Complainant is Franklin Resources, Inc., United States of America (“United States”), represented by Pelton & Associates, United States.
Respondent is Mei Xiu Wang, China. 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 15, 2020. On July 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 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 July 20, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 20, 2020. The Center verified that the Complaint together with the amendment to the 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 July 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 11, 2020. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on August 19, 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 the United States that is active in the financial services industry. Complainant has provided evidence that it - by itself or through various subsidiaries - owns registered trademark rights in the designation “Franklin Templeton”, including, but not limited, to the following: - Word mark FRANKLIN TEMPLETON, United States Patent and Trademark Office (USPTO), registration number: 2,860,051, registration date: July 6, 2004, status: active; Furthermore, Complainant has demonstrated to own the domain name Respondent, according to the disclosed WhoIs information for the disputed domain name, is residing in China and registered the disputed domain name on May 8, 2020. Complainant has provided evidence that, at some point before the filing of this Complaint, the disputed domain name resolved to a website at “www.franklintempletonfx.com” which offered a variety of financial services at least confusingly similar to those offered by Complainant and, thereby, prominently displayed Complainant’s official FRANKLIN TEMPLETON logo. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant submits that the disputed domain name is confusingly similar and nearly identical to its FRANKLIN TEMPLETON trademark, as it contains the latter in its entirety with the mere addition of the acronym “fx” at the end. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is not a licensee of Complainant nor is it otherwise authorized to use Complainant’s FRANKLIN TEMPLETON trademark and logo for any purpose, and (2) Respondent is not commonly known under the disputed domain name, but is rather using the latter to pass itself off as Complainant, which is evidenced by displaying Complainant’s official FRANKLIN TEMPLETON trademark and logo on the website under the disputed domain name. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) “Franklin Templeton” is a coined word with no independent meaning, (2) therefore, it is extremely likely that Respondent knew of the services offered under Complainant’s FRANKLIN TEMPLETON trademark and logo when registering the disputed domain name, (3) the fact that Respondent’s website banner prominently features Complainant’s FRANKLIN TEMPLETON trademark and logo demonstrates that Respondent intentionally attempted to attract, confuse, and capitalize on consumer recognition of Complainant’s trademark and services. B. Respondent Respondent did not reply to Complainant’s contentions. 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 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 The disputed domain name incorporates the FRANKLIN TEMPLETON trademark in its 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 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 “fx”, which is a common abbreviation for “foreign exchange” in the field of financial services and so even points to Complainant’s core business, does not dispel the confusing similarity arising from the incorporation of Complainant’s FRANKLIN TEMPLETON 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 neither been granted a license nor has it been otherwise authorized by Complainant to use its FRANKLIN TEMPLETON trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name, and Respondent does not appear to have any trademark rights associated with the term “Franklin Templeton” on its own. Finally, the disputed domain name resolves to a commercially active website at “www.franklintempletonfx.com” which offers financial services at least confusingly similar to those offered by Complainant, and – at some point before the filing of the Complaint – even prominently displayed Complainant’s official FRANKLIN TEMPLETON logo. Such use of the disputed domain name neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of paragraph 4(c) 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. The Panel, therefore, 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 to this case leave no doubt that Respondent was fully aware of Complainant’s financial business and its rights in the FRANKLIN TEMPLETON trademark 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 at least confusingly similar to those of Complainant, and thereby prominently displaying Complainant’s official FRANKLIN TEMPLETON logo without any authorization to do so, 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 FRANKLIN TEMPLETON 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. 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
- Word mark FRANKLIN TEMPLETON, European Union Intellectual Property Office (EUIPO), registration number: 018026174, registration date: August 10, 2019, status: active;
- Word mark FRANKLIN TEMPLETON, Chinese Patent and Trademark Office (CPTO), registration number: 1253814, registration date: March 7, 1999, status: active.
(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.
Sole Panelist
Date: August 21, 2020
Full & Egal Universal Law Academy