The Complainant is Novia Financial plc of Bath, England, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), internally represented.
The Respondent is Parker Hendon of London, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Launchpad, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2018. On February 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 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. In response to a notification by the Center requesting the clarification of the mutual jurisdiction of the Complaint, the Complainant filed an amendment to the Complaint on March 8, 2018.
The Center verified that the Complaint together with the amendment to 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 March 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 3, 2018.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on April 12, 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 a financial services wealth management company that operates an administration platform which manages and holds investments for corporate entities and individuals and facilitates trades. The Complainant was incorporated in January 2008.
The Complainant is the registered proprietor of the following United Kingdom trade marks:
(a) number 3193530 NOVIA (figurative) in classes 35, 36, 41 and 42 registered on May 5, 2017;
(b) number 3193525 for NOVIA (word mark) in class 36 registered on March 17, 2017.
Both registrations cover wealth management and financial services. The trade mark NOVIA (figurative) also includes the development of related computer software and other areas.
According to the WhoIs search result the disputed domain name was registered on January 18, 2018. According to the evidence provided by the Complainant, the disputed domain name resolved to a website providing financial services. 5. Parties' Contentions A. Complainant
The Complainant says that it has for approximately 9 years operated under the name "Novia" and that it is a well-known financial services wealth management company "that operates an administration platform which manages and holds investments for corporate entities and individuals and facilitates trades… and has a turnover of approximately £20m".
Since incorporation the Complainant has spent in the region of GBP 23 million on developing its business, and of that amount about GBP 2 million has been spent directly on its brand.
As a result of its activities, the Complainant says that it has a significant reputation in the United Kingdom "in relation to financial services and the FinTech sector. The Complainant has undertaken extensive marketing of the brand 'Novia', a specific example being the prominent sponsorship of Bath Rugby over the past 6 years. Further, the Complainant operates their website at the domain name therefore investing and owning goodwill in the two elements 'NOVIA' and 'FINANCIAL' together".
The extensive goodwill accumulated by the Complainant in the NOVIA mark "forms the basis for their unregistered right to prevent passing off".
The Complainant contends that the disputed domain name was being used for a website operated by the Respondent "to promote the services of a fictional company, Novia Financial Limited. The Respondent claimed to have a registered address at Cambridge House, Henry Street, Bath, Somerset, BAl IJS …however this is the Complainant's registered address …Further, there is no company registered in the name of Novia Financial Limited at UK's Companies House …In addition, the Respondent provided false contact details on the Website in that …the telephone number 0203 123 1234 shown the Website is out of service".
The Complainant's contentions are that:
a) The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in respect of the disputed domain name;
c) The disputed domain name was registered and is being used in bad faith.
The Complainant requests that the disputed domain name be transferred to itself. B. Respondent
The Respondent did not submit a Response to the Complaint. 6. Discussion and Findings
The Rules state that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate: paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith. A. Identical or Confusingly Similar
The disputed domain name "is made up of two elements being 'NOVIA' and 'FINANCIAL'..." and is identical "to the registered NOVIA trade mark in that it fully incorporates NOVIA alongside a descriptive FINANCIAL element. Alternatively, the Disputed Domain Name is identical to the trade mark NOVIA FINANCIAL in which the Complainant has unregistered trade mark rights."
In The Ritz Hotel, Limited v. Damir Kruzicevic,WIPO Case No. D2005-1137, the panel stated that: "the domain name incorporates the RITZ mark in its entirety. Numerous WIPO panels have found that a domain name that wholly incorporates the complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy".
The Panel finds that the disputed domain name is confusingly similar to the Complainant's mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant submits that, "as there is no legitimate company operating the Website, the Respondent cannot have any rights or legitimate interests in respect of the Disputed Domain Name that is the subject of the Complaint. To the best of the Complainant's knowledge, the Respondent has no genuine actual or legitimate business which uses the signs 'novia' or 'Novia Financial'. Therefore, the Respondent has no genuine business relating to the Disputed Domain Name, makes no fair use of the Disputed Domain Name and has no legitimate basis for its retention".
