Complainant is Wellington Management Company LLP, United States of America (“USA”), represented by Ropes & Gray LLP, USA.
Respondent is Tom Wellington, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2020. On March 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 19, 2020, 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 March 19, 2020, 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 March 23, 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 Respondent of the Complaint, and the proceedings commenced on March 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 15, 2020. The Center appointed Marina Perraki as the sole panelist in this matter on April 20, 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 Complainant is a limited liability partnership and one of the world’s largest independent asset management and investment advisors, managing over USD 1.1 trillion in assets and serving over 2,200 institutional clients worldwide. Complainant’s headquarters is located in the USA, while Complainant maintains offices in, inter alia, Australia, China, Canada, Germany, Japan, Luxembourg, Switzerland, Singapore, and the United Kingdom. Complainant was founded in 1928 and was incorporated in 1933 by Walter L. Morgan, to provide investment advisory and asset management services. In 1928, Mr. Morgan established the first balanced mutual fund in the USA, which was renamed the Wellington Fund in 1935. Complainant and its predecessors and affiliates have used the name “Wellington Management” since 1959. Complainant’s group holds trademark registrations consisting of or including the words “wellington management”, such as: - the USA trademark registration No. 3671359 WELLINGTON MANAGEMENT (word), registered on August 25, 2009, for services in international class 36; and - the European Union Trade Mark registration No. 008544819, WELLINGTON MANAGEMENT (word) registered on February 17, 2010, for services in international class 36. Complainant is also the owner of numerous domain names that include the words “wellington management”, such as The Domain Name was registered on January 29, 2020. It initially resolved to a website that purportedly offered financial services (the “Website”) and currently resolves to an inactive page that states in German “Nicht Verfügbar / Bei Fragen kontaktieren Sie bitte unseren Support”, which in English means “Not available / if you have any questions, please contact our support”. The Website, as Complainant demonstrated, was essentially a WordPress template with no genuine substantive content. 5. Parties’ Contentions A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to the 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 Domain Name incorporates Complainant’s trademark WELLINGTON MANAGEMENT in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). The addition of the hyphen “-” between the two words “wellington” and “management” does not avoid a finding of confusing similarity as it is non distinctive (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). The generic Top-Level Domain (“gTLD”) “.info” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122). The Panel finds that the Domain Name is confusingly similar to the WELLINGTON MANAGEMENT mark of Complainant. 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 lacks rights or legitimate interests in respect of the Domain Name. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name. Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant has demonstrated, the Domain Name initially resolved to a sham website that purportedly offered financial services and currently resolves to an inactive page. This indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry (Safepay Malta Limited v. ICS Inc,WIPO Case No. D2015-0403). In addition, the Domain Name incorporates in whole Complainant’s mark and thus carries a high risk of implied affiliation (WIPO Overview 3.0 , section 2.5.1 ). The Panel notes that Respondent has not submitted any response and therefore has not claimed or proved that his birth name is actually “Wellington”, as appearing on the WhoIs details. Absent that, the mere registration of the Domain Name under a surname “Wellington” does not suffice for the Panel to find that Respondent is commonly known by the Domain Name and has any legitimate interest to its use (WIPO Overview 3.0 , section 2.3 ). The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name. 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. Because the WELLINGTON MANAGEMENT mark enjoyed reputation in the field of financial services, as repeatedly recognized (Wellington Management Company, LLP v. Thomas Smith,WIPO Case No. D2010-1375) and was widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds it likely that Respondent had Complainant’s mark in mind when registering the Domain Name (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226). Respondent could have searched the European Union or USA trademark registries and would have found Complainant’s prior registrations in respect of WELLINGTON MANAGEMENT (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata,WIPO Case No. D2012-1338). Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search and also due to Complainant’s nature of business, provided also online through its website “www.wellington.com” (Caesars World, Inc. v. Forum LLC.,WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc.,WIPO Case No. D2009-0462). The Domain Name is also practically identical to existing domain names of Complainant, namely As regards bad faith use, Complainant demonstrated that the Domain Name currently leads to an inactive website. The non-use of a domain name would not prevent a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003;WIPO Overview 3.0, section 3.3). In addition, prior to this, as Complainant demonstrated, Respondent used the Domain Name to host the Website that purportedly offered financial services, namely services identical to Complainant’s sector, and was essentially a WordPress template with no genuine substantive content. This further indicates use in bad faith. Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith. 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 Marina Perraki
Sole Panelist
Date: May 4, 2020
Full & Egal Universal Law Academy