The Complainant is London Capital Group Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Keltie LLP, United Kingdom.
The Respondent is Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Queensland, Australia / John Jones, London Capital Group of Manchester, United Kingdom. 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 July 3, 2017. On July 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 5, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 5, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2017.
The Center appointed David Stone as the sole panelist in this matter on August 10, 2017. 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 provider of online financial services, in relation to which it is the registered owner of the following trade marks:
- LONDON CAPITAL GROUP LIMITED: UK trade mark number 2406992, registered on May 12, 2006;
- LONDON CAPITAL GROUP: UK trade mark number 3109629, registered on October 7, 2016;
- LONDON CAPITAL GROUP: European Union (“EU”) trade mark number 6370282, registered on July 25, 2008;
- LCG: international trade mark number 1279417, registered on October 6, 2015.
The disputed domain name, , was registered on May 17, 2015. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. The disputed domain name contains the words “london” and “group” in their entirety. Inspection of the website to which the disputed domain name resolves shows that it features the term “London Capital Group” prominently, and the letter “c” in the disputed domain name can therefore be intended to represent only the word “capital”. The disputed domain name is thus confusingly similar to the Complainant’s trade mark LONDON CAPITAL GROUP.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not seem to own registered rights in trade marks that comprise all or part of the disputed domain name, it is not connected to the Complainant, it has not received the Complainant’s consent to use the Complainant’s trade marks, and it does not seem to be commonly known as the disputed domain name, judging from the fact that “London C Group” is not one of the several terms used to describe the Respondent on the associated website. The Respondent uses the associated website to provide financial services identical to those of the Complainant, and the Complainant notes that in this regard the Respondent is categorised by the Financial Conduct Authority (FCA) as an unauthorised clone firm fraudulently claiming to represent the Complainant. The provision of such services cannot be regarded as bona fide. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847. To be considered bona fide, such provision would also have to disclose the Respondent’s relationship with the Complainant. See: Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. No such disclosure has been made. The Respondent’s use of the disputed domain name is clearly for commercial gain and misleadingly diverts consumers. These arguments establish a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has failed to rebut this.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s UK trade mark LONDON CAPITAL GROUP LIMITED and EU trade mark LONDON CAPITAL GROUP were both registered years before the Respondent registered the disputed domain name, at which later time the Complainant had become successful internationally. Owing to this and the close proximity of the parties’ business addresses, the Complainant believes that the Respondent must have been aware of the Complainant’s business at the time the Respondent registered the disputed domain name. In addition to this, and as stated above, the Respondent’s business is held by the FCA to be a fraudulent clone of the Complainant’s, and to operate by misleading consumers as to the original of the unauthorised and unregulated financial services offered by the Respondent. Such conduct is patently in bad faith. Before bringing this complaint, the Complainant sent a letter to the Respondent seeking to resolve the matter. The Complainant received no response to that letter and believes that the Respondent has simply chosen to ignore it, which in itself constitutes evidence of bad faith. See Ebay Inc. v. E and Tony Caranci,WIPO Case No. D2000-1632. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the three requirements that the Complainants must prove in order to succeed:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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
As set out by the Complainant in section 5.A, the disputed domain name matches exactly the Complainant’s trade mark LONDON CAPITAL GROUP but for the abbreviation of the word “capital” to the letter “c”. There may be debate in principle as to whether this results in the disputed domain name being confusingly similar to the Complainant’s trade mark, but other evidence put forward by the Complainant indicates that the disputed domain name is in fact designed to mislead by causing this very confusion, and is held to be misleading by the FCA. The opinion of the FCA is not determinative of that of the Panel, but, in all the circumstances, the Panel agrees and finds that the Complainants have satisfied the condition in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) as an individual, business or other organisation, the Respondent has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.
The evidence put forward by the Complainant in section 5.A, in particular the FCA’s categorisation of the Respondent as a fraudulent clone of the Complainant, rules out all three grounds on which it might be argued that the Respondent has rights or legitimate interests in the disputed domain name. The Complainant’s evidence comprises a prima facie case that the Respondent has no such rights or legitimate interests, and so the burden of production shifts to the Respondent. In failing to respond to the Complainant’s contentions, the Respondent has failed to rebut them, and the Panel therefore finds that the Complainant has satisfied the condition in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes the intention to register and use a domain name in order to:
(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;
(ii) prevent the trade mark owner from registering its trade mark in a domain name;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
It has been established that the disputed domain name is confusingly similar to the Complainant’s trade mark LONDON CAPITAL GROUP. By offering financial services identical to those of the Complainant on a website to which the disputed domain name resolves, the Respondent is clearly attempting to disrupt the Complainant’s business, to divert Internet traffic for commercial gain, or both. The FCA’s categorisation of the Respondent as a fraudulent clone of the Complainant only confirms this. For these reasons, and others set out by the Complainant in section 5.A, the Panel holds that that the Complainant has satisfied the condition in 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.
David Stone
Sole Panelist
Date: August 15, 2017
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