The Complainant is Marlowe Partners LP of New York, New York, United States of America (“USA” or “US”), represented by Akin, Gump, Strauss, Hauer & Feld, USA.
The Respondents are Contact Privacy Inc. of Toronto, Ontario, Canada / Robert Harrison, PFG of Los Angeles, California, USA / Anton Kazhaev, Togliatti, Samarskaya, Russia. 2. The Domain Names and Registrars
The disputed domain name is registered with Tucows Inc. (“Tucows”). The disputed domain name is registered with Registrar of Domain Names REG.RU LLC (“REG.RU”). The disputed domain names are referred to herein as the “Domain Names”. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2017. On November 10, 2017, the Center transmitted by email to Tucows a request for registrar verification in connection with the Domain Name . On November 10, 2017, Tucows transmitted by email to the Center its verification response disclosing registrant and contact information for that Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 16, 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 November 16, 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 Respondents Contact Privacy Inc. / Robert Harrison, PFG of the Complaint, and the proceedings commenced on December 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2017.
The Respondents Contact Privacy Inc. / Robert Harrison, PFG did not submit any response. Accordingly, the Center notified the Respondents’ default on January 2, 2018.
In the interim, on December 7, 2017, the Complainant requested the addition of another Domain Name, , which the Complainant believed to be under the control of the same Respondents. On December 12, 2017, the Center transmitted by email to REG.RU a request for registrar verification in connection with that Domain Name. On December 14 and December 20, 2017, REG.RU transmitted by email to the Center its verification response disclosing registrant and contact information for that Domain Name which differed from the named Respondent and contact information in the amended Complaint.
Following the communications between the Center and REG.RU, and based largely on the fact that both Domain Names resolved for a time to a website with the same text, on January 2, 2018 the Complainant renewed its request to add the Domain Name to the proceeding. The Center explained in reply on January 2, 2018 that this request would be forwarded to the Panel after it was appointed, as the Rules do not explicitly provide for a Complaint to be amended after the commencement of proceedings to include additional domain names.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 18, 2018. 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.
On February 5, 2018, the Panel issued Administrative Panel Procedural Order No. 1, allowing the Complainant to submit arguments for consolidation, taking in to account the information furnished by the registrar REG.RU regarding the Domain Name . On February 7, 2018 the Complainant submitted its response to the procedural order. On February 12, 2018 the Complainant also submitted new information for the Panel’s consideration about a recent fraud alert concerning the Respondent’s website. On February 14, 2018, the Panel issued Administrative Panel Procedural Order No. 2, directing the Center to notify the Respondent Anton Kazhaev and set a due date of March 6, 2018 for an opportunity to respond to the substance of the amended Complaint, or to the Complainant’s arguments for consolidation. The Center formally notified the Respondent Anton Kazhaev, who did not submit any Response. 4. Factual Background
The Complainant is a limited partnership organized under the laws of the State of Delaware, USA, in 2013, with its principal place of business in New York City, New York, USA. Since 2013, the Complainant has managed a number of private investment funds using the MARLOWE PARTNERS mark: MARLOWE PARTNERS LP, MARLOWE PARTNERS ONSHORE FUND LP, MARLOWE PARTNERS OFFSHORE FUND LTD, and MARLOWE PARTNERS MASTER FUND LP, all of which the Complainant claims as trademarks (collectively, the “MARLOWE PARTNERS marks”). The Complainant also registered the domain name in 2013, although it resolves only to a placeholder page with the company’s name and address.
