The Complainant is W & S Brokerage Services, Inc., United States of America (“United States”), represented by Vorys, Sater, Seymour and Pease, LLP, United States.
The Respondent is WhoisGuard, Inc., Panama / Mercedita Bautista, China. 2. The Domain Name and Registrar
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 July 3, 2019. On July 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2019, 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 July 8, 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 July 9, 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 July 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent’s default on July 31, 2019.
The Center appointed Jane Seager as the sole panelist in this matter on August 21, 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 W & S Brokerage Services, Inc., a United States corporation based in Cincinnati, Ohio. The Complainant is an affiliate of the Western and Southern Life Insurance Company, which forms part of the Western & Southern Financial Group – a diversified family of financial-services companies whose commercial operations date back to the 1880s. The Complainant’s business is focused on buying and selling securities such as stocks, bonds, mutual funds, and certain other investment products.
For use in connection with the Complainant’s financial-service offerings, the Complainant owns the following trademark registration:1
- United States Trademark Registration No. 3586735, W&S (stylized – the mark consists of the letters “W&S” in a circle), registered on March 10, 2009.
The disputed domain name was registered on January 28, 2019. At the time of filing the Complaint, the disputed domain name resolved to a website titled “W&S Brokerage Services, Inc.” that advertised various financial services (the “Respondent’s website”). The disputed domain name has been used in connection with a fraudulent scheme in an attempt to obtain personal financial information from clients of the Complainant. At the time of this decision, the disputed domain name no longer resolves to an active website. 5. Parties’ Contentions A. Complainant
The Complainant asserts rights in the W&S trademark registered in the United States by its affiliate, Western and Southern Life Insurance Company Corporation. In addition to the Complainant’s registered W&S trademark, the Complainant asserts common law rights in “W&S BROKERAGE SERVICES” claiming that it has become a distinctive identifier that the public and regulatory agencies associate with the Complainant’s goods and services. The Complainant provides evidence from both internal and external sources in support of its claim of common law trademark rights. The Complainant claims to have been using “W&S BROKERAGE SERVICES” as a common law trademark since 2006.
The Complainant submits that the disputed domain name is confusingly similar to its registered and common law trademarks, noting that the disputed domain name incorporates the entirety of the W&S mark, omitting the ampersand, as well as a variation of the Complainant’s common law trademark, whereby the word “brokerage” is replaced by the letter “b”.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. Rather, the Respondent is engaged in a fraudulent scheme in which it represents itself to the public as the Complainant in targeted communications soliciting the recipient to allow “W&S Brokerage Services” to purchase certain stocks and requesting financial information. As such, the Respondent is trying to pass itself off as the Complainant in an effort to defraud the public.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant cites paragraph 4(b)(iv) of the Policy, and states that the Respondent has acted in such a manner by using the Complainant’s trademarks in order to trade on the Complainant’s goodwill. The Complainant asserts that the Respondent’s website aims to create a veneer of authenticity in the furtherance of the Respondent’s fraudulent scheme. The Complainant states that it has contacted relevant regulatory and law-enforcement agencies in relation to the Respondent’s actions.
The Complainant requests transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to prevail in its Complaint, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the W&S trademark by virtue of its registration and use in connection with its financial services, the details of which are provided in the factual background section above. The Panel further finds that the Complainant has provided evidence of its use of “W&S BROKERAGE SERVICES” sufficient to establish common law trademark rights in the same for the purposes of the present Complaint.
The disputed domain name incorporates the dominant elements of the Complainant’s W&S trademark as its leading element, omitting the ampersand, together with the addition of “bservices” under the generic Top‑Level Domain (“gTLD”) “.com”. As noted in WIPO Overview 3.0, section 1.7:
“[…] [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
In addition, the disputed domain name incorporates the Complainant’s W&S BROKERAGE SERVICES trademark (in which it has established common law trademark rights), omitting the ampersand and replacing the term “brokerage” with the letter “b”. Noting the use of the disputed domain name to target the Complainant’s customers and that the dominant elements of the Complainant’s common law trademark are recognizable in the disputed domain name, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s common law trademark.
The gTLD “.com” may be disregarded for the purposes of comparison under the first element, see WIPO Overview 3.0, section 1.11.1.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
According to the Complainant, the Respondent has approached specific individuals, claiming to represent the Complainant, offering to purchase stock ownership of specific companies from such individuals. In doing so, the Respondent has provided comprehensive, albeit fake, purchase documents. Such documents request the Respondent’s victims to provide comprehensive financial information for the purported payment of monies in consideration of the sale of their stock holdings. In order to lend a veneer of authenticity to the Respondent’s fraudulent scheme, the Respondent has registered the disputed domain name and posted a fake website purporting to be that of a bona fide financial services company. The Respondent has even gone so far as to create a website of a fictitious financial regulator. The Panel further notes that the abovementioned purchase documents include a physical address corresponding to the Complainant’s address.
The Panel finds that the Respondent is engaged in a fraudulent scheme aimed at defrauding the Complainant’s clients. It is clear that the Respondent has sought to impersonate the Complainant. As noted in, section 2.13:
“Panels have categorically held that the use of a domain name for illegal activity (e.g., […], phishing, […], impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”
The Respondent has not come forward to rebut the Complainant’s evidence in any way.
In light of the foregoing, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The evidence on record clearly shows that the Respondent targeted the Complainant when registering the disputed domain name. The Panel notes the use to which the disputed domain name has been put, as described above, and finds that the Respondent has sought to create a misleading impression of association with the Complainant in order to convince unsuspecting individuals that they are dealing with the Complainant in an attempt to obtain such individuals’ personal financial information. The disputed domain name and the Respondent’s website appear to be instrumental in the furtherance of the Respondent’s fraudulent scheme. As noted in WIPO Overview 3.0, section 3.1.4:
“[G]iven that the use of a domain name for per se illegal activity […] can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.”
For reasons set out above, the Panel finds that the Complainant has 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.
Jane Seager
Sole Panelist
Date: September 4, 2019
1 The Panel notes that the abovementioned trademark is in fact held by the Complainant’s affiliate company Western and Southern Life Insurance Company Corporation, which owns over 75 percent of the Complainant. Noting that the Complainant enjoys the right to use the abovementioned trademark in connection with its offering of financial services, the fact that the Complainant’s primary shareholder is the owner of the trademark, and further noting the manner in which the Respondent’s conduct has affected the Complainant, the Panel finds that the Complainant has rights in the W&S trademark for the purposes of standing to file the present Complaint. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4.
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