The Complainant is Wellington Management Company LLP, United States of America (“United States”), represented by Ropes & Gray LLP, United States.
The Respondent is Stephane Cassado, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2020. On November 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 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 December 1, 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 December 5, 2020. The Registrar also indicated that the language of the Registration Agreement was French. The Complaint was filed in English. The Center sent an email communication to the Complainant on December 1, 2020, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into French, or a request for English to be the language of proceedings. The Complainant filed a request for English to be the language of proceedings on December 3, 2020. The Respondent did not submit any arguments. 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 in English and in French, and the proceedings commenced on December 10, 2020. On December 10, and December 11, 2020, the Respondent sent informal emails in English and in French. On December 11, 2020, the Center informed the Parties of the possibility to suspend the proceedings to explore settlement options. On December 14, 2020, the Complainant informed the Center that it was not interested in pursuing settlement options and requested that the proceedings continue. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2020. The Respondent did not submit any formal response. Accordingly, the Center informed the Parties that it would proceed to Panel appointment on January 5, 2021. The Center appointed Alistair Payne as the sole panelist in this matter on January 20, 2021. 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. The Panel takes note of the Complainant’s submissions regarding the language of proceedings, and finds that there is sufficient evidence in the case file to establish that the language of proceeding be English, and render the decision in English in accordance with paragraph 10 and 11 of the Rules. 4. Factual Background The Complainant, founded in 1928, is one of the world’s largest independent investment management firms with a headquarters in Boston, offices in nine other jurisdictions and more than 2200 institutional clients worldwide. The Complainant or its group companies trade under the WELLINGTON MANAGEMENT name and mark and owns trade mark registrations in various jurisdictions including European Trade Mark 008544819 for WELLINGTON MANAGEMENT registered on February 17, 2010 and European Trade Mark 014405864 for WELLINGTON MANAGEMENT FUNDS registered on October 11, 2015. It also owns over 170 domain names that use the words “wellington” and “funds” all of which automatically revert to its main website at “www.wellington.com”. The disputed domain name was registered on October 26, 2020 and resolves to a website that purports to offer fund management and financial services under the name or mark “Wellington Funds” to a francophone public. 5. Parties’ Contentions A. Complainant The Complainant submits that its affiliate group company owns registered trade mark rights for the WELLINGTON MANAGEMENT and WELLINGTON MANAGEMENT FUNDS marks as set out above and that the Complainant owns the group’s portfolio of domain names that use the name “wellington” in combination with the word “funds”. It says that the disputed domain name merely abbreviates the Complainant’s registered WELLINGTON MANAGEMENT FUNDS mark as “wellingtonfunds” and adds the geographic designation “fr”. It submits that this amounts to the disputed domain name adding the descriptive term “funds” and the geographic term “fr” to “WELLINGTON” being the most distinctive element of the Complainant’s mark. The Complainant submits that these changes do not distinguish the disputed domain name from its registered trade mark rights and therefore the disputed domain name is confusingly similar to those rights. The Complainant submits that there is no relationship or affiliation between the Complainant and the Respondent giving rise to any license, permission, or other right, by which the Respondent could own or use any domain name incorporating the Complainant’s registered WELLINGTON MANAGEMENT or WELLINGTON MANAGEMENT FUNDS marks. It further says that both before and after the date of registration, the Respondent has not used or prepared to use the disputed domain name for any bona fide offering of goods or services, has not been commonly known by the disputed domain name and has not made any non-commercial or fair use of the disputed domain name. The Complainant notes that the website to which the disputed domain name resolves mimics the Complainant’s website. It features its WELLINGTON MANAGEMENT stylized word mark although the Respondent has replaced the stylized word “management” with “funds” using the same (or a substantially similar) font in the same location on the page. Overall, says the Complainant, the website to which the disputed domain name resolves otherwise has the same look and feel. According to the Complainant, the Respondent’s website mimics the Complainant’s website’s use of color and simply translates portions into French (e.g, “equity” to “fonds d’actions,” “fixed income” to “fonds a revenue fixe,” “multi-asset” to “fonds multi-actifs,” and “alternatives” to “investissements alternatifs”). This says the Complainant is in competition with its business and is not legitimate or bona fide activity. The Complainant submits that the Respondent registered the disputed domain name without the Complainant’s authorisation on October 26, 2020, some 87 years after the Complainant was founded and more than 53 years after the Complainant’s WELLINGTON MANAGEMENT mark first was used in commerce in the United States. The Complainant submits that its mark is famous and that the Respondent’s registration of the disputed domain name which is confusingly similar to it, in circumstances that it has no relationship to the Complainant is evidence of bad faith registration and use. The Complainant says that the Respondent is attempting to take unfair advantage of the goodwill and reputation attaching to the Complainant’s marks by using the disputed domain name to direct to its own website that mimics the Complainant’s website and by purportedly offering financial services. The Complainant notes that under paragraph 4(b)(iv) of the Policy, the use of a domain name “to attract, for commercial gain, Internet users […] by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site” is evidence of registration and use in bad faith. It submits that by using the Complainant’s marks to purportedly offer financial services, the Respondent is creating a substantial likelihood of confusion that the Complainant is responsible for or affiliated with the disputed domain name in terms of this section of the Policy. In addition, the Complainant submits that the Respondent appears to be using the disputed domain name for phishing. On November 4, 2020, the Complainant says that it received an email from a third party stating as follows: “Hello, I allow myself to contact you, I have been approached “wellington Funds”. Is it a subsidiary of your group? their website seems strange to me, Could you confirm to me that it is not a company which uses your name without your agreement? https://www.wellingtonfundsfr.com/ [wellingtonfundsfr.com]. thank you in advance.” The Complainant submits that the Respondent’s use of the disputed domain name for phishing is evidence that the disputed domain name was registered and is used in bad faith. