The Complainant is AGF Management Limited, Canada, represented by Riches, McKenzie & Herbert LLP, Canada.
The Respondent is Vincent Murdoc, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2020. On February 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 4, 2020, 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 March 6, 2020 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 March 9, 2020. The Registrar also indicated that the language of the Registration Agreement was French. The Complaint was filed in English. The Center sent an email communication to the Complainant on March 6, 2020, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into French, or a request for English to be the language of proceedings. The Complainant filed a request for English to be the language of proceedings on March 9, 2020. In response to notifications by the Center that the amended Complaint was administratively deficient, the Complainant filed an amended Complaint on April 14, 2020. 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 in both English and French, and the proceedings commenced on April 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2020. The Center appointed Alistair Payne as the sole panelist in this matter on May 18, 2020. 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, based in Canada, has since approximately 1957 operated an independent and globally diverse financial services asset management firm. The Complainant and its subsidiaries operate in particular in Canada, Europe, Ireland, the United Kingdom and the United States of America and owns various trade mark registrations that include its AGF trade mark and by way of example, Canadian trade mark registration No. 185086 for AGF, registered on August 25, 1972 and European Union Trade Mark registration No. 13119664 for a combined logo and word mark that includes the AGF mark registered on January 6, 2015. The Complainant has owned the domain name The Respondent, based in Paris, registered the disputed domain name on November 14, 2019. According to the Complaint, the disputed domain name re-directs to a website branded “AGF Placement” which is in the French language and offers a range of investment services. On its contact page it lists its contact details as AGF International Advisors Company Ltd, Dublin, Ireland. 5. Parties’ Contentions A. Complainant The Complainant submits that it owns registered trade mark rights for its AGF mark as set out above. It says that the inclusion of its AGF mark in the disputed domain name is sufficient to render it confusingly similar to the Complainant’s trade mark and that the addition of “-placement” in the disputed domain name does not alter the position and only serves to confuse clients by implying that the Respondent is an investment company. The Complainant submits that the Respondent has not been commonly known by the disputed domain name, is not making a bona fide offering of goods and services in connection with the disputed domain name and is not making a legitimate non-commercial or fair use of the disputed domain name. It says that the Respondent has no rights to use the AGF mark and is not using it in good faith and has no rights or legitimate interests in the disputed domain name. It says that the Respondent’s conduct in diverting the disputed domain name to a website that is branded under the “AGF Placement” brand is not legitimate or bona fide. In this regard the Complainant notes that the Respondent purports to be an investment company and a subsidiary of the AGF International group with a contact address identical to the Complainant’s subsidiary’s contact address in Dublin and an identical REGAFI identifier number to the Complainant. In addition, the Complainant notes that in order to capitalize on this impersonation the Respondent’s website invites prospective clients to enter their email address and password through the “Espace Client” part of the site in order to make investments. The Complainant alleges that at least one of its clients has been deceived into investing in error in this way, which deception was only realized when the client tried to redeem funds from the Complainant only to find that those funds had never been received. The Complainant submits that the disputed domain name was registered in May 2018, many years after the Complainant first commenced business using the AGF mark (the WhoIs indicates that the creation date was November 14, 2019). It says that the Respondent registered the disputed domain name with the primary purpose of illegally misappropriating the Complainant’s identity in order to scam its clients and to obtain money fraudulently, which it says amounts to use in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the proceeding Paragraph 11(a) of the Rules indicates that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. In this case, the Complaint was submitted in English and the Registrar confirmed that the language of the registration agreement was French. The Complainant requested English to be the language of proceeding and the Respondent did not object for English to be the language of the proceeding and did not submit a reply. Noting that the proceeding was notified in both French and English and that Respondent decided not to submit a response, the Panel accepts Complainant’s request to issue a decision in English. B. Identical or Confusingly Similar The Complainant has demonstrated that it owns registered trade mark rights for its AGF trade mark and in particular Canadian word mark registration No. 185086 for AGF, registered on August 25, 1972. The disputed domain name wholly incorporates the Complainant’s AGF trade mark and is therefore confusingly similar to it. The fact that the term “-placement” is included in the disputed domain name after “AGF” but before the “.com” generic top-level domain name t does not detract from this assessment. As a result, the Complaint succeeds under the first element of the Policy. C. Rights or Legitimate Interests The Complainant has submitted that the Respondent has not been commonly known by the disputed domain name, is not making a bona fide offering of goods and services in connection with the disputed domain name and is not making a legitimate non-commercial or fair use of the disputed domain name. In addition the Complainant asserts that the Respondent has no rights to use the AGF mark and is not using it in good faith. Based upon the Complainant’s submissions and the evidence submitted in support, it appears that at the time of filing this Complaint the disputed domain name diverted to a website that was branded as “AGF Placement” and that featured the contact physical address of the Complainant’s Dublin subsidiary. Although the disputed domain name now appears to divert to a placekeeper site, it seems that prior to the filing of this Complaint and as further described under Part C below, the Respondent had been using the disputed domain name to divert to a website that masqueraded as if it was a website of the Complainant’s. This is neither legitimate nor bona fide conduct. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In circumstances that the Respondent has failed to rebut this case, the Panel finds that the Complaint also succeeds under this element of the Policy. D. Registered and Used in Bad Faith The disputed domain name was registered in November 14, 2019, many decades after the Complaint commenced its business under and registered its AGF trade mark. As noted above under Part B and as further described below, the fact that the Respondent has set up its website at the disputed domain name using the Complainant’s trade marks and address and investment identification details implies that the Respondent was most likely well aware of the Complainant’s business and AGF trade mark when it registered the disputed domain name. As discussed under Part B above, the website to which the disputed domain name re-directed at the time of filing of this Complaint purported to belong to, or to have some association with, the Complainant’s AGF group. The website not only uses the AGF mark in the context of the “AGF Placement” brand but purports to be an investment company and a subsidiary of the AGF International group with a contact address identical to the Complainant’s subsidiary’s contact address in Dublin and an identical REGAFI identification number to that of the Complainant. According to the Complainant, prospective clients were invited on the website to enter their email address and password through the “Espace Client” part of the site in order to make investments. The Complainant alleges that at least one of its clients was deceived into investing in error in this way, which deception was only realized when the client tried to redeem funds only to find that those funds had never been received by the Complainant. The Respondent’s conduct is clearly the type of conduct that the Policy seeks to proscribe and in the Panel’s view such use of the disputed domain name amounts to the Respondent intentionally attempting to divert for commercial gain, Internet users to a competing third party’s website by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or sponsorship of the that website in terms of paragraph 4(b)(iv) of the Policy. This amounts to evidence of registration and use of the disputed domain name in bad faith. For these reasons, the Panel finds that the Complaint also succeeds under this element 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 Alistair Payne
Sole Panelist
Date: May 21, 2020
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