The Complainant is Cheyne Capital Holdings Limited, British Virgin Islands, represented by Dechert, United Kingdom.
The Respondent is Contact Privacy Inc. Customer 1241797044, Canada / Michael Jacoby, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2019. On April 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 29, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 3, 2019.
The Center verified that the Complaint together with the amended 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 May 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2019.
The Center appointed Nicholas Weston as the sole panelist in this matter on June 3, 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 operates a funds management business founded in 2000 with offices in North America, London, Switzerland, and Bermuda. The Complainant holds registrations for the trademark CHEYNE in the United States, United Kingdom, European Union and Canada which it uses to designate a range of services in class 36. One registration, United Kingdom trademark registration No. 2217132 for the mark CHEYNE is registered on June 9, 2000, in class 36 for “investment and unit trust management services; merchant banking services; advisory services relating to corporate finance; corporate and private banking advisory services; trusteeship; real estate management and advisory services relating thereto; venture capital and project capital investment services; securities brokerage services; financing services for the securing of funds for others for the provision of loans or for the purchase of equities; insurance and mortgage advisory services; financial management; fund investment services; unit trust services; investment and valuation services; credit card and debit card services; insurance underwriting; but not including medical insurance underwriting.”
The Respondent registered the disputed domain name (“Disputed Domain Name”) on October 8, 2017. The Disputed Domain Name resolves to a Google search engine page. 5. Parties’ Contentions A. Complainant
The Complainant cites several trademark registrations, including the United Kingdom trademark registration No. 2217132 for the mark CHEYNE registered on June 9, 2000, as evidence of ownership.
The Complainant submits that the mark CHEYNE is distinctive and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the CHEYNE trademark and that the similarity is not removed by the additional word “bloch” or the addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it has not, after 18 months of registration, commercialized any services or products in connection with it and registered it more than 15 years after the Complainant registered its trademarks. The Complainant notes that the associated website is currently inactive and “passively held”, and contends that the Respondent, having no connection by way of commercial or other interests which could relate its business with the CHEYNE business, has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules, having regard to the distinctiveness and long standing prior use of the Complainant’s trademarks. The Complainant submits that “the Respondent had at least constructive, if not actual, knowledge of the Complainant's rights in the trademark when the Respondent registered the Disputed Domain Name and since then. To have proceeded with registration knowing of the Complainant's rights demonstrates the Respondent's bad faith, citing Option One Mortgage Corporation v. Option Once Lending,WIPO Case No. D2004-1052.” 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 has the burden of proving the following:
(i) that the Disputed Domain Name 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 Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has produced evidence to demonstrate that it has registered trademark rights in the mark CHEYNE in numerous jurisdictions including the United States, the Respondent’s location. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see, Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the CHEYNE trademark, the Panel observes that the Disputed Domain Name comprises: (a) the word “bloch”; (b) followed by an exact reproduction of the Complainant’s trademark CHEYNE; (c) followed by the gTLD “.com”.
It is well-established that the gTLD is a technical part of a domain name and may be disregarded for the purposes of finding confusing similarity between the Disputed Domain Name and the Complainant’s trademark (see, Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “blochcheyne”.
It is also well established that where a domain name wholly incorporates a complainant’s trademark in its entirety, it can be confusingly similar to that mark (see: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Wal-Mart Stores, Inc. v. WalMart Careers, Inc.,WIPO Case No. D2012-0285; Statoil ASA v. Weiwei Qiu / PrivacyP,WIPO Case No. D2011-1752; Statoil ASA v. Domain Admin / Management SO Hkg,WIPO Case No. D2012-2392). The Disputed Domain Name incorporates the trademark CHEYNE, which is owned and has been commercially used and promoted by the Complainant for many years.
This Panel has considered the phonetic similarity of the Disputed Domain Name to the generic term “blockchain” and makes a few observations. First, the trademark CHEYNE is registered for financial related services. The fact that the block chain describes an open, distributed, secure-by-design ledger of cryptographically linked electronic records often associated with financial transactions, in this Panel’s view, compounds the potential for confusion, rather than mitigates that possibility. Second, the relevant trademark is recognizable within the Disputed Domain Name, so the descriptive secondary meaning does not, in this Panel’s view, prevent a finding of confusing similarity under the first element. Third, the additional word “bloch” in the Disputed Domain Name is itself a registered trade mark owned by a third party.1 Other previous UDRP panels have found that the presence, in a particular disputed domain name, of a trademark owned by a third party not joined in the proceeding, does not by itself prevent a finding of confusing similarity (see, for example: Cummins Inc. v. Dennis Goebel,WIPO Case No. D2015-1064; Aldi GmbH & Co. KG, Aldi Stores Limited v. Ronan Barrett,WIPO Case No. D2016-2219). In this case, both trademarks are recognizable both visually and aurally in the Disputed Domain Name and the Respondent has failed to submit any evidence of secondary meaning.
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or a legitimate interest in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that once the Complainant puts forward a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production shifts to the Respondent to rebut that prima facie case (see, World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services.
The Complainant has alleged and the Respondent has failed to deny that the Respondent has no legitimate interests in respect of the Disputed Domain Name (see, Teledesic LLC v. McDougal Design,WIPO Case No. D2000-0620; Alcoholics Anonymous World Services, Inc. v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic. A.S.,WIPO Case No. D2000-0011).
This Panel accepts that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and, in the absence of a reply by the Respondent, the Panel finds for the Complainant on paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy requires the Complainant to also demonstrate that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent has registered and used the Disputed Domain Name in bad faith.
On the issue of registration, the Panel finds the trademark CHEYNE is so widely known in the field of funds management, that it is inconceivable that the Respondent might have registered a domain name containing this mark without knowing of it. In this Panel’s view, the Respondent’s conduct indicates prior knowledge of the Complainant’s trademark rights and warrants an adverse inference to be drawn (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, where the panel found that a claim that the domain name at issue, , could have been registered without knowledge of the complainant’s trademark, was not just implausible, but incredible). In this case, the Respondent registered the Disputed Domain Name on October 8, 2017, more than 17 years after the Complainant first established trademark rights in the CHEYNE mark via United Kingdom Registration No. 2217132 registered on June 9, 2000.
Further, a gap of ten years between registration of a complainant’s trademarks and a respondent’s registration of the disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of registration in bad faith (see, Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415).
On the issue of use, the evidence that the Disputed Domain Name resolves to a website with a Google search engine page, identical to that hosted by search engine provider Google, Inc., itself. The Complainant relies on eBay Inc. v. Sunho Hong,WIPO Case No. D2000-1633 in support of the contention that registration together with use for a illegitimate purpose and other facts can constitute bad faith use. This Panel does not regard hosting yet another copy of the Google search page as an illegitimate purpose but finds it adds no value to the Internet and as such is ‘passive’ use. Numerous previous panels, citing Telstra Corporation Limited v. Nuclear Marshmallows, supra, have held that bad faith may exist even in cases involving passive holding. However, in view of the implausibility of any good faith use to which the Disputed Domain Name may be put and absence of a Response, this Panel accepts the Complainant’s submission in relation to bad faith use.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) 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.
Nicholas Weston
Sole Panelist
Date: June 23, 2019
This Panel conducted a trade mark search at IP Australia for the word “bloch” which retuned, amongst other examples, registered Australian Trade Mark No. 885017 for the trademark BLOCH, registered to owner J Bloch Pty Ltd from August 7, 2001 in class 35.
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