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has submitted that one of its affiliate and group companies, Wellington Group Holdings LLP, owns the group’s trade mark registrations including those noted above. The Respondent has not challenged this submission and the Panel therefore finds that the Complainant or its affiliate companies own registered trade mark rights for the purposes of the Policy, namely European Trade Mark 00854819 for WELLINGTON MANAGEMENT registered on February 17, 2010 and European Trade Mark 014405864 for WELLINGTON MANAGEMENT FUNDS registered on October 11, 2015. “WELLINGTON” is the key distinguishing element in both of these registrations and it is wholly incorporated into the disputed domain name. The disputed domain name differs from the first of these registrations by replacement of “funds” and “fr” for “management”. It differs from the second of these trade marks only by the omission of the word “management” and by adding the geographical term “fr” to it. These alterations, involving the addition or omission of commonly used descriptive or geographic terms does not serve to distinguish the disputed domain name from the Complainant’s registered trade marks for the purposes of the Policy. As a result, the Panel finds that disputed domain name is confusingly similar to the Complainant’s registered trade mark rights. B. Rights or Legitimate Interests The Complainant has submitted that there is no relationship or affiliation between it and the Respondent that that amounts to a licence, permission, or other right, by which the Respondent could own or use any domain name incorporating the Complainant’s registered WELLINGTON MANAGEMENT or WELLINGTON MANAGEMENT FUNDS marks. It has further submitted that both before and after the date of registration, there is no evidence that the Respondent has used or prepared to use the disputed domain name for any bona fide offering of goods or services, has been commonly known by the disputed domain name or has made any non-commercial or fair use of the disputed domain name. The Complainant alleges that the website to which the disputed domain name resolves mimics the Complainant’s website. As submitted by the Complainant, the Panel finds that it features the WELLINGTON MANAGEMENT stylized word mark with the replacement of the word “management” by “funds” and has used the same, or a substantially similar font in the same location on the page. In the Panel’s view, the Complainant is also correct in asserting that the website to which the disputed domain name resolves has the same look and feel as the Complainant’s website. The Panel notes that it replicates various features, including but not limited to the use of color and direct French translations of various terms and expressions used on the Complainant’s website. In addition, the descriptions on the website would appear to describe the Complainant’s business, for example, by identifying for example that the Respondent’s first fund was launched in 1928 (the same date as the Complainant’s starting date). Overall, this appears to be an attempt by the Respondent to mimic the Complainant’s website and represent itself to Internet users as the Complainant with a view to diverting custom. The Panel agrees with the Complainant that this is not consistent with legitimate or bona fide activity. The Panel finds that the Complainant has therefore made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which case has not been rebutted by the Respondent. As a consequence and also for the reasons set out below under Part C, the Panel finds that the Complaint succeeds under this element of the Policy. C. Registered and Used in Bad Faith The Complainant’s registered trade mark rights and date of commencement of business under its WELLINGTON MANAGEMENT mark pre-dates the Respondent’s registration of the disputed domain name by many years. It is clear that the Complainant has developed a very substantial reputation and goodwill in connection with its mark and business globally amongst the investment community, however there is insufficient evidence on the record to support a finding that it falls within the category of very well known or famous marks. However, the Panel finds that the “wellington” element of the Complainant’s mark is highly distinctive in relation to investment services and in all the circumstances it is very unlikely that the Respondent chose to include it in the disputed domain name by coincidence. It is apparent based on the website to which the disputed domain name resolves that various indicia and get-up of the Complainant’s website have been mimicked as outlined under Part B above and overall it appears that the Respondent has sought to use it to confuse the French speaking public to which this website is aimed into thinking that it is the Complainant’s website or is somehow affiliated with it. Therefore, the Panel finds that it is most likely that the Respondent was well aware of the Complainant’s trade mark when it registered the disputed domain name on October 26, 2020. Under paragraph 4(b)(iv) of the Policy, the use of a domain name to intentionally attract, for commercial gain, Internet users to a web site by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site amounts to evidence of registration and use of a domain name in bad faith. The Panel finds that the Respondent is blatantly attempting to take unfair advantage of the goodwill and reputation attaching to the Complainant’s marks by using the disputed domain name to re-direct Internet users to its own website which mimics in the various respects outlined above the Complainant’s website, obviously with a view to confusing francophone Internet users into thinking that it is the Complainant’s website or is associated with it and to providing financial services to them or otherwise using them for its own commercial purposes. This amounts to evidence of registration and use of the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy. The Panel is not persuaded that the email received by the Complainant on November 4, 2020 amounts to evidence of phishing. In any event this is not material as there is already sufficient evidence to support a finding that the disputed domain name has been registered and used in bad faith and the Panel finds that the Complaint succeeds under this element 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 Alistair Payne
Sole Panelist
Date: February 3, 2021
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