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 Administrator, Fundacion Privacy Services LTD, Panama. 2. The Domain Name and Registrar
The disputed 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 July 29, 2019. On July 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 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 August 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2019.
The Center appointed Jane Lambert as the sole panelist in this matter on August 29, 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 a publicly-owned asset management firm which is incorporated and has its principal place of business in Maryland in the United States. It was founded by Thomas Rowe Price, Jr. in 1937. It offers directly or through intermediaries global investment management products, tools, and services, including mutual funds, subadvisory services, separate account management, recordkeeping, and related services for individuals, institutions, retirement plan sponsors, and financial intermediaries.
As of June 2019, the Complainant employed 603 investment professionals around the world. It had USD 1.07 trillion in total assets under management. It employed 196 fixed income professionals with USD 140.9 billion in fixed income assets, and employed 343 equity professionals with USD 621.6 billion in equity assets.
As of June 2018, the Complainant ranked as the 15th largest asset management firm in the world by assets under management. It has subsidiaries in Australia, Denmark, Germany, Hong Kong, China, Italy, Japan, Luxembourg, the Netherlands, Singapore, Spain, Sweden, United Arab Emirates, the United Kingdom and a number of other countries.
The Complainant has used the mark T. ROWE PRICE as a trade mark or service mark for goods and/or services in the United States since 1937. It applied to register that mark with the United States Patent and Trademark Office (“USPTO”) for mutual fund investment services in class 36 on July 16, 1987, and its application was granted under registration number 1493517 on June 21, 1988. Since then it has registered the same mark for other goods and services in the USPTO and other trade mark registries around the world. Evidence of those registrations is appended to the Complaint in Annex 5.
The Complainant has promoted its services over the Internet under a number of domain names including , , and . Evidence of those domain name registrations also accompanies the Complaint as Annex 6.
In 2018, Fortune Magazine ranked T. Rowe Price third in its industry among the “World’s Most Admired Companies”. In 2017, Barron’s rated T. Rowe Price as having the third-best fund family in terms of actively managed mutual and exchange-traded funds. In addition, the T. ROWE PRICE Marks are frequently mentioned in top periodicals and other news sources in the United States and around the world and accessible to Internet users in the United States and elsewhere. Evidence of those rankings and other distinctions appears in Annex 8.
The disputed domain name has been used to resolve to a website for Fidelity Investments, and specifically various webpages offering retirement and IRA related services, which are substantially similar to services provided by the Complainant under its T. ROWE PRICE marks. The content located at the above-mentioned website is redirected via , , and other web traffic monetization platforms. Evidence of the use of the disputed domain name appears in Annex 9.
The Complainant has exhibited evidence in Annex 10 to the Complaint that the disputed domain name has been offered for sale through Sedo with a minimum price of USD 500.
The Respondent was unsuccessful in similar proceedings that had been launched against it such as T. Rowe Price Group, Inc. v. Domain Administrator, Fundacion Privacy Services Ltd,WIPO Case No. D2019-0839 and Toyota Motor Sales, U.S.A., Inc. v. Domain Administrator, Fundacion Privacy Services LTD,WIPO Case No. D2018-0338. 5. Parties’ Contentions A. Complainant
The Complainant seeks the transfer of the disputed domain name on the grounds that:
a. the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
b. the registrant has no rights or legitimate interests in respect of the disputed domain name; and
c. the disputed domain name has been registered and is being used in bad faith.
As to the first ground, the Complainant submits that the disputed domain name differs from the trade marks mentioned in paragraph 4 only by the submission of the letter “t” for “p” and the generic Top-Level Domain (“gTLD”) “.com”. There is obvious similarity and the misspelling is likely to be confusing.
With regard to the second, the Complainant avers that it has never authorized the Respondent to use its marks in any manner and certainly not as part of the disputed domain name. The Respondent would have needed the Complainant’s authorization for such use in view of its worldwide trade mark registrations and goodwill by reference to its marks and corporate name. The Respondent is not commonly known by the disputed domain name. None of the other justifications in paragraph 4(c) of the Policy applies.
