The Complainant is Algebris Investments (Luxembourg) S.à r.l., Luxembourg, represented by Barker Brettell LLP, United Kingdom.
The Respondent is WhoisGuard, Inc., Panama / Victor Vee, United States of America. 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 30, 2020. On October 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 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 November 2, 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 amendment to the Complaint on November 4, 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 the Respondent of the Complaint, and the proceedings commenced on November 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2020. Apart from an email of November 2, 2020, no official Response was filed with the Center. On December 2, 2020, a Notice of commencement of panel appointment process was sent to the Parties. The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on December 11, 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 part of the Algebris Group, an independent global asset management firm. The Algebris Group maintains offices in London, Milan, Rome, Dublin, Luxembourg, Boston, Singapore, and Tokyo. The Complainant is the owner of trademark registrations for ALGEBRIS and ALGEBRIS INVESTMENTS, including: - European Union trademark registration number 4996096 for ALGEBRIS, registered on September 20, 2007, in class 36; - United Kingdom trademark registration number 3508664 for ALGEBRIS, registered on October 9, 2020, in class 36; - United Kingdom trademark registration number 35008676 for ALGEBRIS INVESTMENTS, registered on October 9, 2020, in class 36; - United States trademark registration number 5144726 for ALGEBRIS, registered on February 21, 2017, in class 36. The disputed domain name was registered on September 26, 2020. The disputed domain name resolved to an active website until such website was suspended by the Registrar shortly before the filing of the Complaint. The Respondent’s website was purportedly operated by “Algebris Investment” and proposed investment packages as well as financial services related primarily to bitcoin. The street address supplied on the website was the address of Algebris (UK) Limited, a company of the Complainant’s group. Just below such address, a button “View Certificate” provided a direct link to the entry regarding Algebris (UK) Limited in the database of Companies House, the UK registry of companies. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical to its trademarks ALGEBRIS and ALGEBRIS INVESTMENTS, because the differences between such trademarks and the disputed domain name are negligible and would go unnoticed by an average consumer. The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, is not commonly known by the disputed domain name. Finally, according to the Complainant, the Respondent has registered and used the disputed domain name in bad faith. The Complainant contends that the Respondent has tried to deceive the public into thinking that it is a part of the Algebris Group. The Complainant alleges that the Respondent has used the disputed domain name for commercial gain, capitalizing on the Complainant’s reputation by misleadingly diverting consumers to its website. According to the Complainant, the Respondent has tarnished its trademarks and deliberately attempted to disrupt the business of the Complainant. The Complainant is not favorable to bitcoin and contends that an association to bitcoin, which may result from the offering of bitcoin related services on the Respondent’s website, may be damaging to its reputation. B. Respondent Apart from the brief non-substantive email query of November 2, 2020, (to which the Center replied on November 5, 2020), the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following: (i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name registered by the respondent has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant owns trademark registrations for ALGEBRIS and ALGEBRIS INVESTMENTS. The disputed domain name The disputed domain name also reproduces the Complainant’s trademark ALGEBRIS in its entirety with no alteration, and combines this trademark with the descriptive term “investment”. As a rule, UDRP panels consider that the addition of a descriptive term does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and Deutsche Lufthansa AG v. Transure Enterprise Ltd / Above.com Domain Privacy,WIPO Case No. D2012-1742). In the present case, the trademark ALGEBRIS is clearly recognizable in the disputed domain name. The mere addition of the descriptive term “investment” does not change the overall impression produced by the disputed domain name and does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. (See for example DPDgroup International Services GmbH & Co. KG v. Whois Privacy Protection Foundation / Aurelius Mark,WIPO Case No. D2019-3141). UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, should be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0). The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name. The Respondent does not appear to have operated any bona fide or legitimate business under the disputed domain name and is not making a non-commercial or fair use of the disputed domain name. Instead, the disputed domain name resolved to a website offering financial services under the name “Algebris Investment” and using the contact details of a company of the Complainant’s group. Finally, the Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent to avoid such a finding. Therefore, the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Given the distinctive character of the trademark ALGEBRIS, the mention on the Respondent’s website of a street address corresponding to the address of a company of the Complainant’s group, and the link to the entry in the registry of companies relating to such company, the Panel considers that the Respondent knew of the existence of the Complainant and of its ALGEBRIS trademark at the time of the registration of the disputed domain name. The Complainant’s United Kingdom trademark ALGEBRIS INVESTMENTS number 35008676 was registered after the registration of the disputed domain name. However, the filing date of this trademark predates the registration of the domain name. Whether or not the Respondent had knowledge of such application when he registered the disputed domain name may remain open as the Panel finds that the Respondent was aware of the Complainant’s trademark ALGEBRIS. The Respondent used the disputed domain name in connection with an active website pretending to be operated by a company affiliated to the Complainant. The link to the entry in the registry of companies was indeed apt to deceive consumers into believing that such company was the operator of the website and the provider of the services offered on such website. By using the disputed domain name in such manner, the Respondent intentionally attempted to attract, for the purposes of commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to the source and affiliation of its website. Such behaviour constitutes use in bad faith under paragraph 4(b)(iv) of the Policy. Such being the case, whether the Respondent attempted to disrupt the Complainant’s business or tarnished the reputation of its trademarks may remain open. For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in 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 Anne-Virginie La Spada
Sole Panelist
Date: December 23, 2020
Full & Egal Universal Law Academy