The Complainant is Regal Funds Management Pty Limited, Australia, represented internally.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Kizito Kizzy, Nigeria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2021. On January 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2021, 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 February 1, 2021 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 February 3, 2021. 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 February 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2021. The Respondent sent an informal communication on February 1, 2021 but did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2021. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 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 Complainant is a company incorporated in Australia. It has operated under the same name since 2004 and is a pioneer of the hedge fund and alternative investment industry in Australia. It employs 36 staff, including 20 investment professionals in Australia and Singapore. It manages a total of AUD 2 billion via a number of alternative investment strategies and provides investment management and investment advisory services to a range of institutional investors, family offices and high net worth individuals. The Complainant is trustee and manager of various funds under the brand name “Regal” including the Regal Investment Fund, which is listed on the Australian Securities Exchange and has a market capitalization of approximately AUD 440 million. The Complainant does not own registered trademark rights in REGAL or REGAL FUNDS MANAGEMENT but asserts that it has obtained common law trademark rights therein by virtue of extensive use and advertising since 2004. The Complainant has received multiple awards in recognition of its services in recent years, namely in 2010, 2011, 2014, 2016, 2018 and 2019. These include best fund awards for various types of "Regal" branded funds in each of those years and “Best Alternative Investment Manager of the Year 2019”. The Complainant circulates monthly newsletters for all of its funds, releases Information Memoranda to potential investors, runs quarterly investment webinars for the Regal Investment Fund, and issues a public newsletter named “Regal Insights”. The Complainant is recognized in financial media for its activities and is regularly approached for comment on investments and stock performance. The disputed domain name was registered on October 30, 2020. Little is known regarding the Respondent, whose only engagement with the administrative proceeding was an email addressed to the Center on February 1, 2021 which stated, “Changes will be made”. The website at the disputed domain name uses text directly copied from the “About us” page on the Complainant’s website on its own “About us” page and duplicates the Complainant’s address on each of its pages, including the “Contact us” page. A “YouTube” video is embedded on the Respondent’s website which features the Complainant’s CIO and Founder, Philip King. The “About us” page on the Respondent’s website also contains a section named “Our Team” which features real employees of the Complainant, copied from the “Team” section of the “About us” page on the Complainant’s website. The Respondent’s website contains alleged investor testimonials, one of which features various typographical errors. 5. Parties’ Contentions A. Complainant The Complainant contends as follows: Identical or confusingly similar The fact that the Complainant’s REGAL and REGAL FUNDS MANAGEMENT marks have acquired goodwill and reputation in the finance industry is sufficient to establish common law trademark rights. The fact that the Respondent has targeted said trademarks by making a website impersonating the Complainant supports the Complainant’s assertion that said trademarks have achieved significance as a source identifier. Past cases show that intentional targeting can support an assertion of distinctiveness and creates a presumption that a mark has achieved significance as a source identifier. The disputed domain name incorporates the entirety of the trademark REGAL, with the addition of the descriptive words “investments” and “capital”. Said words do not detract from the similarity but add to it because they describe the Complainant’s services. Where a domain name incorporates the entirety of a trademark or at least the dominant feature, as in the present case, the domain name will normally be considered confusingly similar. The broader context in which the website at the disputed domain name impersonates the Complainant further supports the Complainant’s submission on confusing similarity. Rights and legitimate interests Use of the disputed domain name for illegal activity such as the impersonation of the Complainant can never confer rights or legitimate interests upon the Respondent, nor can it be considered to be a bona fide offering of goods and services, or legitimate noncommercial or fair use. The Respondent is either impersonating the Complainant and/or misleading visitors to its website. The Panel can infer that said website is likely to be used to defraud visitors by inviting them to invest with the Respondent thinking that they are doing so with the Complainant or by harvesting personal and login data which would allow the Respondent to access such visitors’ accounts with the Complainant. The Respondent has created a site which uses the Complainant’s address, copyright images, videos and text and employee details to persuade investors that it is the Complainant. Investors are invited to login or create an account and thereafter to deposit money. Misappropriation of copyright materials and other circumstantial evidence can support the Complainant’s credible claim that the Respondent is engaged in illegal activity. The Respondent is not a reseller, licensee or other authorized person regarding the Complainant or its marks, neither is it affiliated with or endorsed by the Complainant. The Respondent is not commonly known by the disputed domain name and there is no evidence that it owns any trademarks or operates any business name relating thereto. The Respondent suggests that it does business as “Regal Investments Capital” but no such company or business exists. Registered and used in bad faith The Respondent has registered the disputed domain name primarily to disrupt the Complainant’s business. It has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to source, sponsorship, affiliation or endorsement of said website. It has sought to take unfair advantage of, abuse and engage in behavior detrimental to the Complainant’s marks. The disputed domain name was registered over 16 years after the Complainant’s marks were first used. They are well-known in Australia and have been extensively promoted over this period. The disputed domain name contains the REGAL mark with words descriptive of the Complainant’s services. This raises the preliminary assumption that the disputed domain name has been registered for an illegitimate purpose. Bad faith may be found where a respondent “knew or should have known” of a complainant’s rights yet proceeded to register a domain name in which it had no rights or legitimate interest. The use made of the disputed domain name to impersonate the Complainant via the Respondent’s website in the short time that has elapsed since its registration demonstrates that the Respondent was aware of the Complainant and its marks when it registered the disputed domain name. Use of a domain name for per se illegitimate activity such as impersonation or phishing is manifestly considered evidence of bad faith. Previous panels have found that creating a competing website impersonating a complainant is evidence of bad faith use. Such use brings the case within the provisions of paragraph 4(b)(iii) and 4(b)(iv) of the Policy. The Respondent’s use of a privacy