In respect of the third ground, the Complainant refers to paragraph 4(b) of the Policy and contends that all four sub-paragraphs apply. It points to the marketing of the disputed domain name on Sedo as evidence of an intention to sell the disputed domain name to the Complainant or a competitor at an inflated price, the proceedings mentioned in paragraph 4 as evidence of a “pattern” of conduct and the use of the disputed domain name to resolve to a website that supplies financial services. The Complainant adds that the registration and use of a domain name that is similar to a mark that has a reputation and goodwill around the world and the use of a privacy service are themselves acts of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The agreement by which the Respondent registered the disputed domain name incorporated by reference paragraph 4(a) of the Policy:
“a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.” A. Identical or Confusingly Similar
The Panel finds that the first element is present.
The Complainant is the registered proprietor of the T. ROWE PRICE trade mark which has been registered with the USPTO for mutual fund investment services in class 36 under registration number 1493517 since June 21, 1988. That is therefore a trade mark in which the Complainant has rights.
The disputed domain name differs from that trade mark only in the substitution of the letter “t” for “p” and the addition of the gTLD “.com”. Neither of those differences prevent a finding of confusing similarity. B. Rights or Legitimate Interests
The Panel finds that the second element is present.
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes:
“While the overall burden of proof in UDRP proceedings is on the complainant, 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.”
Paragraph 4(c) of the Policy lists a number of circumstances in which a respondent can show that it has rights or legitimate interests in a disputed domain name. In its complaint, the Complainant has considered each of those circumstances and has found no grounds for supposing that any of them applies. In view of the worldwide registration of the T. ROWE PRICE mark and the goodwill and reputation that the Complainant enjoys in that mark in relation to financial services it is hard to see how any other business could lawfully use the same or similar mark without the Complainant’s licence and the Complainant has denied in terms that it has licensed such use. The Complainant has therefore made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The burden now falls on the Respondent to show that it has rights or legitimate interests in the disputed domain name and it has been afforded ample opportunity to do so in these proceedings. As it has not taken advantage of that opportunity it has failed to discharge its evidential burden. C. Registered and Used in Bad Faith
The Panel finds that the third element is present.
Paragraph 4(b) of the Policy provides:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds that the Respondent has created “a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site”. At paragraph 4 the Panel noted:
“The disputed domain name has been used to resolve to a website for Fidelity Investments, and specifically various webpages offering retirement and IRA related services, which are substantially similar to services provided by the Complainant under its T. ROWE PRICE marks. The content located at the above-mentioned website is redirected via , , and other web traffic monetization platforms.” The Complainant has asserted that while Fidelity and the Complainant offer competitive services, Fidelity and the Complainant are also partners insofar as Fidelity offers certain of the Complainant’s mutual funds through Fidelity’s own funds network. There is no evidence that the Respondent is affiliated with Fidelity.
At the very least the Respondent will have derived financial gain from the web traffic monetization platforms. That satisfies all the requirements of paragraph 4(b)(iv) of the Policy and is enough to dispose of this case.
The Panel also finds that the marketing of the disputed domain name on SEDO for USD 500 indicates that the Respondent is likely to have registered or acquired the disputed domain name primarily for the purpose of selling the disputed domain name registration to the Complainant or a competitor for valuable consideration in excess of its out-of-pocket costs directly related to the disputed domain name. That would satisfy the requirements of paragraph 4(b)(i) of the Policy.
The Panel also takes account of the previous UDRP decisions in which the Respondent was unsuccessful, the registration of a domain name that was confusingly similar to a well-known mark and the use of a privacy service.
Taken together there is ample evidence of registration and use of the disputed domain name in bad faith. The Respondent has been allowed an opportunity to rebut that evidence or otherwise justify its actions but has not made use of that opportunity. 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 Lambert
Sole Panelist
Date: September 13, 2019
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