The Complainant is Barings LLC of Charlotte, North Carolina, United States (“United States” or “US”), represented by Ropes & Gray LLP, United States.
The Respondent is Simon Jacques, Barings of Nepean, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2018. On April 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 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 April 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2018.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 30, 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 in this administrative proceeding is Barings LLC (“Barings” or “the Complainant”), a USD 300+ billion global financial services firm employing over 650 investment professionals across offices in sixteen countries. The Complainant owns Baring Asset Management Limited (“Baring Limited”), and together they operate and do business globally under the BARINGS marks.
Barings LLC was formed in 2016 as a result of the merger of four affiliated investment firms, one of which was Baring Limited. Baring Limited was founded by John and Francis Baring in 1762.
Since its reorganization in 1985, Baring Limited has been known by the name “Barings”. After the 2016 merger, the Complainant and Baring Limited agreed to operate jointly under the BARINGS mark and Barings brand.
The Complainant is the owner of Baring Limited, and consequently the Complainant, by virtue of its ownership of and association with Baring Limited, has protectable rights in the BARINGS marks.
The Complainant identifies the following registered trademarks which are owned by Baring Limited and used by the Complainant:
US national trademark registration no. 1744800 for BARINGS registered on January 5, 1993.
(REGISTRANT) BARINGS PLC LIMITED.
US national trademark registration no. 3237576 for BARINGS (device) registered on May 1, 2007.
(REGISTRANT) Baring Asset Management Limited.
US national trademark registration no. 5166541 for BARINGS registered on March 21, 2017.
(REGISTRANT) Baring Asset Management Limited.
US national trademark registration no. 5197407 for BARINGS (device) registered on May 2, 2017.
(REGISTRANT) Baring Asset Management Limited.
Baring Limited registered the domain name on October 17, 2000, and the Complainant uses
it as its principal domain name.
The disputed domain name was registered on January 4, 2018 and does not resolve to an active website.
The above trademark registrations predate the registration of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant claims that the disputed domain name is confusingly similar to a registered trademark in which the Complainant has rights; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith. The Complainant alleges that the disputed domain name was used to send fraudulent LinkedIn messages and emails purporting to be from the Chairman and Chief Executive Officer of Barings Real Estate Advisers. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(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. A. Identical or Confusingly Similar
In the case at hand, the Complainant has been shown to be the parent company of the BARINGS trademark owner and to be authorized to use the registered BARINGS trademarks including those indicated in section 4.
This Panel agrees with the Complainant’s and previous panels’ view that a complainant “is considered to have protectable rights in a trademark, although it is not the holder of any trademark registrations for the mark, if the complainant has established that it is a related company such as a subsidiary or parent to the registered holder of the trademark”. See L’Oréal SA v. PrivacyP/ WangShanShan,WIPO Case No. D2014-0295.
The disputed domain name incorporates the trademarks of the Complainant’s subsidiary in their entirety and differs from the trademarks of the Complainant’s subsidiary only in the addition of the “.info” Top-Level Domain. This difference is not sufficient to avoid confusion between the signs.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “Barings” or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. The Respondent is apparently using the disputed domain name to send emails to third parties pretending to be an employee of the Complainant. The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name. The Respondent has not formally replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied paragraph 4(a) (ii) of the Policy. C. Registered and Used in Bad Faith
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.
The Complainant has documented that at the time of registration of the disputed domain name, the Respondent was presumably aware of the Complainant and of the BARINGS trademarks.
Indeed it appears that the Respondent has been sending emails (purporting to be) signed by the Chairman and Chief Executive Officer of Barings Real Estate Advisers (presented as “part of Barings one of the largest global real estate investment managers”).
These emails are, in the Panel’s view, sufficient to show that the Respondent knew of the Complainant and of the BARINGS marks and intentionally intended to create an association with the Complainant and its business at the time of registration of the disputed domain name.
In addition they can be considered further evidence of the Respondent’s intention to mislead or deceive the Complainant’s current and prospective clients by sending phishing emails and LinkedIn messages using the disputed domain name.
Namely, it appears that the Respondent is trying to pass himself off as an employee of the Complainant, presumably in order to illicitly obtain information from people who are under the impression they are providing such information to the Complainant and/or to a company related to the Complainant.
The Panel finds that the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under the Policy. The fact that the disputed domain name does not currently resolve to an active website does not preclude a finding of bad faith.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith. 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.
Fabrizio Bedarida
Sole Panelist
Date: June 6, 2018
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