The Complainant is Cerberus Capital Management L.P. of New York, New York, United States of America (“United States”) represented by Wild Schnyder AG, Switzerland.
The Respondent is Danilo Larini, LP Suisse Capital Asset Management AG of Zurich, Switzerland. 2. The Domain Name and Registrar
The disputed domain name is registered with NetEarth One Inc. d/b/a NetEarth (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2016. On April 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2016.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on May 10, 2016. 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 disputed domain name was created on October 18, 2011.
The Complainant is a company located in New York, United States. It was founded in 1992 and claims to be one of the largest and most renowned companies in the finance sector worldwide. Its focus is on private equity investment and it operates through affiliates and advisory offices across the United States, Europe and Asia.
The Complainant owns registrations of the trademarks CERBERUS and CERBERUS logo, registered on February 5, 2010 , , and CERBERUS CAPITAL MANAGEMENT L.P., registered on May 18, 2007, registered in the United States, in the European Union and under International Trademark Registrations extending inter alia to Switzerland and Liechtenstein. The Complainant also holds the domain names and .
No information is available about the Respondent save that it was the respondent in a prior domain name case and is reported to have been the subject of a fraud investigation by the Swiss Police in November 2015. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions may be summarized as follows:
(i) It has well-established rights and a reputation in the trademark CERBERUS dating from well prior to the creation of the disputed domain name.
(ii) It has succeeded in prior proceedings against the Respondent in Cerberus Capital Management L.P. v. Danilo Larini, United Suisse Capital AG,WIPO Case No. DCH2015-0027 ().
(iii) The Respondent has not been commonly known by the disputed domain name.
(iv) The disputed domain name is capable of creating a likelihood of confusion as to its source, sponsorship and affiliation with the Complainant’s trademarks and company name.
(v) The Respondent commercially benefits from the connection the consumer assumes between the disputed domain name and Complainant’s trademark.
(vi) The domain name is likely to create an assumption that the disputed domain name is the name of the Luxembourg branch of the Complainant.
(vii) The Respondent seeks commercial gain out of the disputed domain name registration by using the excellent reputation of the Complaint.
(viii) The Respondent is reported to have been the subject of a fraud investigation by the Swiss Police in November 2015.1 . B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has clearly established rights in its registered trademarks CERBERUS and CERBERUS CAPITAL MANAGEMENT L.P.. The first and strongest component of the disputed domain name is the word “Cerberus”. The addition of the element “lux” does not diminish the significance of the word “Cerberus” in the disputed domain name and indeed, as discussed further below, it may serve to increase the confusing similarity with the Complainant and its CERBERUS trademark.
The Complainant has therefore established that the disputed domain name is confusingly similar to a trademark mark in which it has rights. B. Rights or Legitimate Interests
The Complainant has established that it is a well-known major operator in the financial services industry. The name of the Respondent’s corporation “Suisse Capital Asset Management AG” indicates that it is involved in the same industry. The word “Cerberus”, the guardian of the underworld of Greek mythology, has no obvious connection with that industry nor with the Respondent. There is no evidence that the Respondent is commonly known by the disputed domain name, nor is there any evidence of any use of the disputed domain name in the bona fida offering of goods or services or of any noncommercial or fair use of it.
The Complainant has established a strong prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut that prima facie case and accordingly the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy are satisfied (see Croatia Airlines d.d v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). C. Registered and Used in Bad Faith
As discussed above, when the Respondent registered the disputed domain name it was most likely aware of the Complainant’s name and trademark and its rights and reputation in the financial services industry. It chose a domain name with which it had no apparent connection and which had no descriptive or other significance in relation to the Respondent nor to the industry in which it is involved. The Panel accepts the Complainant’s submission that the element “lux” is a common contraction of the country “Luxembourg” and is likely to suggest to consumers and Internet users that the disputed domain name would lead to a Luxembourg subsidiary or affiliate of the Complainant. In that respect the disputed domain name mirrors the corresponding domain name in Cerberus Capital Management L.P. v. Danilo Larini, United Suisse Capital AG, supra, where, in that case, the word “Cerberus” was coupled with the word “Zug”, the name of a canton and city in central Switzerland. In all the circumstances therefore it is difficult to conceive any reason why the Respondent would adopt the disputed domain name other than for the purpose of appropriating the reputation and goodwill of the Complainant.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name does not resolve to an active website. Such passive holding of the disputed domain name, when coupled with other indications of bad faith, may constitute use in bad faith under the Policy as found in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In this case it is apparent from the decision in Cerberus Capital Management L.P. v. Danilo Larini, United Suisse Capital AG, supra,that the Respondent adopted a similarly constructed domain name which, in that case, was held by the panel to constitute unauthorized use of the Complainant’s rights and/or its trademark registrations in Switzerland. Whilst that case is not of direct relevance as a precedent for this present case in view of the substantial differences in the criteria applied under the Policy and the corresponding Rules of Procedure for Dispute Resolution Proceedings for .ch and .li Domain Names, the facts of that case are nevertheless of relevance in determining whether or not the disputed domain name has been registered and is being used in bad faith. In the Panel’s view the passive holding of the disputed domain name together with this further indication of bad faith on the part of the Respondent is sufficient to bring the present case within the ambit of the decision in Telstra Corporation Limited v. Nuclear Marshmallows, supra. Moreover, in absence of any response to the Complaint, the Panel cannot conceive of any use of the disputed domain name that would constitute good faith use for the purposes of the Policy.
Accordingly, the Panel finds that the disputed domain name has been 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 disputed domain name be transferred to the Complainant.
Desmond J. Ryan AM
Sole Panelist
Date: May 24, 2016
1 The newspaper report of the Swiss police proceedings against the Respondent provided in evidence by the Complainant is of no direct relevance and the allegation is yet to be proven. Accordingly, this allegation has been disregarded for the purpose of this Decision.
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