The Complainants are Fondations Capital SA, Luxembourg and Fondations Capital France, France, represented by Cabinet Veil Jourde, France.
The Respondent is Domain Admin, Whoisprotection.cc, Malaysia / Fondations Capital, Luxembourg. 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 25, 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 26, 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 26, 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 1, 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 December 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2020. The Center appointed Emmanuelle Ragot as the sole panelist in this matter on January 6, 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. 4. Factual Background The Complaint is brought by two Complainants (hereinafter referred to as “the Complainant”), who have a specific common grievance against the Respondent, and that the Respondent has engaged in common conduct that has affected the Complainants in a similar manner (see Old Mutual Life Assurance Company (South Africa) Limited, Old Mutual PLC, Old Mutual Investment Advisers, Inc., Old Mutual Life Assurance Company Zimbabwe Limited, South African Mutual Life Assurance Society, Old Mutual Life Assurance Company Kenya, Old Mutual Swaziland (Proprietary) Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Wesley Coleh,WIPO Case No. D2018-2480 (December 7, 2018)). This dispute concerns the domain name with a proposal to its visitors to invest in fake placements, by collecting their personal data before having to pay. The Complainant has provided evidence of recently published warnings to the attention of potential investors regarding the disputed domain name The Complainant is European independent investment advisory firms focused on private equity, has been operating in this sector for more than 15 years, and has been using “Fondations Capital” ever since, and benefit from a wide publicity. The Complainant has been providing global platforms that facilitate the financial services transactions for over 15 years, and has done so under the “Fondations Capital” trademark and corporate name for more than ten years, symbol of its reputation and goodwill in the global financial sector. Fondations Capital SA registered with EUIPO the trademark FONDATIONS CAPITAL on March 17, 2009, under the number 006732853 in class 36, which has not been renewed and has therefore expired on March 6, 2018. Both Complainants were registered with Companies Houses, in 2003 for the company Fondations Capital France, and in 2013 for the company Fondations Capital SA. 5. Parties’ Contentions A. Complainant The Complainant asserts that it owns and have used trademark and corporate name, that include the trademark FONDATIONS CAPITAL in many territories. The Respondent has registered the disputed domain name which, according to the Complainant, is confusingly similar/identical to the FONDATIONS CAPITAL trademark and corporate name. The expired FONDATIONS CAPITAL trademark, and the corporate name “Fondations Capital” are fully reproduced in the disputed domain name In addition, previous panels have considered in such circumstances that the full reproduction of a corporate name in a domain name constitutes an infringement of the Complainant’s rights (see Pamp SA and MKS (Switzerland) SA v. Pampsuisse Ltd., Walter Muelli,WIPO Case No. DCH2012-0028). After examination of the file, no evidence is provided that the Respondent holds any license or any other type of authorization given by the legitimate holders of said trademark and corporate name to use the marks. The Complainant also alleges that the disputed domain name containing the identical FONDATIONS CAPITAL trademark and corporate name, is confusingly similar to the FONDATIONS CAPITAL trademark and corporate name. The Complainant points out that not only the Respondent’s domain name contains the identical FONDATIONS CAPITAL trademark and corporate name, but also the hyphen “-” does not prevent a finding of confusing similarity. The Complainant states that the Respondent must have been aware of the Complainant and their trademark and corporate names at the time of registration of the disputed domain name, particularly since it pretends to offer through its website similar services, and declares an address that is almost identical as one of the Complainants’ address in Paris (“8 avenue Matignon” / “12 avenue Matignon”). The Complainant claims that the registration of the disputed domain name has been made in bad faith with the apparent intention to obtain a commercial gain by fraud or otherwise through confusion with the Complainants’ trademark and corporate names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15 (a) of the Rules instructs the Panel to: “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy states that the Complainant must prove that each of the three following elements are present: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respects of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant relies in the corporate names and the use of FONDATIONS CAPITAL as a distinctive source identifier. In this regard, the Complainant has provided evidence of articles in different media that refer to the Complainant and its services provided as FONDATIONS CAPITAL. In addition, the Respondent’s use of the website at the disputed domain name targeting the Complainant and its services supports the Complainant’s assertion that FONDATIONS CAPITAL has achieved significance as a source identifier for the purposes of the Policy. See section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). After examination, it derives that the Complainant has rights over an unregistered trademark FONDATIONS CAPITAL for the purposes of the Policy. The term “Fondations Capital” is the essential part of the mentioned trademark of the Complainant used in several countries. The disputed domain name is confusingly similar to the Complainant’s trademark. In the present case, the Panel does not hesitate to decide that the disputed domain name is confusingly similar to the unregistered trademark FONDATIONS CAPITAL. Indeed, the disputed domain name reproduces entirely the Complainant’s unregistered trademark FONDATIONS CAPITAL. In previous decisions, UDRP panels have considered that the incorporation of a trademark in its entirety is sufficient to establish that the domain name is identical or confusingly similar to the complainant’s trademark. Additionally, the disputed domain name reproduces the Complainant’s trademark FONDATIONS CAPITAL in its entirety and the additional hyphen “-” which does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s FONDATIONS CAPITAL mark. See section 1.8 of the WIPO Overview 3.0. See also Milliman, Inc. v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang,WIPO Case No. D2018-2178; General Electric Company v. Momm Amed la,WIPO Case No. D2000-1727. For all of the above-mentioned reasons, the Panel finds that the disputed domain name is confusingly similar to the unregistered trademark FONDATIONS CAPITAL in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) is fulfilled. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, it found by the Panel to be proved based on is evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purpose of paragraph 4(a)(ii): “(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 the intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.” It is well established from previous UDRP panel decisions (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455) that the burden of production shifts to the Respondent where the Complainant establishes a prima facie case showing the lack of rights and legitimate interests of the respondent to the disputed domain name. If the respondent fails to rebut the complainant’s case, a complaint is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In the present case, the Complainant states that the Respondent has no rights or legitimate interests with respect to its use of the disputed domain name. Furthermore, there is no evidence in the file showing any of the three circumstances under paragraph 4(c) of the Policy, or any other circumstance that would establish rights or legitimate interests of the Respondent. The Respondent has not submitted any Response and thus failed to demonstrate that he has rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. The Panel finds, also in light of the Panel’s findings below, that the second element of the Policy has been established. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. “(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 website or other online location, by creating the 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 case at hand, the disputed domain name has been registered by the Respondent despite the fact that “Fondations Capital” have been connected with the Complainant as a registered trademark for several years, and then as a used unregistered trademark for financial services, corresponding also to the Complainant’s corporate names. The Respondent is not listed as an owner of any trademark containing any “Fondations Capital” formatives. Nor is there any evidence that the Respondent owns any or has applied for any trademark registrations. There is no evidence that the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name. On the contrary, it appears clearly established that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Rather, the Respondent is blatantly using the disputed domain name with the intent for commercial gain and to misleadingly divert Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark and corporate name as to the source, sponsorship, affiliation, or endorsement of the websites and products advertised at the website under the Policy, paragraph 4(b)(iv). With the knowledge of the Complainant and the Complainant’s services, the Respondent registered and subsequently used the disputed domain name in bad faith to create confusion and attract Internet users seeking the Complainant and the Complainant’s services. The Complainant became aware of the scam, when its representatives were contacted by third parties that told him that they were contacted by “Fondations Capital” who proposed them investments, and to fill-out the online form available at the website at the disputed domain name to be able to do so. The French Autorité des Marchés Financiers (“AMF”) recently published a warning to the attention of potential investors regarding the website “www.fondations-capital.com” and the “usurpation”. The AMF published a list of blacklisted actors who have been the subject of a warning issued by the Authority and/or usurping a regulated actor, amongst which we find the disputed domain name. Other websites specialized in the analysis of scam in the field of finance have published articles to show that “the people behind this questionable site are not trustworthy” and “that the AMF has blacklisted Fondations-capital.com with the mention ‘Identity theft’. The firm whose identity is stolen is Fondations Capital Services France.” In such circumstances, previous panels have already ruled that such elements constituted compelling evidence that the disputed domain name was registered in order to attempt to attract Internet users for commercial gain by confusion with the Complainant’s activities as to the source of a service (HSBC Group Management Services Limited v. Malcolm Hyde, M.HydeLtd,WIPO Case No. D2020-1515; Compagnie Financière Tradition SA v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Fradotclaire,WIPO Case No. D2019-0773 in which the UDRP previous panel stated “Finally, the Complainant asserts that the Respondent is using the disputed domain name in email addresses and was alerted by Autorité des Marchés Financiers regarding the fraudulent use of the disputed domain name.”). The Respondent has acquired the disputed domain name with no apparent intention of utilizing it in connection with the provision of bona fide goods or services. Rather, the Respondent’s bad faith intent is to create confusion among consumers for commercial gain by taking advantage of the Complainant. It is likely that the Respondent chose the disputed domain name because of its similarity to an unregistered used trademark and corporate name in which the Complainant has rights. This was most likely done in the hope and expectation that Internet users searching for the Complainant’s services and products would instead come across the Respondent’s site. See Shaw Industries Group Inc. & Columbia Insurance Company v. Administrator, Domain,WIPO Case No. D2007-0583, citing Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267. The Panel notes that the Complainant’s used trademark and corporate name significantly predate the registration date of the disputed domain name. Hence, in view of the above-mentioned circumstances, it is inconceivable that the Respondent did not have the Complainant’s used trademark and corporate name in mind at the time of registration of the disputed domain name. Consequently, it is established that the Respondent both registered and is using the disputed domain name in bad faith in accordance with 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 Emmanuelle Ragot
Sole Panelist
Date: January 14, 2021
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