The Complainant is R3 LLC of New York, New York, United States of America (“USA” or “US”), represented by Crowell & Moring, LLP, USA.
The Respondent is Tangli Tang of Tanpines, Singapore. 2. The Domain Name and Registrar
The disputed domain name is registered with Gandi SAS (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2018. On January 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2018, 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 January 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2018.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on March 1, 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. 4. Factual Background
The Complainant is an enterprise software company engaged in the business of computer techonolgy and services, and is the registered owner of the following US trademark registrations:
- US word mark R3 (No. 5,287,132) filed on March 14, 2016 and registered on September 12, 2017 for services in class 42 with first use in commerce October 14, 2014;
- US device mark R CEV (No. 4,839,808) filed on October 24, 2014 and registered on October 27, 2015 for services in class 36 with first use in commerce October 24, 2014.
Furthermore, the Complainant has used the domain name to point to its active website under since August 13, 2014.
The Respondent registered the disputed domain name on January 21, 2016.
It results from the evidence before the Panel that the website, to which the disputed domain name resolves, is used to generate financial investment of its users. Users can actually create an account and subscribe to an alleged investment in the Complainant. Furthermore, the owner of the website is described as allegedly providing “R3 blockchain technology” and “R3 blockchain distributed repay accounts”. The website further informs users that the offering are allegedly associated with the “R3 Alliance” and “R3CEV” consortium and that investors may see returns over the next five years of 500 to 1000 times the value. Finally, the Respondent used the Complainant’s Singapore address combined with some other indications for the registration of the disputed domain name.
It results from the evidence before the Panel that the Respondent issued in October 2017 and December 2017 email messages explaining that transactions will be temporarily closed and that funds could not be converted but that the R3 Alliance would purportedly provide a payment plan. 5. Parties’ Contentions A. Complainant
The Complainant claims to be an enterprise software company engaged in the business of computer technology and services who became widely regarded as a leading provider of blockchain and shared/replicated ledger technologies and services. It is headquartered in New York with a presence in nine countries including Singapore. The Complainant further contends that it leads a consortium, called “R3 CEV”, of more than 100 of the world’s largest banks, financial institutions, regulators, trade associations, professional service firms and technology firms.
The Complainant claims its R3 and RCEV marks to be well-known trademarks for the consuming public, being exclusively associated to the Complainant. It further results from the Complainant’s allegations that it spent more than USD 1 million to promote and advertise the R3 and RCEV brands in the last three years.
The Complainant contends that the disputed domain name is confusingly similar to its trademarks R3 and RCEV. According to the Complainant, the disputed domain name combines the Complainant’s R3 and RCEV trademarks to mimic its and domain names. Moreover, the Complainant contends that the addition of the generic Top-Level Domain (“gTLD”) “.top” does not add any distinctiveness to the disputed domain name.
The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name. The Respondent is not known by the disputed domain name. In addition, the disputed domain name is being used as part of an investment fraud scheme causing users who are interested in the Complainant to hand over funds that they incorrectly believe they are investing in the Complainant. Such behavior shows that the Respondent is attempting to take undue advantage from the registration of a domain name which is confusingly similar in all aspects with the Complainant’s trademarks.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith since it actually uses it as part of an investment fraud scheme. There is not good faith explanation for the Respondent’s actions. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “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”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(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.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must establish rights in a trademark or service mark and that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
It results from the undisputed evidence provided that the Complainant is the registered owner of trademarks consisting of or containing the elements “r3” and “rcev”, i.e., US device mark R CEV (No. 4,839,808) filed on October 24, 2014 and registered on October 27, 2015, and US word mark R3 (No. 5,287,132) filed on March 14, 2016 and registered on September 12, 2017 with first use in commerce October 14, 2014. The Complainant has also registered its domain name before the disputed domain name, i.e., August 13, 2014.
Many UDRP panels have found that a domain name is confusingly similar to a trademark where the domain name incorporates the trademark in its entirety (e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320). This Panel joins the above view and considers the Complainant’s registered trademark R CEV as being fully included in the disputed domain name. In this context, the Panel does not consider the design/figurative elements contained in that trademark as being dominant. Since these elements are incapable of representation in domain names and the Panel disregards these elements for assessing confusing similarity (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.10 with further references). The fact that the mark is combined with the figure “3” does not exclude confusing similarity. All to the contrary it strengthens the association with the Complainant whose company name is dominated by the element “R3”.
According to the common practice under the UDRP the applicable TLD in a domain name is viewed as a standard registration requirement and as such is to be disregarded under the first element confusing similarity test (see WIPO Overview 3.0 at section 1.11.1 with further references).
In light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. In the Panel’s view, based on the Complainant’s undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
First of all, no elements have been presented to the Panel from which it could be deduced that the Respondent, whose name is Tangli Tang, could be commonly known by the disputed domain name or has acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.
Furthermore, the Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy. It rather results from the evidence submitted to the Panel, that the disputed domain name is currently used as part of an investment fraud scheme causing users who are interested in the Complainant to hand over funds that they incorrectly believe they are investing in the Complainant. Therefore, the Panel is convinced that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant’s reputation by registering a domain name fully containing the Complainant’s trade name and trademark with the intent to attract Internet users for commercial gain.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
Based on the evidence before it, the Panel is convinced that the Respondent is using the disputed domain name, to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark and company name as to the source, sponsorship, affiliation, or endorsement of its website and the alleged investments proposed there (according to paragraph 4(b)(iv) of the Policy). In the absence of any response explaining the contrary, the Panel has no reason to doubt the related evidence and allegations submitted by the Complainant from which it results that the disputed domain name is used as part of an investment fraud scheme causing users who are interested in the Complainant to hand over funds that they incorrectly believe they are investing in the Complainant. In fact, users can actually create an account and subscribe to an alleged investment in the Complainant. Furthermore, the owner of the site is described as allegedly providing “R3 blockchain technology” and “R3 blockchain distributed repay accounts”. In addition, the Respondent used the Complainant’s Singapore address combined with some other indications for the registration of the disputed domain name. The website available under the disputed domain name further informs users that the offering are allegedly associated with the “R3 Alliance” and “R3CEV” consortium and that investors may see returns over the next five years of 500 to 1000 times the value. However, as results from the further evidence before the Panel, the Respondent does not grant the investors any access to their funds invested in the Respondent. In fact, as explained and evidenced by the Complainant, many investors contacted the Complainant requesting their investments to be refund.
In light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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.
Tobias Malte Müller
Sole Panelist
Date: March 15, 2018
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