The Complainant is Numis Securities Limited, United Kingdom (“U.K.”), represented by Shepherd and Wedderburn LLP, U.K.
The Respondent is WhoisGuard, Inc., Panama / Get AnySite, Pakistan. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 20, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint. The Complainant filed an amended Complaint on April 24, 2020.1 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, and the proceedings commenced on April 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2020. The Center appointed William R. Towns as the sole panelist in this matter on May 25, 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 is a limited liability company headquartered in London, England. The Complainant provides financial services, and has traded under the “Numis” name since 2000. The Complainant is the owner of a European Union Trade Mark (“EUTM”) for NUMIS, EUTM no. 017926202, filed on July 3, 2018, and registered on December 7, 2018. The Complainant also has secured a U.K. registration for the NUMIS mark, U.K. no. 3322208, which was registered on November 9, 2018. In addition, the Complaint has applied to the United States Patent and Trademark Office (“USPTO”) to register a U.S. trademark for NUMIS, U.S. Serial No. 88119759, pursuant to Section 44 of the U.S. Lanham Act.2 The Complainant operates a website at “www.numiscorp.com”, and has registered a number of domain names displaying the NUMIS mark. The disputed domain names The Complainant submits that the disputed domain names all incorporate the NUMIS mark, the distinctive element in each of the disputed domain names. The Complainant contends that the disputed domain names are identical to the Complainant’s NUMIS marks. The Complainant maintains it has generated significant goodwill in the NUMIS mark and acquired a substantial reputation from the use of the mark over many years. According to the Complainant, it is very likely that the disputed domain names would be widely understood as a reference to the Complainant and the Complainant’s NUMIS marks, resulting in a likelihood of confusion. The Complainant maintains that the Respondent has actively sought to create a likelihood of confusion in furtherance of a fraudulent criminal enterprise, which the Complainant has reported to the National Crime Agency in the U.K. The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant emphasizes that the Respondent has made no attempt to use the disputed domain names in connection with a legitimate offering of goods or services, but rather has used the disputed domain names to fraudulently impersonate the Complainant and lend legitimacy to a criminal activity. The Respondent reiterates that the disputed domain names are identical to the Complainant’s NUMIS marks, and maintains that the Respondent’s conduct amounts to trademark infringement under U.K. law. The Complainant further considers the Respondent’s conduct to be actionable as passing off and as an instrument of fraud by reference. The Complainant maintains that the disputed domain names were registered and are being used in bad faith. The Complainant contends that the Respondent has used the disputed domain names to host websites purporting to offer bitcoin trading services. The Complainant refers to an email in which the sender stated her client had not received payment of USD 4,396,000 as shown on the Respondent’s “www.numisportal.com” website, giving rise to an inference that the sender’s client had been the victim of a significant fraud. The Complainant submits it had no prior knowledge of the matter but conducted an investigation, which revealed that the websites hosted on the disputed domain names included a fraudulent association with the Complainant. Among other irregularities, the Complainant asserts that the Respondent linked the disputed domain names to the Complainant’s FCA Authorization on FCA’s Register, and that the Complainant’s company details also were listed on the Respondent’s websites. The Complainant explains that it reported these developments to the FCA, which issued a warning notice advising of potential fraud on the Respondent’s websites. The Complainant further states that it reported the matter to the U.K.’s National Crime Agency, recognizing the continued risk of fraud to the general public that could be associated with the Complainant. The Complainant concludes that the Respondent registered the disputed domain names in bad faith and continues to use them in bad faith, with the express intention of fraudulently associating itself with the Complainant, in order to lend legitimacy to criminal activity. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain names The Complainant’s NUMIS mark is clearly recognizable in the disputed domain names.4 The inclusion of the descriptive terms “portal”, “trading” and “uk” in the disputed domain names does not serve to dispel the confusing similarity of the disputed domain names to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.5 Generic Top-Level Domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.6 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s NUMIS mark. The Respondent notwithstanding has registered multiple disputed domain names appropriating the Complainant’s mark, and the Respondent has used the disputed domain names in what appears to be an attempt to illicitly profit from a fraudulent cryptoasset investment scam. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is 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 Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel concludes from the record in this case that the Respondent was aware of the Complainant and had the Complainant’s NUMIS mark in mind when registering the disputed domain names. As noted earlier, the disputed domain names are confusingly similar to the Complainant’s mark, and the record is convincing that the Respondent registered the disputed domain names with the aim of exploiting and profiting from the Complainant’s mark, impersonating the Complainant and using cloned sites in furtherance of a fraudulent investment scam. Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. There is no indication that the Respondent has been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy, and nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. As previously noted, the Panel finds that the Respondent was aware of the Complainant and had the Complainant’s NUMIS mark in mind when registering the disputed domain names. The Respondent’s registration of the disputed domain names in the attendant circumstances smacks of opportunistic bad faith. It is abundantly clear from the record that the Respondent’s motive in relation to the registration and use of the disputed domain names was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark, with the ultimate aim to profit illicitly from the perpetration of a fraudulent investment scam. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 names William R. Towns 1 The Complaint initially submitted to the Center identified four disputed domain names. In response to the Center’s request for registrar verification, the Registrar disclosed “Get Any Site” as the WhoIs registrant of three of the disputed domain names. The Registrar disclosed a different WhoIs registrant respecting the fourth disputed domain name. After considering paragraph 3(c) of the Rules, the Complainant elected to proceed in this matter with an amended complaint respecting the three disputed domain names referred to above. 2 Under Section 44(e) a foreign applicant may proceed to a U.S. registration based on the applicant’s bona fide intent to use the mark in commerce. A notice of allowance recently has been issued by the USPTO, and the U.S. mark should proceed to registration soon. 3 See WIPO Overview 3.0 , section 1.7. 4 See WIPO Overview 3.0, section 1.8 and cases cited therein. 5 Id. 6 See WIPO Overview 3.0 , section 1.11. In some instances the meaning of a particular gTLD may be relevant to assessments under the second and third elements of the Policy. See WIPO Overview 3.0, sections 1.11.2, 2.14, and cases cited therein.
Sole Panelist
Date: June 5, 2020
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