shield, in circumstances where the Respondent is impersonating the Complainant and likely perpetrating fraud, and the Respondent’s failure to respond to the Complainant’s cease and desist letter, are further evidence of bad faith registration and use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The first element assessment under the Policy is in two parts. First, the Complainant must demonstrate that it has rights in a trademark. Secondly, it must show that the disputed domain name is identical or confusingly similar to such trademark. In the comparison process, the generic top-level domain (“gTLD”), in this case “.org”, is typically disregarded on the grounds that this is required for technical reasons only. The Complainant does not have registered trademarks pertaining to the terms REGAL and REGAL FUNDS MANAGEMENT but asserts that it holds unregistered trademark rights therein. In order for the Complainant’s assertion to be accepted, the evidence before the Panel must show that the terms concerned have become distinctive identifiers associated with the Complainant’s goods and services. As is noted in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), relevant evidence of such may include a range of factors, such as (i) the duration and nature of use of the marks, (ii) the amount of sales under the marks, (iii) the nature and extent of advertising using the marks, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. In the first place, regarding the duration of use of the marks, the Complainant states that it is named Regal Funds Management Pty Limited and presents a copy of its entry in the Australian Securities and Investments Commission’s database showing that it has traded under such name for over 17 years. Secondly, by way of sales under the mark, independent evidence is produced from the Australian Financial Review stating that by 2019 the Complainant had AUD 2.4 billion under management. While this may not correlate directly with “sales” as such, the Panel accepts this as ample evidence of the substance of the Complainant’s activities. Thirdly, by way of industry recognition, the Complainant provides details of numerous awards which it has received. Those awards for the Complainant’s business reference a short form of the Complainant’s corporate name i.e. “Regal Funds Management”. Those awards for certain of the Complainant’s specific funds mention the fund names, many of which include the term “Regal”. Fourthly, by way of advertising under the marks, the Complainant produces copies of an Information Memorandum, a slide deck for one of its regular webinars and a copy of its “Regal Insights” periodical. Each of these items features the Complainant’s corporate name in prominent position. Fifthly and finally, by way of media recognition, the Complainant produces multiple press articles about its business activities and/or reflecting the commentary of its personnel on the financial scene. The articles feature both the Complainant’s corporate name and the names of its funds, such as the “Regal Emerging Companies Opportunities Fund”. Noting both the extensive evidence provided and also that the Respondent has not taken issue with any of the Complainant’s assertions and evidence on this topic, the Panel affirms that the Complainant has demonstrated that it has unregistered trademark rights in the marks REGAL and REGAL FUNDS MANAGEMENT. Turning to the first element comparison exercise, the Panel notes that the second level of the disputed domain name contains three parts: “regal”, “investments” and “capital”. The Complainant’s REGAL mark is clearly identifiable as the first of these parts. The addition of the other two words, which are in themselves descriptive of financial services, does not prevent a finding of confusing similarity. In this particular case, the content of the website associated with the disputed domain name is also relevant to the first element assessment. It is clear to the Panel that the website at the disputed domain name contains text and other material lifted from the Complainant’s official website, such that it appears prima facie that the Respondent has sought to target the Complainant’s trademark via the disputed domain name (see section 1.15 of the WIPO Overview 3.0). In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and therefore that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes 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 intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests. The Panel is satisfied that the Complainant has made out the requisite prima facie case based on its submissions and associated evidence showing that the disputed domain name has been used for a website impersonating the Complainant, such that Internet users are likely to be misled. The Panel accepts the Complainant’s submission that it is reasonable to infer that the Respondent is engaged in such impersonation in order to defraud potential investors or to obtain sensitive personal data from them for illegal purposes. In these circumstances, the use of the disputed domain name could not give rise to any rights or legitimate interests on the part of the Respondent. The Panel considers that the Complainant’s allegations, as supported by its evidence, are of a serious nature and call for a response from the Respondent. It is notable that no response has been received and the Respondent’s informal message does not disclose any rights or legitimate interests in the disputed domain name. In these circumstances, the Panel considers that there is nothing on the present record which would serve to rebut the Complainant’s prima facie case and therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name. The requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 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.” Bearing in mind the fact that in the preceding section the Panel has accepted the Complainant’s assertion that the disputed domain name is being used for a website impersonating the Complainant, in likely furtherance of a fraudulent scheme, there can be no possible good faith motivation on the Respondent’s part surrounding the registration and use of the disputed domain name. In any event, despite receiving an opportunity to do so, the Respondent has failed to proffer any explanation whatsoever regarding such registration and use which might suggest that it has been engaged in a good faith activity. Based on the present record, and the serious allegations made by the Complainant which the Panel finds to be supported by the evidence, the Panel cannot conceive of any suitable explanation which might have been tendered by the Respondent on this topic. As outlined above, although paragraph 4(b) of the Policy contains examples of circumstances which, if present, shall be evidence of the registration and use of a domain name in bad faith, these are non-exclusive and are expressed to be without limitation. In the present case, the screenshots of the website associated with the disputed domain name put forward by the Complainant together with the comparison to those of the Complainant’s own site, along with the background materials demonstrating the substance and prominence of the Complainant’s financial services business, are more than sufficient for the Panel to make the reasonable inference that the disputed domain name is being used in connection with a fraudulent scheme based primarily upon an intent to impersonate the Complainant. The Panel is satisfied that the Respondent’s registration and use of the disputed domain name in connection with such a scheme constitutes registration and use in bad faith within the meaning of the Policy. Accordingly, the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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 Andrew D. S. Lothian
Sole Panelist
Date: April 20, 2021
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