Complainant is Appleby Global Group Services Limited of United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Shepherd and Wedderburn LLP, United Kingdom.
Respondent is WhoisGuard, Inc. of Panama, Panama / Karl Grand’Maison, Vertige Image of Montreal, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2018. On February 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 7, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 15, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 19, 2018.
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 Respondent of the Complaint, and the proceedings commenced on February 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 21, 2018.
The Center appointed Robert A. Badgley as the sole panelist in this matter on April 5, 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
Complainant is a wholly-owned subsidiary of Appleby Global Group LLC (the “Group”). The Group is an international law firm with offices in Bermuda (where it originated) and several other jurisdictions. The Group holds various trademark registrations for the word mark APPLEBY in various jurisdictions, including the United States, Canada, and the European Union. For example, the Group holds European Union Trade Mark registration 003662533, registered July 4, 2005, for the mark APPLEBY in connection with legal services and other services.
Complainant has registered numerous domain names containing the term “Appleby Global,” including the domain name , where the Group maintains a website.
On November 5, 2017, the British Broadcasting Corporation (“BBC”) aired a program discussing a major computer hack which victimized the Group and other firms. The BBC program made numerous references to the Group and its business.
On November 13, 2017, eight days after the BBC program aired, the Domain Name was registered. The Domain Name resolves to a largely undeveloped web page with ten hyperlinks, including: Appleby Jewellers, Appleby Park Hotel, Cumbria House, Cumbria Hotel, Appleby Fair, Spreadsheet Software, Appleby in Westmoreland, Packaging, East Asian Music Westmoreland, and Fighting Games. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. According to the Complaint, Respondent’s website is “monetized” inasmuch as commercial “adverts” are presented at the site. Complainant alleges that the Domain Name was registered in the aftermath of the BBC program in order to disrupt the Group’s business “or to seek profit from increased press coverage about the Group”. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark APPLEBY through registration and use. The Panel finds that the Domain Name is identical to the APPLEBY mark.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to articulate or defend his motives in registering the Domain Name, or explain the timing of his registration of the Domain Name. The Panel perceives no legitimacy in registering a Domain Name identical to Complainant’s APPLEBY mark and creating a rudimentary website with ten largely unrelated but apparently revenue-generating hyperlinks.
Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
For essentially the same reasons as were discussed in the “rights or legitimate interests” section, the Panel concludes that Respondent has registered and used the Domain Name in bad faith. Eight days after the Group received media attention from the BBC, a major media outlet, about a computer hack, Respondent registered the Domain Name, the Second-Level Domain of which is identical to the APPLEBY mark and the Top-Level Domain of which is the word “global”, thereby reinforcing the similarity between the Group and the Domain Name. The Domain Name resolves to a website containing various hyperlinks, which are allegedly commercial in nature. Respondent does not deny that it derives revenue through these links. Accordingly, on the record before it, the Panel finds it more likely than not that Respondent targeted Complainant’s APPLEBY mark and has sought to attract Internet users for commercial gain through the confusion engendered by the Domain Name, in violation of the above-quoted Policy, paragraph 4(b)(iv).
Complainant has established Policy, paragraph 4(a)(iii). 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 Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: April 15, 2018
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