The Domain Name was registered in the name of a domain privacy service on October 11, 2017. The Complainant learned of this when it received a telephone call from an individual attempting to contact “Marlowe Financial”. The Complaint attaches screenshots of the website formerly associated with this Domain Name (the “Respondent’s website”), headed “Marlowe Financial Group” and advertising investment services. The Respondent’s website listed the Complainant’s postal address and displayed the Complainant’s FINRA number (the official identification number issued by the US federal Financial Industry Regulatory Authority). The Complainant called the telephone number shown on the Respondent’s website, following which the Complainant’s address, and later its FINRA number, were removed from the website. The Complainant then sent a cease-and-desist letter on October 18, 2017 to the new address shown on the Respondent’s website, in Los Angeles, California. The letter was returned as undeliverable. The Complainant notes that the Respondent’s website is currently listed on the website of the Securities Investor Protection Corporation (SIPC), a nonprofit self-regulatory body created under a US federal statute, as a website operated by a “fraudster” that “falsely claims” to be a broker-dealer member of the SIPC.
In December 2017, after the commencement of this proceeding, the Complainant learned that the other Domain Name, , had been registered with a Russian registrar in the name of a privacy service on October 2, 2017 and was being used for a website with the same text as the Respondent’s website described above. (The Complainant attached screenshots to its request for consolidation.) As detailed above, the Registrar REG.RU ultimately identified the registrant of that Domain Name as the Respondent Anton Kazhaev, with a postal address in Russia.
At the time of this Decision, the Domain Name redirects to another website, which displays the message, “Website Expired”. The Domain Name resolves only to an error message. 5. Parties’ Contentions A. Complainant
The Complainant claims a number of MARLOW PARTNERS trademarks and at one point in the Complaint claims the name MARLOWE as its “house mark”. The Complainant argues that the Domain Names are confusingly similar to these marks. The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Names but rather registered and used them fraudulently to mislead potential investors by falsely associating itself with the Complainant, as evidenced by appropriating the Complainant’s postal address and FINRA number and successfully hiding the true identity and location of the website operator. B. Respondent
None of the Respondents replied to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Consolidation
The Rules contemplate that a panel may consolidate multiple domain name disputes (UDRP Rules, paragraph 10(e)). Where multiple respondents are named, UDRP panels look at whether the domain names or corresponding websites appear to be under common control, consolidation would be fair and equitable to all parties, and consolidation would promote procedural efficiency. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
Given the similarity of the two Domain Names, the fact that they were registered within a few days of each other, and especially the fact that for a time they resolved to websites with identical content, the Panel finds it probable that the Domain Names and associated websites are or were under the control of the same person or persons (hereafter, the “Respondents”). It is, therefore, appropriate and efficient to determine the Complainant’s UDRP claims in the same proceeding. B. Identical or Confusingly Similar
A UDRP complaint must be grounded on a trademark or service mark in which the Complainant has rights, and the Complaint itself fails to document any registered rights. Nevertheless, the Panel finds persuasive evidence that rights exist, as described below.
The Complaint refers to no registered MARLOWE or MARLOWE PARTNERS trademarks, and the Panel finds none in the database of the United States Patent and Trademark Office. To establish unregistered or common law trademark rights for purposes of the first element of the UDRP, the Complainant must show that its marks have become a “distinctive identifier” (also referred to as “secondary meaning”) that consumers in a relevant market associate with the Complainant’s goods or services. See WIPO Overview 3.0, section 1.3. Relevant evidence demonstrating such acquired distinctiveness includes “a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys”, taking into account the nature of the Complainant’s services. The decisions cited in the WIPO Overview highlight the point that “conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.”
The Complaint contains only conclusory allegations rather than specific evidence of acquired distinctiveness. The Complaint simply asserts “extensive use” of the marks and says that they “have become associated in the broad based investment and financial community with investment-related services as emanating from Marlowe Partners.” But the Complaint itself does not support this contention by demonstrating how a short form of its company name has been used as brand, and how it has become recognized as such. The Complainant partnership was formed in 2013 by two individuals (its LinkedIn social media page suggests that it may now have a total of seven employees). Its website has no content other than listing the name, postal address, and email address of the partnership. The name “Marlowe” appears centered on that page, but without a trademark symbol indicating a claim to common law trademark rights. The Complaint does not furnish details of sales, advertising, industry or media recognition, or public awareness associated with the MARLOWE or MARLOWE PARTNERS names.