It was open to the Respondent to file a Response. The Respondent has not done so. The Panel is satisfied that the Complainant has made out an unrebutted prima facie case and has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Whols search "records Parker Hendon for the Registrant Name with an address at 20 Avondale Road, London, El 7 8JG in Aberdeenshire although clearly the reference to Aberdeenshire is incorrect".
The website using the disputed domain name states that the Respondent's registered address "is the same address as the Complainant's registered address but this is false. The Website also states the Respondent's business address is Saint Clement's House, 27-28 Clement's Lane, London, EC4N 7AE …but to the best of the Complainant's knowledge the Respondent is not operating at that address".
The Complainant says that each page of the website "included the sign 'novia' in very prominent text in the top banner. The Website promoted financial services and specifically referred to escrow services and financial advisory services. This use of the name 'novia' together with the use of the Complainant's registered address was a deliberate attempt to cause confusion in the public and exploit the Complainant's goodwill and professional reputation. To support this position, the Complainant has been contacted by members of the public who have been misled by the Respondent's Website".
The Complainant states that its own website includes a login for its clients: "This is part of an administration platform which manages and holds investments for corporate entities and individuals and facilitates trade. The platform enables the Complainan's clients to access sensitive financial information."
The Respondent's website provides a login page for customers to enter their confidential user name/password combination: "This is a scam portal designed to mislead the Complainant's customers into divulging their user name/password combination. These details can then be used to access financially sensitive information on the Complainant's own website."
Additionally, the Complainant states that it has been receiving a number of calls from members of the public who have been approached by the Respondent. The calls show that the Respondent's attempts to create confusion have been successful, and in particular:
-the Complainant's number is being given to members of the public to legitimize the operation of a scam relating to carbon credits;
- the website and disputed domain name are being used to legitimise the operation of the scam;
- members of the public are transferring large sums of money to the Respondent believing that they are dealing with the Complainant.
The Complainant also contends that the Respondent has sent fraudulent letters to individuals "pursuing business opportunities in the name of Novia Financial Holdings (the Complainant's holding company). …This letter provides the company number 06466707 which is the Complainant's parent company number. The letter is signed off in the name of Sir Anthony Cleaver who is the Complainant's Chairman of the Board. Clearly the letter is a blatant attempt to impersonate our client".
The Complainant's case is that the disputed domain name is being used "with the intention of committing fraud against members of the public as evidenced in extracts of calls received by the Complainant, the way in which the Website is being operated and the letters being sent out in the Complainant's parent company's name. On this basis, it is clear that the Respondent registered the Disputed Domain Name in order to attempt to attract Internet users to the Website for their own commercial gain. It was the intention of the Respondent to cause a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Website".
One result is that the Complainant "is experiencing severe business disruption at the hands of the Respondent".
In FIL Limited v. John Smith / Privacy.P,WIPO Case No. D2013-1577, the Panel stated that, bearing in mind that the Respondent has presented itself to be a company within the Complainant's group of companies, "it is clear that the Respondent has been aware of the Complainant and its trade marks when registering the disputed domain name.
Pretending to be a company within the Complainant's group of companies shows that the Respondent has used the disputed domain name to direct traffic to its website…
Based on the above, the Panel finds that the disputed domain name was registered and is being used in bad faith".
Similarly, in Wiltons Holdings Limited v. Domain Administrator, see PrivacyG / Joham Brolin,WIPO Case No. D2017-1161, the Panel stated that "the arguments and evidence presented by the Complainant supports a finding of bad faith. The Complainant evidenced that the Respondent sent fraudulent emails to the Complainant's customers and invited them to transfer money into fictitious investment opportunities, using the Complainant's trademark J.O. HAMBRO and the disputed domain name and impersonating its employees. The Respondent's use of the disputed domain name for fraud constitutes bad faith according to the Panel and since the disputed domain name was registered for this purpose the Panel finds that also the registration was conducted in bad faith".
The Panel is satisfied that the Complainant has proved both the bad faith registration and the bad faith use requirements of 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.
Anthony R. Connerty
Sole Panelist
Date: April 26, 2018
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