The Complainant is Merian Global Investors Holdings Limited, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Xavier Dylan, Merian Global Investors, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2020. On December 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 23, 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 28, 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 January 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2021. The Center appointed Jon Lang as the sole panelist in this matter on February 17, 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 Complainant was originally known as Old Mutual Global Investors until it changed its name in 2017 to Merian Global Investors (“Merian” being derived from the name of the German-born polymath, Maria Sibylla Merian). The Complainant was established with a view to innovating within the investment services and funds management space. As at 2018, the Complainant had long-only funds and alternative funds under management of USD 27.1 billion and USD 17.7 billion respectively. On July 1, 2020 the Complainant was acquired by Jupiter Asset Management (“Jupiter”) for GBP 370 million. Prior to acquisition, the Complainant maintained a strong internet presence via its primary domain name and website “www.merian.com”. During the 12-month period from October 2019 to September 2020, the Complainant’s website saw an average of 1,269,575 visits per month. The Complainant is the owner of a number of trademark registrations for (and which include) MERIAN across various jurisdictions, including United Kingdom Intellectual Property Office trademark registration number 3293383 (Registration date: June 1, 2018), European Union Intellectual Property Office trademark registration number 017867010 (Registration date: August 22, 2018), and United States Patent and Trademark Office trademark registration number 5894208 (Registration date: October 29, 2019), all for MERIAN. The Domain Name was registered on July 3, 2020. The Respondent was using the Domain Name to redirect to the Complainant’s official website “www.merian.com”. At the time of this decision, the Respondent is using the Domain Name to direct Internet users to a website that resolves to a blank page which lacks content. 5. Parties’ Contentions A. Complainant The following is a brief summary of the key contentions of the Complainant: - The Domain Name is identical or confusingly similar to a trademark or service Mark in which the Complainant has rights The Complainant has spent a considerable amount of time and money protecting its intellectual property rights and by virtue of its trademark and service mark registrations, the Complainant is the owner of the MERIAN trademark. It is standard practice when comparing a domain name to a trademark, not to take the generic Top-Level Domain (“gTLD”) extension into account. In creating the Domain Name, the Respondent has added the descriptive term “invest” to the MERIAN trademark, thereby making the Domain Name confusingly similar to the Complainant’s trademark. The fact that the term “invest” is so closely linked and associated with the Complainant’s business, brand and trademark, only serves to underscore and increase the confusing similarity between the Domain Name and the Complainant’s trademark. Additionally, the Respondent’s use of the Domain Name contributes to confusion in that it once pointed to the Complainant’s own website. - The Respondent has no rights or legitimate interests in respect of the Domain Name The Complainant’s trademark registrations are prima facie evidence of the validity of the MERIAN trademark and of the Complainant’s exclusive right to use it in commerce or in connection with the goods and/or services specified in the registration certificates. The Respondent is not sponsored by or affiliated with Complainant in any way and the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner. The Respondent is not commonly known by the Domain Name. Although the Registrar indicates that the Respondent is “Xavier Dylan / Merian Global Investors”, it is the Complainant’s contention that the Respondent has falsely identified itself as, or as being associated with the Complainant. The Complainant has not licensed, authorized or permitted the Respondent to register domain names incorporating the Complainant’s trademarks. Further, when the Complainant first engaged the Respondent via a cease and desist letter, no registrant organization was displayed by the WhoIs service. The Respondent only updated the WhoIs database, fraudulently identifying itself as the Complainant, after having received letters from the Complainant. Given the totality of the circumstances, the Panel should find that the Respondent is not commonly known by the Domain Name. Prior to the Complainant sending a cease and desist letter to the Respondent, the Domain Name pointed to the Complainant’s official website. The Respondent’s use appears to be neither business nor non-business orientated, amounting only to the Domain Name pointing towards the Complainant’s own legitimate website. As such, the Respondent is not using the Domain Name to provide a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Whilst no evidence has been found suggesting that the Domain Name was actively used as part of a fraud, the presence of MX records on the Domain Name, coupled with the Respondent’s use of the Domain Name to point to the Complainant’s own website, strongly implies that the Domain Name could be used as part of an email phishing scheme in the future. At present, the Respondent is using the Domain Name to direct Internet users to a website that resolves to a blank page which lacks content. The Respondent has failed to make use of this site and has not demonstrated any attempt to make legitimate use of it (or the Domain Name). The