Complainant is Massachusetts Financial Services Company, United States of America (“United States”), represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States.
Respondent is WhoisGuard, Inc., Panama / Michael Anderson, Como, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2019. On October 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 14, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 14, 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 Respondent of the Complaint, and the proceedings commenced on October 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 21, 2019. The Center appointed Robert A. Badgley as the sole panelist in this matter on November 27, 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 According to Complainant, it “established the first mutual fund in the United States,” and thereby “helped make the U.S. Stock market, previously the exclusive domain of the wealthy, accessible to the average investor”. As of August 31, 2019, Complainant had more than USD 489 billion in assets under management. Complainant has used MFS as a trade name and service mark for its financial products and services since 1969. Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MFS mark or MFS-formative marks, including USPTO Reg. No. 1233922 registered April 5, 1983. Complainant operates a website at “www.mfs.com”, a domain name it has owned since July 1994. The Domain Name was registered on September 3, 2018. The Domain Name resolves to a website that purports to offer financial services. The site uses Complainant’s MFS mark, and describes Respondent in terms that would suggest that the site belongs to Complainant. For instance, the site describes the history of MFS, including that it was founded in 1924 and was acquired in 1982 by Sun Life Financial of Canada. It also states that Respondent had USD 448.7 billion in assets under management as of April 30, 2017 – which corresponds to the assets managed by Complainant as of that date. Respondent’s site shows Respondent’s street address as Complainant’s address. In short, the site accurately describes Complainant’s history and characteristics, but it is not Complainant’s site. Complainant asserts that it has no connection with Respondent, and has never authorized Respondent to register the Domain Name or use the MFS mark for any purpose. Respondent’s site invites users to sign in and open an account. On September 10, 2019, Complainant sent a cease-and-desist letter to the Registrar (Respondent was using a privacy shield), which the Registrar forwarded to Respondent. No reply to Complainant’s letter was received. 5. Parties’ Contentions A. Complainant Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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. A. Identical or Confusingly Similar The Panel concludes that Complainant has rights in the mark MFS through longstanding registration and use demonstrated in the record. The Panel also finds that the Domain Name is identical to Complainant’s registered trademark. Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding (or earlier, in response to Complainant’s cease-and-desist letter) to articulate why he registered the Domain Name or otherwise explain his bona fides. As such, the undisputed record in this case indicates that Respondent registered the Domain Name with knowledge of Complainant and its MFS mark, and used the Domain Name to set up a bogus website pretending to be Complainant’s site and purporting to offer financial services like Complainant’s. Such conduct is clearly illegitimate under the UDRP. Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Name in bad faith under, at a minimum, the above-quoted Policy paragraph 4(b)(iv). Respondent plainly has targeted Complainant’s MFS mark. By posting facts on the website that actually describe Complainant’s history and characteristics, Respondent obviously targeted Complainant and its MFS trademark. Respondent has used the Domain Name to operate a commercial, and perhaps fraudulent, website by holding himself out as Complainant, purporting to offer the same financial services as Complainant offers, and soliciting members to sign in (which act typically involves divulging confidential information). This is clear bad faith registration and use under paragraph 4(b)(iv). Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name Robert A. Badgley
Sole Panelist
Date: December 4, 2019
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