Complainant is Hedge Invest SGR P.A., Italy, represented by Dechert LLP, United Kingdom.
Respondent is WhoisGuard, Inc., Panama / Hedge Invest, Hedge Invest International, United Kingdom.1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2020. On April 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 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 Complainant on April 11, 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 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 Respondent of the Complaint, and the proceedings commenced on April 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2020. On April 28, 2020, Respondent sent an email communication to the Center requesting an extension to file a response. The due date for Response was extended to May 27, 2020. Respondent did not submit a formal Response. Accordingly, the Center notified the Parties the commencement of the panel appointment process on June 4, 2020. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on June 8, 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 company organized under the laws of Italy that is active in the asset management business, offering, inter alia, investment opportunities in its Irish investment company Hedge Invest International Funds plc (the “Fund”). Complainant has provided evidence that it is the registered owner of various trademarks related to its company name and brand “Hedge Invest” with protection for the territory of the European Union, inter alia: - Word/device mark HEDGE INVEST, European Union Intellectual Property Office (“EUIPO”), registration number: 2475291, registration date: March 20, 2003, status: active. Moreover, Complainant has documented to own the domain name Respondent, according to the disclosed WhoIs information for the disputed domain name, is domiciled in the United Kingdom and registered the disputed domain name on April 23, 2019, which resolves to a website at “www.hedgeinvestint.com”, offering financial investment services under the name “Hedge Invest International” and displaying, inter alia, the name and exact postal address of Complainant’s Fund. In this context, Complainant has evidenced that the British Financial Conduct Authority (FCA) has issued a so-called clone notice in respect of Respondent’s website dated January 28, 2020, indicating that fraudsters are using or giving out false contact details as part of their tactics to scam people in the United Kingdom. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends to have built up substantial reputation and goodwill in its HEDGE INVEST trademark since the year 2000 when Complainant was founded. Complainant submits that the disputed domain name is confusingly similar to its HEDGE INVEST trademark given that the word “int”, as it is reflected in the disputed domain name, is often used as a shorthand for “international” and that consequently Internet users would not attach any trademark significance to it. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name, since: (1) the disputed domain name was registered over 18 years after Complainant’s business was founded, over 16 years after Complainant’s trademark was first registered and over seven years after Complainant’s Fund was authorized, which is why it is reasonable to assume that Respondent did not independently conceive of the name Hedge Invest International and that Respondent was well aware of Complainant and its rights in the HEDGE INVEST trademark when registering the disputed domain name, (2) Respondent uses the disputed domain name to advertise and offer products and services that are identical or confusingly similar to those offered by Complainant, and (3) Complainant has not licensed or otherwise permitted or authorized Respondent to use its HEDGE INVEST trademark or to apply for any domain names incorporating the latter. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since: (1) Respondent registered the disputed domain name in order to unfairly benefit from Complainant’s rights in the HEDGE INVEST trademark, and (2) Respondent uses the disputed domain name in a way intending to lead consumers to believe that they have reached Complainant’s website and so diverting Internet traffic from Complainant, thereby interfering with Complainant’s business. B. Respondent Respondent did not submit a formal Response and did not reply to Complainant’s contentions on the substance of this matter. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name is confusingly similar to the HEDGE INVEST trademark in which Complainant has rights. The disputed domain name incorporates the word elements of the HEDGE INVEST trademark in their entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of other terms (whether, e.g., descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the descriptive term “int” (commonly known as an abbreviation for “international”) does not dispel the confusing similarity arising from the incorporation of Complainant’s HEDGE INVEST trademark in the disputed domain name. Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has not been authorized to use Complainant’s HEDGE INVEST trademark, either as a domain name or in any other way. Moreover, even though Respondent, according to the disclosed WhoIs information for the disputed domain name, is called “Hedge Invest International”, given that the website under the disputed domain name displays the name and exact postal address of Complainant’s own Fund, there is reason to believe that Respondent registered the disputed domain name under a false or invented name meant to correspond to Complainant. Finally, Respondent obviously offers services on the Internet under the disputed domain name which are identical or at least confusingly similar with those of Complainant, and also displays contact information relating to Complainant’s Fund without any authorization to do so; such use of the disputed domain name neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of the Policy. Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, it has not met that burden. Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. The circumstances in this case leave no doubt that Respondent was fully aware of Complainant’s rights in the HEDGE INVEST trademark (notwithstanding its claimed substantial reputation and goodwill) when registering the disputed domain name and that the latter clearly is directed thereto. Moreover, using the disputed domain name to run a website offering services that are identical or at least confusingly similar to those of Complainant, and even displaying contact information relating to Complainant’s Fund, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusing with Complainant’s HEDGE INVEST trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. In this context, the Panel further notes that Respondent appears to have made use of a WhoIs privacy shield service, which is certainly not per se illegitimate, but under the circumstances of the case at hand, involving the display of contact information relating to Complainant’s Fund without any authorization to do so, such service is a further indication of Respondent’s bad faith. Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy as set forth by 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 disputed domain name Stephanie G. Hartung 1 It is evident from the case file that WhoisGuard, Inc., Panama, is a privacy protection service and that Hedge Invest, Hedge Invest International, United Kingdom, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.
Sole Panelist
Date: June 22, 2020
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