services; investment banking services; merchant banking services; financial management services and financial brokerage services.
The Complainant has been using the GLG PARTNERS marks in respect of the financial services which it offers for over 19 years.
The Complainant has also been using the domain name to promote its business and its GLG PARTNERS marks.
The Respondent registered the disputed domain name on May 18, 2014 some 16 years after the first GLG Group trade mark with Europe-wide effect was registered. 5. Parties' Contentions A. Complainant
First, the Complainant asserts that the disputed domain name is identical or confusingly similar to its marks. The reasons are summarized as follows:
(1) The disputed domain name contains the word "glg" which is identical to the name GLG for which the Complainant has registered trade mark rights.
(2) The disputed domain name also contains the word "glgpartners" which is very highly similar to the name "GLG Partners" for which the Complainant has registered trade mark rights, differing only by the addition of a space between "glg" and "partners" in the registered trade marks.
(3) The disputed domain name is similar to the Complainant's official domain name except that it ends with ".org" instead of ".com". The similarities between the disputed domain name and the Complainant's official domain name have the intention of encouraging Internet users to believe that the Respondent's website is associated with the Complainant.
(4) The disputed domain name is confusingly similar to both the Complainant's GLG PARTNERS marks and its official domain name, it is clear the Respondent is using the similarities to confuse consumers looking for the Complainant's website into believing that the disputed domain name is related to the Complainant and other members of the GLG Group.
Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The grounds are summarized as follows:
(1) The Respondent registered the disputed domain name on May 18, 2014. The Complainant has contacted the relevant ISP providers to block the IP address of the disputed domain name. The fact that relevant ISP providers have responded to requests to take action to block the disputed domain name indicates that the Respondent has no rights or legitimate interests in the disputed domain name.
(2) The website currently attached to the disputed domain name is a complete copy of the website attached to the Complainant's official domain name with the addition of an option for users to enter login details. It is therefore clear that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and has no rights or legitimate interests in the disputed domain name.
(3) To the best of the Complainant's knowledge, the Respondent is not known by the disputed domain name.
(4) The Complainant can confirm that none of the GLG Group of companies has registered the disputed domain name and the Complainant further confirms that no entity outside of the GLG Group of companies has been authorised to use the GLG PARTNERS marks in this manner. Therefore, the Respondent has never asked for, and has never been given, any permission by the Complainant to register or use any domain names incorporating the marks.
(5) The Complainant considers that it is not possible for the Respondent to have acquired rights or legitimate interests to use the disputed domain name since its registration.
Third, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The grounds are summarized as follows:
(6) Given the strong reputation of the GLG PARTNERS marks, the Respondent must have been aware that in registering the disputed domain name it was misappropriating the valuable intellectual property of the owner of the marks.
(7) The Respondent's registration of the disputed domain name has also prevented the Complainant from registering this domain name which corresponds to the Complainant's marks contrary to paragraph 4(b)(ii) of the Policy.
(8) The Respondent has copied directly the Complainant's website, and intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's trade marks in breach of paragraph 4(b)(iv) of the Policy. In particular, the Respondent has attempted to obtain information from potential users of the website attached to the Complainant's official domain name in bad faith by including a request for login details on the website.
(9) The Respondent will never be capable of using the disputed domain name for a legitimate purpose as the notoriety of GLG PARTNERS mark is such that members of the public will always assume that there is an association between the Respondent and the Complainant and the GLG Group, and/or between the Respondent and the Complainant's marks.
(10) It is reasonably anticipated that the disputed domain name will disrupt the GLG Group (including the Complainant's) business due to: a) the fact that the website is a copy of the website attached to the Complainant's official domain name which will lead users to think that they are on the website attached to the Complainant's official domain name in error; and b) the addition of a request for login details to the website which may lead users to enter personal information in the mistaken belief that the website is connected with the Complainant (paragraph 4(b)(iii) of the Policy).
(11) The Complainant has made several requests to ISP providers to have the disputed domain name blocked following which the Respondent has sought to register the disputed domain name with a new ISP provider. This behaviour is indicative of use of a domain name in bad faith.
(12) The disputed domain name copied the Complainant's domain name of by in the first instance removing the ".com" and replacing it with the ".org". It is reasonably anticipated that the Respondent intended to capture Internet traffic intended for the Complainant. This pattern of conduct is highly suggestive of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English. The Respondent did not comment on it.
After considering the circumstances of the present case and the submission of the Complainant's request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel's discretion under the Policy
Paragraph 11(a) of the Rules provides:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) the contents of the website associated with the disputed domain name are in English; and (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant's allegations.
Therefore, the Panel is of the view that the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the GLG PARTNERS marks in connection with financial services in many countries in the world and enjoys goodwill through substantial use of the marks over a period of more than 19 years.
In assessing the degree of similarity between the Complainant's trade mark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant's trade mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet users seeking information about the Complainant's products or services.
The disputed domain name consists of the Complainant's GLG PARTNERS marks in its entirety without a space in between "glg" and "partners" and the addition of the generic Top-Level Domain (gTLD) suffix ".org". The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the words "glgpartners" which, for intents and purposes, is identical to the Complainant's registered trade marks GLG PARTNERS. It is also an accepted principle that the addition of suffixes such as ".org" being the gTLD is not typically a distinguishing factor.
Bearing in mind the following factors, in particular the distinctive character of the Complainant's GLG PARTNERS marks and the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is identical or confusingly similar to the GLG PARTNERS marks in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
(1) The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term "glgpartners";
(2) There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trade mark or to apply for or use any domain name incorporating the GLG PARTNERS marks;
(3) There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;
(4) On the contrary, the disputed domain name is currently connected to a website which is a complete copy of the website attached to the Complainant's official domain name with the addition of an option for users to enter login details. The Panel finds that the Respondent therefore does not have the right to use GLG PARTNERS marks in the disputed domain name. Such a behaviour on the part of the Respondent clearly shows that it is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain name;
(5) The Complainant and its GLG PARTNERS marks enjoy goodwill as a result of substantial use of the GLG PARTNERS marks in connection with financial services and are registered trade marks in many countries all over the world. Consequently, in the absence of contrary evidence from the Respondent, the GLG PARTNERS marks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes that the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1). Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adduced evidence of any rights or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel's assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant's rights in the trade mark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks often transcend national borders.
Furthermore, the Complainant has established a presence on the Internet through the use of its domain name . A simple search on the Internet would reveal the presence of the Complainant's trade marks and domain name. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant's trade mark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its products.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant's trade mark and where the trade mark in question has through substantial use acquired goodwill, a reasonable conclusion is that the trade mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the Respondent may show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet. In this case, there is no evidence that the Respondent has used or intends to use the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent is using the disputed domain name to connect to a website which is a complete copy of the website attached to the Complainant's official domain name with the addition of an option for users to enter login details. Such behaviour on the part of the Respondent is indicative of bad faith registration and use as per paragraph 4(b)(iv) of the Policy. The Respondent could have explained its choice of the disputed domain name and its subsequent conduct. However, the Respondent did not do so and the Panel was not provided with any plausible explanation.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that given the goodwill of the Complainant's GLG PARTNERS marks and a lack of plausible explanation for the choice of incorporating the Complainant's trade mark in the disputed domain name, the conduct of the Respondent in using the disputed domain name to connect to a website which is a complete copy of the website attached to the Complainant's official domain name with the addition of an option for users to enter login details is certainly a relevant factor indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test. 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.
Susanna H.S. Leong
Sole Panelist
Date: December 18, 2014
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