The Complainant is Premier Asset Management Limited, United Kingdom (“UK”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Rashan Cummings, UK. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2020. On October 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 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 October 9, 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 October 13, 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 October 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2020. The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on November 9, 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 has managed funds on behalf of investors since 1986 and was incorporated under the name Premier Asset Management Limited on September 20, 1995. Currently it manages funds on behalf of over 60,000 investors and became part of Premier Miton Group plc. through a company merger in November 2019. Most of the Complainant’s business is in the UK with group assets under management in the order of GBP 9.9 billion. The Complainant does not have a registered trademark and relies in this proceeding upon a claim of unregistered trademark rights. The Complainant or associated companies also own some 27 domain names incorporating essentially its company name or variants thereof. The Complainant’s online presence is now to be found at “www.premiermiton.com”, which has received over 29 million visits per year recently. No factual background of significance is known about the Respondent except for the contact details provided for the purpose of registration of the disputed domain name, which was registered on June 18, 2020. The disputed domain name resolved to a website headed with the Complainant’s name and a telephone number. 5. Parties’ Contentions A. Complainant The Complainant contends that it has rights in the unregistered trademark PREMIER ASSET MANAGEMENT. Among the grounds upon which the claim of unregistered trademark rights is based, are that the company was incorporated under the name “Premier Asset Management Limited” at Companies House, UK, on September 20, 1995, and remains so registered; that the Complainant has traded continuously under the name “Premier Asset Management” since 1995; and that the Complainant owns a number of domain names incorporating its name, such as The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The generic Top-Level Domain (“gTLD”) “.com” is conventionally not taken into account in the determination of confusing similarity. The generic entity “ltd” in the disputed domain name means “limited” and is of little consequence but in fact increases confusing similarity between the disputed domain name and the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by anything resembling the disputed domain name. The Complainant has not in any way permitted the Respondent to register the disputed domain name. The Complainant says there could be no actual or contemplated legitimate use of the disputed domain name by the Respondent. On the contrary, the disputed domain name to direct Internet users to the Respondent’s own website, which appears to offer investment management services in competition with the Complainant. The Respondent’s website passes itself off as representing the Complainant, complete with the Complainant’s company registration number and the full address of the Complainant’s registered office. The Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name. The Complainant further contends that the disputed domain name was registered and is being used in bad faith by the Respondent. The Complainant has operated under its name and unregistered trademark since 1995, whereas the disputed domain name was registered on June 18, 2020. The website to which the disputed domain name resolves displays the Complainant’s trademark and registered address. In the circumstances, the Respondent could not have been unaware of the Complainant and has demonstrated a knowledge of the Complainant’s brand and business and an intention to impersonate the Complainant. The Respondent’s choice of the disputed domain name could not have been coincidental. The Complainant says that the Respondent’s intention in using the disputed domain name has been to attempt to attract Internet users to its website, offering investment management services, by confusion with the Complainant's trademark for the Respondent’s commercial gain. The Respondent’s conduct is potentially disruptive of the Complainant’s business. There can be no plausible good-faith reason for the Respondent to have registered the disputed domain name, which cannot have any future use that would not be detrimental to the Complainant. The Complainant says that according to its research, there exist other instances of websites purporting to represent different UK investment management funds that carry exactly the same wording in the “About Us” section as is found on the website of the disputed domain name. The Complainant has produced screen captures of three such examples and suggests they may be under the common control of the Respondent or associates and thereby constitute a pattern of cybersquatting. The Complainant has cited previous decisions under the Policy that it considers to be of value to the Panel in the consideration of the present Complaint. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that: “(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith.” The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar Without a registered trademark, the Complainant must establish unregistered trademark rights in order to proceed. The name of the Complainant’s duly registered company, “Premier Asset Management Limited”, does not alone substitute for a registered or unregistered trademark. As discussed in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in order the show that its unregistered trademark has acquired distinctiveness as an identifier of the Complainant’s services, it is necessary to produce evidence that may include, for example, “(i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys”. The Complainant in this case is also faced with the difficulty that each of the descriptive words comprising its unregistered trademark, standing alone, can scarcely be regarded as distinctive. In a check of the UK Intellectual Property Office trademark register (as is permitted under section 4.8 of WIPO Overview 3.0), filtered for live trademarks, “premier” as the first word yielded a raw count (including duplicates, etc.,) of 582, and the string “asset management” occurred in 524 trademarks. The Complainant’s company name has been in use for 25 years since its incorporation as a private limited company on September 20, 1995. The Complainant says the use of the name as a trademark since then has been continuous, and it has produced in evidence screen captures of its websites, accessed through the website “www.premierfunds.co.uk” but headed PREMIER ASSET MANAGEMENT, dated in 2007, 2010, 2014, 2016, 2017 and 2018. Little doubt appears to attach to the scale of the Complainant’s business under its unregistered trademark. According to a “City AM” news item, at the time of the merger that formed Premier Miton Group plc. in 2019, the Complainant brought assets of some GBP 6.7 billion into the venture. The Complainant has well promoted itself, including through its professional and informative websites, and has been the subject of factual reporting in financial circles including “City AM”, “The Telegraph”, “Proactive Investors”, and “Financial Times”, copies of which have been produced in evidence. On the totality of the evidence and on balance, and solely for the purposes of this UDRP proceeding, the Complainant is found to have sufficient rights in PREMIER ASSET MANAGEMENT as an unregistered trademark in order to proceed under paragraph 4(a)(i) of the Policy. The disputed domain name The Complainant has made a prima facie assertion to the effect that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and says it has not permitted the Respondent to register a domain name incorporating the Complainant’s trademark. Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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 made no reply and has not asserted any rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. Nothing in the evidence leads the Panel to consider it possible that the disputed domain name has been used for any bona fide offering of goods or services, or has been used for any legitimate, noncommercial or fair purpose, or that the Respondent has been commonly known, in business or otherwise, by the disputed domain name. The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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.” The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel. The Complainant has produced in evidence a screen capture of the website to which the disputed domain name has recently resolved. This displayed the large banner headline PREMIER ASSET MANAGEMENT with a telephone number in a similar sized font. Text beneath stated, “It’s not just about the numbers, we know what your money needs”. The bottom of the first page listed a company registration number and a street address with town and postcode, all being identical to those of the Complainant, and said “Copyright © 2019 Premier Asset Management”. The next page displayed brief text about the Respondent’s purported services and three bullet points, which the Complainant has found to be identical to text found on the pages of the websites “www.greenrockcapitaluk.com”, “www.liongatecapitalmanagement.com” and “www.rch-ltd.com”, all of which the Complainant suspects to be websites that attempt to impersonate authentic companies. Key words to be found on the Respondent’s website include “expert investment management”, “a leading Wealth Manager”, “specialist advice”, and “manage your money”, these being among the normal business activities of the Complainant. Inescapably, the Respondent, having reproduced on his website the full identifying and location details of the Complainant, must have had full knowledge of the Complainant and its business. On the evidence, it may reasonably be concluded that the website to which the disputed domain name resolves is designed to impersonate the Complainant with intent to deceive visitors into believing, erroneously, that they have reached an authentic website of the Complainant. The Panel finds on the balance of probabilities that the Respondent has intended to attract Internet users by confusion with the Complainant’s services for commercial gain within the meaning of paragraph 4(b)(iv) of the Policy, and that the disputed domain name was registered for that purpose. The Panel finds accordingly, on the evidence and on the balance of probabilities, that the Respondent has registered and used the disputed domain name in bad faith in the terms 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 name Dr. Clive N.A. Trotman
Sole Panelist
Date: November 17, 2020
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