However, the Complaint does attach a copy of the Complainant’s March 2017 firm brochure in the form prescribed by the US Securities and Exchange Commission for public disclosure of the business of registered investment advisors (SEC Form ADV Part 2A). The SEC filing shows that the Complainant offers services only to “accredited investors” under the Securities Act of 1933, “qualified purchasers” under the Investment Company Act of 1940, and “qualified clients” under the Investment Advisors Act of 1940. Given the statutory definitions of those terms, this means that the Complainant offers services only to a very narrow range of relatively wealthy and sophisticated investors. Indeed, the Complainant would typically be precluded from general solicitation; it would not be permitted to advertise such investment offerings and services to the general public. Under the heading “Types of Clients”, the brochure states that the Complainant “currently provides investment management services exclusively to privately offered, alternative investment funds.” The Panel notes that WhaleWisdom, a US investment research site, describes the Complainant as a hedge fund with only 1-10 clients but more than USD 285 million in assets under management, listing as its source that same March 2017 SEC Form ADV submitted with the Complaint.
Thus, the Complainant appears to be a small but successful firm in a niche market, with no need to advertise to the general public. Consistent with other “acquired distinctiveness” decisions cited in the WIPO Overview, the Panel takes into consideration the nature of the Complainant’s services and the relevant market. It appears to be sufficient for a fund manager in this niche market to make the required public disclosures through the SEC filings (which are then analyzed by researchers), establish a reputation on Wall Street for prudence and success, and subsequently benefit from referrals by brokers and existing clients. The Panel finds numerous mentions of the Complainant’s funds online, on investment sites such as Insider Monkey, OctaFinance, and Hedgeable.
As is evident from published lists of hedge funds and mutual funds, it is a common practice for fund managers to create multiple investment funds as limited partnerships or limited companies, as the Complainant has done, each with a different investment focus but sharing a common brand name. These funds are listed by their short names in periodicals, websites, and other publications that track the performance of the individual funds and analyze the strategies and success of the group and its managers. That is exactly what has happened here, with the various MARLOWE PARTNERS funds. The Panel finds, therefore, that MARLOWE PARTNERS has acquired secondary meaning in a niche financial market for private investment offerings, associated with funds managed by the Complainant.
The fact that the Respondents’ website clearly targeted the Complainant’s mark (displaying the Complainant’s address and FINRA number) also supports the inference that the Complainant’s mark had achieved significance as a source identifier for those interested in a certain kind of investment services. See WIPO Overview 3.0, section 1.3, penultimate paragraph.
In sum, the Panel concludes from the SEC filing attached to the Complaint and from publicly available references to the Complainant’s funds that the Complainant does have common law rights in MARLOWE PARTNERS as a service mark.
In the Domain Names, “finance” and “financial”, respectively, are generic terms added to “marlowe”, which is the distinctive element of the Complainant’s MARLOWE PARTNERS mark. These generic additions do not avoid confusing similarity.
The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. WIPO Overview 3.0, section 1.7. The Panel concludes under this test that the Domain Names are confusingly similar for purposes of the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Names, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Complainant demonstrates confusing similarity, and the Respondents clearly targeted the Complainant’s mark and gave the false impression of association with the Complainant, displaying the Complainant’s address and FINRA number. The Respondents did not offer evidence of rights or legitimate interests.
The Panel concludes that the Complainant prevails on the second element of the Complaint. D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
This example applies in the present circumstances. The Respondents’ websites advertised investments under a name confusingly similar to the Complainant’s, displaying the Complainant’s postal address and the Complainant’s identification number issued by the federal regulatory authority FINRA. Clearly, the Respondents were aware of the Complainant and sought to trade on its reputation. Confronted by the Complainant, the Respondents first changed their published contact details to a false address and then became entirely unresponsive. The Respondents have failed to reply to communications in connection with this proceeding.
The Panel concludes on this record that the Respondents registered and used the Domain Names in bad faith within the meaning 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 Domain Names and be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: March 14, 2018
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