The Complainant is T. Rowe Price Group, United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is Domain Administrator, Fundacion Privacy Services Ltd, Panama. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Media Elite Holdings Limited dba Register Matrix (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 16, 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 originally registered on August 6, 2004. The registrant changed in November 2008, February 2009, December 2011, February 2013, July 2014 and was acquired by the Respondent on July 16, 2018. It currently redirects Internet users to a website of a competitor of the Complainant, from which that competitor offers financial products and services that compete with the Complaint’s products and services. 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 letter “r” in between “Rowe” and “Price” at the second level of the Domain Name, 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 redirects Internet users to a website of a competitor offering visitors retirement and other financial services in competition with those offered by the Complainant, and does so via the services of web traffic monetisation platforms which likely generate pass-through fees for the Respondent and as such does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use.
Furthermore, the Domain Name is listed for sale through a domain name marketplace.
The Complainant asserts that the Respondent has never been authorised by the Complainant to use the Mark, in any manner, 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.
Finally, the Complainant contends that, given the Respondent’s undoubted knowledge of the Mark and the Respondent’s clear targeting of the Mark via typo-squatting, 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 an “r” 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, 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 that the redirection of Internet users to a website of a competitor (which in turn offers visitors retirement and other financial services in competition with those offered by the Complainant), via the services of web traffic monetisation platforms which likely generate pass-through fees for the Respondent, does not 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
Section 3.9 of the WIPO Overview 3.0 states, in relevant part, that “the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith”. Therefore the relevant date for assessing whether the Respondent registered the Domain Name in bad faith in this Complaint is July 16, 2018.
By that date, 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 redirection of the Domain Name to the website of a competitor of the Complainant 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, for profit and in competition with the Complainant, 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 to make a profit by confusing Internet users into using pass-through monetisation platforms, 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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