The Complainant is Baring Asset Management Limited, United Kingdom, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Identity Protection Service, Identity Protect Limited, United Kingdom / Jubril Shehu, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2020. On June 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 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 June 17, 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 June 18, 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, and the proceedings commenced on June 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2020. The Center appointed Gareth Dickson as the sole panelist in this matter on July 29, 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 an affiliate firm of Barings LLC, a global financial services firm, and operates its main corporate website at “www.barings.com”. The Complainant and Barings LLC operate under the BARINGS trade mark. The Complainant is the owner of a number of trade mark registrations for BARINGS and BARING around the world, including: - United Kingdom trade mark registration number 1287566, for BARINGS, registered on June 9, 1989; In this decision, the Complainant’s trade mark for BARING is referred to as the “Mark”. The disputed domain name was registered on May 1, 2020 and resolves to a hosting parking page. It has been used to create at least one email address purporting to be that of an employee of the Complainant, to encourage Internet users to send large sums of money to a bank account nominated by the Respondent. 5. Parties’ Contentions A. Complainant The Complainant alleges that it has rights in the Mark and that the disputed domain name is confusingly similar to the Mark, being a combination of the Mark and the geographical abbreviation for the United Kingdom “uk”. It says the Mark is recognizable within the disputed domain name. The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that the Respondent has been using it to further a fraud, writing to customers of the Complainant in the name of one of its former senior investor managers, to imitate the Complainant and try to persuade those customers to send large payments to a bank account nominated by the Respondent but unrelated in any way to the Complainant. The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it; or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services. The Complainant confirms that there has never been any relationship between the Complainant and the Respondent, who is not licensed or otherwise authorised by the Complainant to use the Mark in any manner whatsoever, including in or as part of a domain name. The Complainant also contends that impersonating the Complainant for fraudulent purposes cannot generate rights or legitimate interests in respect of the disputed domain name, and notes that the postal address used by the Respondent on the WhoIs is not a genuine address. The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name, given the Respondent’s use of the disputed domain name to impersonate a former employee of the Complainant in the purported offering of financial services. The Complainant concludes that the Respondent must have intended to use the disputed domain name for fraud when it registered it. The Complainant also argues that the use of a domain name for per se illegal activity (such as the advance fee fraud shown in the evidence accompanying the Complaint) is manifest evidence of bad faith use of the disputed domain name. The Complainant notes too that the Respondent has used a privacy service to conceal its identity for as long as possible, and has used false WhoIs information to register it. Together, the Complainant submits that the Respondent is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that: a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and c) the disputed domain name has been registered and is being used in bad faith. These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is recognisable within the disputed domain name. The addition of “uk” in the disputed domain name, being the recognised two-letter country-code for the United Kingdom, does not prevent a finding of confusing similarity. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark is neither generic nor descriptive but enjoys a degree of inherent distinctiveness that makes a coincidental adoption by the Respondent highly unlikely. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name. There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it. Furthermore, the use of the disputed domain name to create an email address in the name of a former senior employee of the Complainant, and the use of that email address to solicit large sums of money from Internet users, does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.13.1 of the WIPO Overview 3.0 states that: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. Such consideration applies here since the Respondent is using the disputed domain name to contact third parties with the aim of imitating the Complainant. By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel notes that the disputed domain name was registered many years after the Mark was registered and accepts that the disputed domain name was chosen by reference to the Mark. The disputed domain name is a clear example of a domain name chosen with a trade mark (and trade mark owner) in mind for the purpose of impersonating that trade mark owner and diverting traffic, and money, away from that owner and to the Respondent. As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental or somehow permitted, the Panel concludes that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name and registered it for an illegitimate purpose. The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark. The disputed domain name is also being used in bad faith. Section 3.1.4 of the WIPO Overview 3.0 states: “[…] given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”. The disputed domain name has been used to create at least one email address intended to obtain money from Internet users by deceiving them as to the origin of the request for payment. That is the sort of illegitimate use of a domain name that is manifestly evidence of bad faith. The Respondent has not sought to explain its registration and use of the disputed domain name, has attempted to conceal its identity, and has not participated in these proceedings. There is also no conceivable use of the disputed domain name by the Respondent that would not be illegitimate and therefore there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified. Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name to send emails which are very likely to confuse the recipient of such emails as to their origin is without any justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith. The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. 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, Gareth Dickson
- United States of America trade mark registration number 1744800, for BARINGS, registered on January 5, 1993;
- United States of America trade mark registration number 3237590, for BARING, registered on May 1, 2007;
- European Union trade mark registration number 004662177, for BARING, registered on October 27, 2006;
- European Union trade mark registration number 015732498, for BARINGS, registered on November 25, 2016;
- International trade mark registration number 870684, for BARING, registered on October 24, 2005, designating Australia, Bahrain, China, Kazakhstan, Mongolia, Oman, the Republic of Korea, Singapore, Switzerland, Ukraine, the United States of America, and Viet Nam; and
- International trade mark registration number 869876, for BARINGS, registered on October 24, 2005, designating Australia, Bahrain, China, the European Union, Kazakhstan, Mongolia, Oman, the Republic of Korea, Singapore, Switzerland, Ukraine, the United States, and Viet Nam.
Sole Panelist
Date: August 12, 2020
Full & Egal Universal Law Academy