The Complainant is New York City Investment Fund, L.L.C. of New York, New York, United States of America (“United States”), represented by Simpson Thacher & Bartlett, United States.
The Respondent is Markus Pedrigal of Manila, Philippines. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed 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 August 13, 2018. On August 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 14, 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 August 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2018.
The Center appointed John Swinson as the sole panelist in this matter on September 25, 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 New York City Investment Fund, L.L.C, a company incorporated in the United States. According to the Complaint, the Complainant is one of the largest civic investment funds – a fund that invests in other companies with the goal of creating jobs, spurring new business creation and expanding opportunities for New York City’s residents. The Complainant was founded in 1996 and has invested more than USD 165 million in more than 200 companies.
The Complainant states that it owns common law trade mark rights in NEW YORK CITY INVESTMENT FUND (the “Trade Mark”). The Complainant owns domain names which incorporates the Trade Mark (as an acronym in the form of “NYCIF”), being and .
The Respondent is Markus Pedigral, an individual of the Philippines. The Respondent did not file a Response, and consequently little information is known about the Respondent. The Respondent registered the Disputed Domain Name on August 2, 2017. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Complainant is well known and recognized in the field of venture investing. The Complainant has received a large amount of media attention since it was founded and has been recognized as a top investment fund. The Complainant claims that it has common law rights in the Trade Mark based on 20 years of exclusive use.
The Disputed Domain Name is confusingly similar to the Complainant’s Trade Mark. The Respondent’s addition of “group” to the Disputed Domain Name does not distinguish it from the Trade Mark.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name. This is because the Respondent:
- is not a current or former employee of the Complainant and is not associated with the Complainant;
- is not commonly known by the Disputed Domain Name;
- has never sought nor obtained consent from the Complainant to use the Trade Mark in the Disputed Domain Name;
- is not registered with the United States Securities and Exchange Commission; despite alleging to be a premier investment management firm; and
- does not appear to operate a viable business at the Disputed Domain Name.
There is no evidence that the Respondent has used or is preparing to use the Disputed Domain Name in connection with a bona fide offering of goods and services.
Registered or Used in Bad Faith
The Respondent registered and is using the Disputed Domain Name in bad faith. This is because the Respondent purports to offer services in the same field as the Complainant and displays the Trade Mark within its website at the Disputed Domain Name. The Respondent uses the Complainant’s actual headquarters address as contact information for the Respondent’s own business address. Further, the details on the website at the Disputed Domain Name are inconsistent and untrue.
The United States Securities and Exchange Commission has put the Respondent on a list of “unregistered soliciting entities” that are “impersonating genuine and former US registered securities firms”. The Complainant sent the Respondent a cease and desist letter on March 27, 2018 to which the Respondent has not replied. The Respondent’s use of a confusingly similar variation of the Trade Mark with such knowledge of the Complainant’s existence constitutes bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Mark.
To establish unregistered or common law trademark rights for purposes of the UDRP, a complainant must show that its mark has become a distinctive identifier which consumers associate with that complainant’s goods and/or services (see section 1.3, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In this case, the Complainant has submitted that it has rights in the Trade Mark as a result of 20 years of exclusive use as well as consistent publicity and attention from the media and international corporations. The Complainant has provided evidence of media attention and recognition from other entities, and that it is commonly known by its acronym, “NYCIF”. Based on evidence from the Complainant and the Panel’s own Internet searches, the Panel considers that the Complainant has a sufficient reputation to demonstrate common law rights in the term “NYCIF”.
Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see section 1.7 of the WIPO Overview 3.0). In this case, the Disputed Domain Name consists of an acronym of the registered Trade Mark or the related common law Trade Mark, which the Panel considers to be confusingly similar to the Trade Mark. Further, the addition of the word “group” does not distinguish the Disputed Domain Name from the Trade Mark.
The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law rights in relation to the Trade Mark.
- The Respondent, who is from the Philippines, does not appear to have any connection with New York City.
- There is no evidence that the Respondent has been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain.
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. At the time the Complaint was filed, the Disputed Domain Name resolved to a website where the Respondent claimed to be a “premier investment management firm serving a variety of sectors”. The Complainant has stated that if this were the case the Respondent would be listed on the United States Securities and Exchange Commission. As submitted by the Complainant, the Panel considers that it is likely that the Respondent is not operating a legitimate business and is potentially involved in a phishing or some other financial scam. Phishing websites are illegal in most jurisdictions and cannot amount to a bona fide offering of goods or services (see the WIPO Overview 3.0, section 2.13, and e.g. Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679).
The Respondent had the opportunity to provide evidence of his rights or legitimate interests in the Disputed Domain Name but has not done so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
The Panel accepts the Complainant’s submission that it is highly likely the Respondent registered the Disputed Domain Names with the Complainant in mind. The Complainant has used the Trade Mark since 1996 and has a strong reputation in the Trade Mark in the United States.
If circumstances indicate that the respondent’s intent in registering the disputed domain name was to profit in some fashion from, or otherwise exploit, the complainant’s trade mark, panels will find bad faith on the part of the respondent (see section 3.1.1 of the WIPO Overview 3.0). The Respondent’s use of the website at the Disputed Domain Name, to fraudulently market itself as an investment management firm, indicates that the Respondent is attempting to exploit the Complainants’ Trade Mark. The Respondent has also used the Complainant’s address and has incomplete and inconsistent details listed on its website. In light of this, the Panel can reasonably infer that the website at the Disputed Domain Name is being used for some illegitimate purpose, and potentially in connection with fraudulent activity. This is bad faith under the Policy.
In the circumstances, the Panel considers it likely that the Respondent registered the Disputed Domain Name with the Complainant in mind, to trade off the Complainant’s reputation and Trade Mark. By using the Disputed Domain name in this way, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s Trade Mark. This is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Given the above, and in the absence of a Response or any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element 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.
John Swinson
Sole Panelist
Date: October 9, 2018
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