The Complainant is T. Rowe Price Group, Inc., United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with TLD Registrar Solutions Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2019. On April 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 15, 2019, 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 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2019.
The Center appointed Gareth Dickson as the sole panelist in this matter on May 24, 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
The Complainant is T. Rowe Price Group, Inc., a United States corporation with its global headquarters in Baltimore, Maryland. It offers a range of global investment management products, tools, and services.
The Complainant has used the trade mark T. ROWE PRICE in the United States since 1937 and is also the owner of a number of trade mark registrations for T. ROWE PRICE including United States registration number 2785262, registered on November 25, 2003, and European Union trade mark number 002176642, registered on September 30, 2002 (the “Mark”).
The Domain Name was registered on March 13, 2019. The Domain Name currently fails to resolve to an active website but has been used in email addresses appearing to attempt to impersonate personnel of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name is confusingly similar to its T. ROWE PRICE mark since the only difference between it and the Domain Name are the absence of a “.” in the Domain Name, the insertion of the geographically descriptive “uk”, which is the two-letter country-code Top-Level Domain (“ccTLD”) for the United Kingdom (where the Complainant conducts business and has trade mark protection for the Mark), and the addition of the generic Top-Level Domain (“gTLD”) suffix “.com”. The Mark remains the dominant or principal component of the Domain Name and this is a classic case of typo-squatting.
The Complainant also submits that the Respondent has no rights or legitimate interest in the Domain Name since it has been used to perpetrate an illegal phishing and fraud scheme. Thus, the Domain Name is not used in connection with any bona fide sale of goods or services.
The Complainant asserts that the Respondent has never been authorised by the Complainant to use the Mark and that the Domain Name does not reflect the Respondent’s common name or organisation name. It contends that the Respondent must have been aware of the T. ROWE PRICE brand since the Domain Name is only valuable because of its association with that brand, on which the Respondent sought to capitalise financially by creating a likelihood of confusion with the Mark.
The Complainant also argues that the Respondent’s registration and use of the Domain Name constitutes bad faith under paragraph 4(b)(iii) of the Policy in that the Respondent has impersonated personnel of the Complainant to offer fraudulent investment products for sale that purport to be affiliated with the Complainant. This alleged phishing and fraud campaign not only targets clients and prospective clients of the Complainant and tarnishes the Complainant’s name, but is also done in opposition to the Complainant and is disruptive to the Complainant’s business, therefore evidencing bad faith under paragraph 4(b)(iii) of the Policy.
By engaging in alleged phishing and fraud, the Complainant contends that the Respondent is seeking to mislead Internet users and take advantage of the confusion caused by the similarity of the Domain Name to the Mark, and of the services referred to by the Respondent to those offered by the Complainant. Accordingly it must be found to have registered and used the Domain Name in bad faith.
Finally, the Complainant contends that, given the Respondent’s undoubted knowledge of the Mark and use of the Domain Name to impersonate the Complainant, the Respondent has registered and is using the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the 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.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel therefore accepts that the Domain Name is confusingly similar to the Mark since the trade mark T. ROWE PRICE is recognisable within the Domain Name. The removal of the symbol “.” and the addition of “uk” to the Mark in the Domain Name do not in any way prevent a finding of confusing similarity.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes 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.
In the current proceeding, and although the nature of the alleged phishing and fraudulent activity of the Respondent is not clear from the Complaint or its supporting documents, the Complainant has established its prima facie case. It states that it has never authorised the Respondent to use the Mark, in a domain name or otherwise, and submits that the Domain Name does not reflect the Respondent’s common name or organisation name. The Complainant also submits evidence of emails having been sent from a party identifying itself by reference to the Domain Name and referring to financial investments, i.e. the Complainant’s business. Although these are not conclusive as to the nature of the emails (since relevant information is either redacted or missing), the Panel accepts that they likely were sent by the Respondent and cannot constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”.
Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
As at the date of registration of the Domain Name, the Mark had been in use for over 80 years and had been registered at a variety of trade mark offices around the world, including in the United States and in the European Union. It is evident that the Domain Name has no meaning other than as a reference to the Complainant’s Mark and the use of the Domain Name in email addresses in order to give the appearance that those emails have come from the Complainant, contrary to the fact, puts it beyond any doubt that the Respondent was aware of the Complainant’s rights in the Mark when it acquired the Domain Name. The Panel therefore finds that the Respondent’s registration of the Domain Name was in bad faith.
The Panel also finds that the Domain Name is being used in bad faith. The unauthorised use of the Mark, whether for phishing or fraud or simply to tarnish the Complainant’s name, is inconsistent with the Complainant’s exclusive rights in that mark. The Panel finds that by its incorporation of the Complainant’s Mark in the Domain Name and its use of the Domain Name in email addresses and to impersonate personnel of the Complainant, the Domain Name is being used in order to misrepresent itself as being sponsored, affiliated or endorsed by the Complainant, and to deceive Internet users as to the affiliation, connection, or association of the related website with the Complainant.
As a result of the above, the Panel finds that the Domain Name has been registered and is being 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 name, be transferred to the Complainant.
Gareth Dickson
Sole Panelist
Date: June 7, 2019
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