The Complainant is Baring Asset Management Limited, United Kingdom, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Jibril Shehu, no, Latvia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2020. On July 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 7, 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 July 7, 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 July 10, 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 July 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2020. The Center appointed Tobias Malte Müller as the sole panelist in this matter on August 13, 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 It results from the Complainant’s undisputed allegations that the Complainant was originally established as a firm of merchants and merchant bankers in London in 1762, and operated as one of the oldest investment bank in the United Kingdom until 1995. Furthermore, the Complainant is an affiliate firm of Barings LLC, a global financial services firm formed in 2016 as a result of a merger of four affiliated investment firms, including the Complainant. Since this merger, the Complainant and Barings LLC have operated jointly under the BARINGS trademark. It further results from the undisputed evidence provided by the Complainant that it is the registered owner of several trademarks consisting of or containing the term BARINGS, covering amongst others Latvia (European Union), where the Respondent is located, e.g. - International Registration No. 869876 (verbal), registered on October 24, 2005 for services in class 36 and designating amongst other the European Union; - European Union Trade Mark (“EUTM”) No. 015732498 (figurative), registered on November 25, 2015 for services in class 36. It results from the information disclosed by the Registrar that the Disputed Domain Name was created on May 1, 2020. Furthermore, the undisputed evidence provided by the Complainant proves that the Disputed Domain Name currently resolves to a default hosting parking page, featuring multiple links to commercial websites. 5. Parties’ Contentions A. Complainant The Complainant asserts that the Disputed Domain Name is confusingly similar to its BARINGS trademarks, since it entirely captures said mark followed by the geographical abbreviation for the United Kingdom, “uk”. The Complainant’s trademark remains clearly recognizable in the Disputed Domain Name. The Complainant further contends that the Respondent has no prior rights or legitimate interests in the Disputed Domain Name. In particular, the Complainant states that (i) the Respondent is not commonly known by the Disputed Domain Name; Finally, the Complainant contends that the Respondent registered and uses the Disputed Domain Name in bad faith, by seeking to create a misleading impression of affiliation or endorsement between the Disputed Domain Name and the Complainant, when in reality no such relationship exists. The Complainant submits that the Respondent could not credibly argue that it did not have prior knowledge of the Complainant and its trademarks at the time it registered the Disputed Domain Name in May 2020. In fact, it can be inferred from the Respondent’s use of the domain name Lastly, the Complainant submits that the following factors support the finding of bad faith under the doctrine of passive holding: (i) the Complainant’s BARINGS trademark is well known internationally; The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the Disputed Domain Name should be transferred or cancelled: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and The Panel is satisfied that the registrant of record for the Disputed Domain Name is the Respondent and will, therefore, proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. It results from the evidence provided that the Complainant is the registered owner of various trademarks consisting of or containing the term BARINGS. Reference is made to the International Registration No. 869876 (verbal), registered on October 24, 2005 for services in class 36 and designating amongst other the European Union and EUTM No. 015732498 (figurative), registered on November 25, 2015 for services in class 36. Previous UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport – Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademarks BARINGS are fully included in the Disputed Domain Name. The addition of the two letters “uk” placed at the end of the second level domain, and the generic Top-Level Domain (“gTLD”) “.com”, are not susceptible to call into question this finding, see section 1.11 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”). These two letters “uk” are nothing but the two-letter country abbreviation for the United Kingdom, where the Complainant is domiciled and will therefore be understood as a mere geographic term. Therefore, the Panel has no doubts that in a side-by-side comparison of the Disputed Domain Name and the relevant trademark BARINGS, the mark is clearly recognizable within the Disputed Domain Name (see BeSweet Creations LLC v. Ahmed Aludayni,WIPO Case No. D2019-0306 for the two letter country abbreviation “ye”). Hence, this Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks pursuant to the Policy, paragraph 4(a)(i). Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the Disputed Domain Name. In the Panel’s view, based on the allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. First, it results from the evidence provided by the Complainant that the Disputed Domain Name is currently connected to a default hosting parking page, featuring multiple links to commercial websites. This Panel is of the opinion that such use does not represent a bona fide offering of goods or services and can therefore not constitute legitimate interests under paragraph 4(c)(i) of the Policy. In fact, a page with such commercial links is in the Panel’s view comparable to a parking page. Previous UDRP panels found that such parking pages with commercial links do not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see section 2.9 of the WIPO Overview 3.0). This is the case here, since this parking page is in no way connected to the trademark BARINGS. In addition, the fact that the Disputed Domain Name combines the trademark BARINGS with a geographic indication (“uk”) tends to suggest to user a sponsorship or endorsement by the trademark owner, which does not exist, (see section 2.5.1. of the WIPO Overview 3.0 for fair use pursuant to paragraph 4(c)(iii) of the Policy). Second, the Panel notes that there is no evidence in the record showing could lead the Panel to conclude that the Respondent might be commonly known by the Disputed Domain Name in the sense of paragraph 4(c)(ii) of the Policy. In addition, the Respondent does not appear to have any connection or affiliation with the Complainant. Finally, use of the disputed domain name for a default hosting parking page, featuring multiple links to commercial websites excludes any noncommercial use in the sense of paragraph 4(c)(iii) of the Policy from the outset. It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name. Since the Respondent failed to come forward with any allegations or evidence in this regard, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the Disputed Domain Name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the Disputed Domain Name’s registration and use in bad faith. One of those circumstances are those specified in paragraph 4(b)(iv), i.e. where the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location. In the Panel’s view, the Respondent has intentionally registered the Disputed Domain Name which identically contains the Complainant’s trademark BARINGS. By the time the Disputed Domain Name was registered, it is unlikely that the Respondent did not have knowledge of the Complainant (which exists since the 18th century) and its mark(s) BARINGS, which is identically included in the Disputed Domain Name. These findings are reinforced by the inclusion in the Disputed Domain Name of the geographic abbreviation “uk”, referring to the Complainant’s country of origin. The Complainant also proved that the Respondent is using the Disputed Domain Name to lead to a hosting parking page, with commercial links. These facts confirm that the Disputed Domain Name is used to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Finally, the further circumstances surrounding the Disputed Domain Name’s registration and use confirm the findings that the Respondent has registered and is using the Disputed Domain Name in bad faith: (i) The Respondent originally partially masked its identity and data by indicating only (No, Middlesex, Latvia); In the light of the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith pursuant to 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 Name Tobias Malte Müller
(ii) there is reason to believe that the WhoIs information provided by the Respondent is false since no State of “Middlesex” exists in Latvia;
(iii) the Respondent is currently not making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers.
(ii) no evidence of the Respondent having made any demonstrable preparations for any fair use;
(iii) the Respondent appears to have listed falsified contact information in the WhoIs; and
(iv) the nature of the Disputed Domain Name itself. B. Respondent
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
(ii) The Respondent used false contact data (in fact no region of “Middlesex” exists in Latvia); and
(iii) the Respondent did not provide any formal response with conceivable explanation of its behavior within these proceedings so that no legitimate use of the Disputed Domain Name by the Respondent is actually conceivable for the Panel.
Sole Panelist
Date: August 27, 2020
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