The Complainant is T. Rowe Price Group, Inc. of Baltimore, Maryland, United States of America (“United States”) (hereinafter “Complainant”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is M Nguyen, TLD (hereinafter “Respondent”) of Boston, Massachusetts, United States. 2. The Domain Names and Registrar
The disputed domain names and (hereinafter (“the disputed domain names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2019. On April 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 10, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain names.
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 Respondent of the Complaint, and the proceedings commenced on April 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 6, 2019.
On May 6 and May 7, 2019, Respondent sent several email communications to the Center, stating “We did reply. We asked where to transfer the domain or should we just release it?” and attaching a signed settlement form. The Center sent the possible settlement email to the Parties on May 6, 2019. Complainant sent an email communication to the Center on May 8, 2019, indicating that it did not intend to suspend the proceedings to discuss settlement.
The Center appointed M. Scott Donahey as the sole panelist in this matter on May 9, 2019. 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 was founded in 1937 and is headquartered in Baltimore, Maryland, USA. Complainant offers global investment management products, tools and services. As of 2018, Complainant employed 571 investment professionals worldwide and had USD 1,02 trillion in total assets under management, employed 187 fixed income professionals with USD 135,8 billion in fixed income assets, and employed 326 equity professionals with USD 579,3 billion in equity assets. As of June 2018, having offices around the world, Complainant ranked as the 15th largest asset management firm in the world (Complaint Annex 4).
Complainant’s famous T. ROWE PRICE trademark and service mark has been used by Complainant in the United States since 1937 and has been registered with the United States Patent and Trademark Office since as early as June 21, 1988 (Complaint Annex 5). Complainant has registered numerous domain names including its famous T. ROWE PRICE trademark, the earliest of which was registered on July 6, 1995, at which time the domain name was registered and was used in Complainant’s business (Complaint, Annexes 6 and 7).
Respondent registered the disputed domain name on January 4, 2017 and the disputed domain name on January 5, 2017 (Complaint, Annex 1). Respondent is using the disputed domain names to resolve to nearly identical websites for sale, both of which contain keywords associated with Complainant and Complainant’s competitors, offer advertising space on the website, offers the disputed domain names for sale or rent, and advertises Respondent’s “Internet Investors, Developers and Franchisers” business (Complaint, Annex 9). Respondent also offers the disputed domain names for sale on the Afternic domain name marketplace at a starting price of
USD 99,999.00 per domain name (Complaint, Annexes 9 and 10). 5. Parties’ Contentions A. Complainant
Complainant argues that each of the disputed domain names is confusingly similar to Complainant’s trademarks and service mark. Complainant asserts that Complainant has never authorized Respondent to use the disputed domain names or Complainant’s trademarks, in any manner, that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names do not reflect Respondent’s personal name or his business name. Complainant asserts that the disputed domain names have been registered and are being used in bad faith in that Respondent is using the disputed domain names to resolve to almost identical web sites to offer ad space for sale, the rental or sale of the disputed domain names, to advertise Respondent’s own business, and to offer the disputed domain names for sale for an amount far in excess of the cost of registration. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
“A Panel shall 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 directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent 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 domain name; and,
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain names each include Complainant’s famous T. ROWE PRICE trademarks and service marks together with, in one case the singular English word, “investment,” and in the other case the plural English word “investments.” In each case, the domain name refers to Complainant’s famous trademarks and service mark together with a word descriptive of Complainant’s business. Accordingly, the Panel finds that each of the disputed domain names is confusingly similar to Complainant’s T. ROWE PRICE trademarks and service marks. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
Respondent is using the disputed domain names to resolve to almost identical web sites which includes keywords associated both with Complainant and with Complainant’s competitors, offers advertising space on the web sites for sale, and offers to sell the disputed domain names for a price far in excess of the cost incurred in registration and exploitation of the disputed domain names. Therefore, the Panel finds that each of the disputed domain names has been registered and used 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 names, and , be transferred to Complainant.
M. Scott Donahey
Sole Panelist
Date: May 14, 2019
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