The Complainant is Fremont Group, L.L.C., United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Fred Tapper, United States. 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 8, 2020. On June 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 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 the Complainant on June 12, 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 16, 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 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2020. The Center appointed Lynda M. Braun as the sole panelist in this matter on July 21, 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 San Francisco-based private investment office for the Bechtel family, formed in 1980 as a subsidiary of the Bechtel Group. The Complainant’s investments include real estate, direct investments, energy, venture capital, and securities management. The Complainant invests directly through teams of professionals as well as through other external managers. In 1996, the Complainant formed The Fremont Group Foundation to provide support to educational institutions and 501(c)(3) organizations. The Complainant is the owner of the following trademark registrations in the United States through the United States Patent and Trademark Office (“USPTO”): FREMONT, United States Registration No. 2821882, registered on March 16, 2004 in International classes 36 and 37; FREMONT GROUP, United States Registration No. 2821881, registered on March 16, 2004 in International classes 36 and 37 (the “FREMONT GROUP Mark”). The Complainant promotes its services through the domain name The Disputed Domain Name was registered on March 12, 2020, redirecting Internet users to a website featuring links to sponsored third-party websites, some of which directly competed with the Complainant’s business. For example, the website at which the Disputed Domain Name resolved featured pay-per-click links for “managing consultancy”, “financial services”, “investment management”, and “financial management”. Screenshots of the websites were submitted by the Complainant as an annex to the Complaint. The Disputed Domain Name was also used to send emails purportedly coming from the Complainant’s executives to the Complainant’s employees and external business associates. The emails were part of a phishing scheme in which the Respondent attempted to pass itself off as the Complainant to acquire sensitive personal and financial information from the Complainant’s employees and customers. The emails were sent by using the Disputed Domain Name from “@fremontgroupllc.com” (for example, “[...]@fremontgroupllc.com” and “[...]@fremontgroupllc.com”), and sought to impersonate the Complainant in an attempt to fraudulently engage unsuspecting employees and business partners into thinking they were entering into a commercial relationship with the Complainant. Copies of the referenced emails were submitted by the Complainant as an annex to the Complaint. The Complainant’s partners requested that the Respondent take down the website. Following the takedown notice, the Respondent used the Disputed Domain Name to redirect Internet users to a website resolving to a blank page and lacking content. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark; The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraphs 4(a)(i)-(iii)): (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the FREMONT GROUP Mark. It is uncontroverted that the Complainant has established rights in the FREMONT GROUP Mark based on its years of use as well as its registered trademark for the FREMONT GROUP Mark in the United States. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the FREMONT GROUP Mark. The Disputed Domain Name Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its FREMONT GROUP Mark. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name to create a pay-per-click landing page with links competing with the Complainant and impersonate the Complainant in a phishing scheme in an attempt to acquire sensitive personal and financial information from the Complainant’s employees and business partners, the Panel finds that the Respondent was not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. First, the Disputed Domain Name was registered after the registration of the Complainant’s FREMONT GROUP Mark. The Panel finds it likely that the Respondent had the Complainant’s FREMONT GROUP Mark in mind when registering the Disputed Domain Name. Second, as demonstrated above, the Respondent used the Disputed Domain Name to perpetrate an impersonation scheme aimed at defrauding unwitting third parties. “As noted in section 2.13.1 [of WIPO Overview 3.0], 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.” WIPO Overview 3.0, section 3.1.4. See also The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado,WIPO Case No. D2012-2093 (“Use of a disputed domain name for the purpose of defrauding Internet users by the operation of a “phishing” website is perhaps the clearest evidence of registration and use of a domain name in bad faith. The fact that the website is currently inactive does not negate such a finding.”). Finally, inactive or passive holding of the Disputed Domain Name by the Respondent may also amount to bad faith use. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com,WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate purpose may indicate that the disputed domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. In this case, the Disputed Domain Name currently resolves to an inactive landing page with no content, which does not change the Panel’s findings above and thus further demonstrates use in bad faith. Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- the Disputed Domain Name was registered and is being used in bad faith.
Sole Panelist
Date: August 3, 2020
Full & Egal Universal Law Academy