Respondent registered the Domain Name on July 3, 2020, which is significantly after the Complainant filed for registration of its MERIAN trademark and also significantly after the Complainant first began using its trademarks in 2018. - The Domain Name was registered and is being used in bad Faith The Complainant and its MERIAN trademark are known internationally, with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services globally using this trademark since 2018, which is prior to the Respondent’s registration of the Domain Name on July 3, 2020. By registering a domain name that incorporates the Complainant’s MERIAN trademark in its entirety, along with the related term “invest”, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark (as well as its The MERIAN trademark is so closely linked and associated with the Complainant, the Respondent’s use of the mark, or any minor variation of it, strongly implies bad faith. The Respondent’s registration of the Domain Name shortly after Jupiter announced that it had completed its acquisition in 2020, strongly suggests that the Respondent knew of the Complainant and only registered the Domain Name in response to the publicity generated by the acquisition. Furthermore, the details used by the Respondent in connection with the Domain Name are blatantly false. More specifically, when the Respondent initially registered the Domain Name no “Registrant Organization” was listed. It was only after the Respondent received the Complainant’s cease and desist letter that “Registrant Organization” was updated to “Merian Global Investors”. The Respondent has created a likelihood of confusion with the Complainant and its trademarks by registering a domain name containing the Complainant’s MERIAN trademark along with the related term “invest”, only to then direct Internet users to the Complainant’s official website. This demonstrates that the Respondent is using the Domain Name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead them as to the source of the Domain Name and website. By creating a likelihood of confusion between the Complainant’s MERIAN trademark and the Domain Name, thereby leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Domain Name, the Respondent has demonstrated an intent to capitalize on the fame and goodwill of the Complainant’s trademarks. The Respondent may at any time cause Internet traffic to direct to websites that are not that of, or associated with, the Complainant. Additionally, the Respondent has set-up MX records on the Domain Name. This, coupled with the Respondent’s use of the Domain Name (to point to the Complainant’s own website) gives rise to the strong possibility that the Respondent intended, or intends, to use the Domain Name to send fraudulent emails as part of a phishing scheme. Whilst the Domain Name currently resolves to an inactive site and is not being used, bad faith “use” in the context of the Policy does not require a positive act on the part of the Respondent; a passive holding of a domain name can constitute a factor in finding bad faith registration and use under the Policy. The Domain Name can only be taken as intending to cause confusion among Internet users as to the source of the Domain Name, and thus it must be considered as having been registered and used in bad faith under the Policy. Indeed, in the circumstances, there is no plausible good-faith reason or logic for the Respondent to have registered the Domain Name. Rather, it is indicative of an intention to hold the Domain Name for some future active use in a way which would be competitive with or otherwise detrimental to the Complainant. It is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate. Previous Panels have concluded that evidence of prior UDRP decisions in which domain names have been transferred away from the Respondent supports a finding that the Respondent has engaged in a bad faith pattern of “cybersquatting.” The Respondent here has previously been involved in the below-listed cases, which provides evidence of a pattern of cybersquatting: - LO IP SA, Banque Lombard Odier & Cie SA, Lombard Odier Asset Management (USA) Corp., Lombard Odier Asset Management (Europe) Ltd., Lombard Odier Asset Management (Switzerland) SA v. Xavier Dylan,WIPO Case No. D2020-2360. - Matthews International Capital Management, LLC v. Xavier Dylan, FORUM Decision No, FA 1910980. - Intesa Sanpaolo S.p.A. v. Xavier Dylan, CAC Decision No. 102599. The Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. It is more likely than not that the Respondent knew of and targeted the Complainant’s trademark and the Respondent should be found to have registered and used the Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires a complainant to prove: (i) that a respondent has registered a domain name which is identical or confusingly similar to a trademark or service mark in which a complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar The Complainant is the owner of the MERIAN trademark and thus clearly has rights therein. Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the MERIAN trademark followed by the word “invest”. Accordingly, the MERIAN trademark and Domain Name are not identical and thus the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP typically involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Section 1.7 of WIPO Overview 3.0 goes on to provide “…in cases where a domain name incorporates the entirety of a trademark, …. the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The MERIAN trademark is incorporated in its entirety within the Domain Name. It is clearly recognizable within the Domain Name. The addition of the word “invest” does little to diminish the visual impression created by the Domain Name, namely that the MERIAN trademark, as well as being its first, is also its dominant element. The Panel finds that the Domain Name is confusingly similar to the MERIAN trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding. A respondent can show it has rights or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is 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. Here, however, there is no evidence to suggest that the Respondent is commonly known by the Domain Name. Further, given the use to which the Domain Name has been put, first to point to the Complainant’s own official site (suggesting, wrongly, some association between the Domain Name and the Complainant) and latterly, to an inactive page (thereby likely frustrating any Internet user expecting to find the Complainant at the site to which the Domain Name resolves), it would be difficult to conclude that there is anything legitimate (or noncommercial) or fair about the Respondent’s use. As to an absence of an intent to mislead (for commercial gain), the Respondent’s choice of Domain Name, the dominant element being the Complainant’s MERIAN trademark with the addition of the word “invest”, a word closely associated with the business of the Complainant (and thus enhancing rather than reducing the risk of confusion), suggests the very opposite. A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it seems clear that the Respondent set out to acquire a domain name that would create a misleading impression of association with the Complainant, which has then been used to resolve to the Complainant’s own website, and latterly an inactive page. These circumstances could not possibly be regarded as a bona fide offering of goods or services for the purposes of the Policy. The Respondent has sought to create an impression of association with the Complainant for its own, no doubt improper ends, which it has chosen not to attempt to justify. That perhaps is not surprising given that it appears to the Panel that there is very little the Respondent could say to challenge the Complainant’s assertion that it lacks rights or legitimate interests in the Domain Name. The Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides a number of non-exclusive scenarios, which may evidence a respondent’s bad faith. They include, for instance, a respondent registering a domain name in order to prevent an owner of the trademark or service mark to which it is said to be confusingly similar or identical, from reflecting the mark in question in a corresponding domain name (provided that the respondent has engaged in a pattern of such conduct). A respondent registering a domain name primarily for the purposes of disrupting the business of a competitor is another scenario, as is a respondent intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. A complainant does not have to demonstrate a precise literal application of one of the paragraph 4(b) scenarios. They are non-exclusive and illustrative only, and as long as there is evidence demonstrating that a respondent is seeking to take unfair advantage of, or to abuse a complainant’s trademark, such behaviour would satisfy the general principle underlying the bad faith requirement of the Policy. Beyond seeking to create an impression of association with the Complainant, the precise motivation of the Respondent in registering the Domain Name is not clear. What is clear however is that the Respondent would have known of the Complainant and its MERIAN trademark at the time of registration of the Domain Name, particularly given the use to which it was initially put. It would also have been obvious to the Respondent that the impression of association the Domain Name creates, is misleading. In these circumstances, it is difficult to contemplate any legitimate use of the Domain Name without permission of the Complainant. The fact that the Domain Name initially resolved to the website of the Complainant and that MX records have been set up for the Domain Name (suggesting e-mail use was contemplated), raises the possibility of the misleading Domain Name being used, at some point in the future, to perpetrate a fraud or to (wrongly) obtain personal information from Internet users. The Respondent’s registration cries out for explanation, but none has been provided. The fact that no use is now being made of the Domain Name (and hence can be treated as being passively held), does not prevent a finding of bad faith registration and use. One cannot ignore past use and, in any event, a passive holding of a domain name can support a finding of bad faith. UDRP panels must examine all the circumstances of the case. Section 3.3 of the WIPO Overview 3.0, provides: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. The MERIAN trademark is distinctive and has been incorporated in its entirety within the Domain Name which appears to have been constructed to create a misleading impression of association with the Complainant. The motive for doing so is not entirely clear, but in all the circumstances and without any explanation, one can only assume that the motive may well not have been legitimate. No Response was filed, or evidence of actual or contemplated good faith use provided in response to cease and desist letters or otherwise, (and none would seem plausible without permission of the Complainant). The updating of contact information as described earlier and the sheer implausibility of the Respondent’s corporate name being that of the Complainant, of course suggests that false contact details have been provided by the Respondent. There are other factors too that could be identified as supporting a finding of bad faith, but there is little point in providing an exhaustive list. In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. 7. Decision For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Jon Lang
Sole Panelist
Date: March 3, 2021
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