Complainant is Algebris Investments (Luxembourg) S.à r.l., Luxembourg, represented by Barker Brettell LLP, United Kingdom.
Respondent is faik demirdas, Algebris invest bv, Netherlands. 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 29, 2021. On January 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 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 Complainant on February 1, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 5, 2021. 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 Respondent of the Complaint, and the proceedings commenced on February 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on March 2, 2021. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on March 9, 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 Complainant is an asset-management firm with offices in Europe, North America, and Asia. It is the proprietor of several registrations for the ALGEBRIS mark, including the following: - European Union Trade Mark No. 4996096 for ALGEBRIS (word mark), registered on September 20, 2007 for services in class 36; - European Union Trade Mark No. 018267742 for ALGEBRIS INVESTMENTS (word mark), registered on November 17, 2020 for services in class 36; - United Kingdom Trade Mark No. UK00918267742 for ALGEBRIS INVESTMENTS (word mark), registered on November 17, 2020 for services in class 36; - United States Trademark No. 5144726 for ALGEBRIS (word mark), registered on February 21, 2017 for services in class 36. The disputed domain name was registered by Respondent on October 30, 2020. It does not resolve to an active website. 5. Parties’ Contentions A. Complainant Complainant’s contentions may be summarized as follows: Under the first element, Complainant contends that its marks are contained entirely in the contested domain name. The disputed domain name is the same as Complainant’s ALGEBRIS INVESTMENTS mark, with the exception of the final syllable “ments,” which is a negligible difference that does nothing to distinguish the signs. The disputed domain name is the same as Complainant’s ALGEBRIS mark, with the exception of the inclusion of “invest.” This does not effectively distinguish it from Complainant’s mark. The “invest” portion of the domain strengthens the association with Complainant due to the services offered by Complainant. The disputed domain name suggests a link with Complainant, the company name of which is Algebris Investments (Luxembourg) S.à.r.l. Under the second element, Complainant contends that, before notice to Respondent of the dispute, there has been no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain in connection with a bona fide offering of goods or services. Respondent has located a company called “Algebris Invest B.V.” in the Netherlands. Despite this company name, it is not possible for Respondent to have built up any user rights or goodwill. The disputed domain name is not yet in use and the company name was changed to “Algebris Invest B.V.” only recently, near the time of registration of the disputed domain name. Prior to the change of name this company was known as “Ali Bey Servies B.V.” Complainant suspects this change of name has been actioned with the intent of piggybacking on its reputation in combination with the abusive use and registration of the disputed domain name. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Complainant is part of the Algebris Group, an independent global asset management firm. It maintains offices in London, Milan, Rome, Dublin, Luxembourg, Boston, Singapore, and Tokyo, and its entities are licensed and regulated by financial regulatory authorities in the various countries. This is a highly regulated industry, designed to protect consumers. Complainant has established substantial reputation and goodwill in its name and in the services offered through its longstanding use of the ALGEBRIS and ALGEBRIS INVESTMENTS marks. Respondent has no legitimate interests in the disputed domain name and has no claim to use the name. Under the third element, Complainant contends that Respondent has registered the disputed domain name in bad faith to piggyback on the reputation of Complainant and to attract Internet users to its website for commercial gain. The “invest” portion of the disputed domain name indicates that the commercial offering of the business would be financial services, which is identical to that of Complainant. Registration of the disputed domain name represents an intrusion into Complainant’s field designed to jumpstart Respondent’s business by siphoning off Complainant’s goodwill and reputation to its own gain. Such actions take unfair advantage of Complainant’s reputation and is detrimental to its business. Should Respondent start offering unregulated financial services under a misleadingly and confusingly similar name this would be dangerous for consumers and will cause harm to Complainant’s goodwill and reputation. Respondent appears to have taken no actions to develop the website to become a legitimate business. Respondent’s passive holding amounts to bad faith. Complainant’s mark has a reputation and goodwill, is widely known and highly distinctive, and there is no evidence of any actual contemplated good faith use by Respondent. Respondent could not put the disputed domain name to good faith use. Finally, Respondent has concealed its identity. Complainant requests transfer of the disputed domain name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights predating the registration of the disputed domain name in the ALGEBRIS mark through registrations in several jurisdictions, including the European Union. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. In comparing Complainant’s ALGEBRIS mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with this mark. The disputed domain name contains Complainant’s ALGEBRIS mark in its entirety, along with the descriptive term “invest.” The addition of the hyphen after the word “algebris” and the addition of the descriptive term “invest” does not prevent a finding of confusing similarity with Complainant’s ALGEBRIS mark. Such a finding is consistent with previous UDRP practice. See WIPO Overview 3.0, section 1.8 and cases cited thereunder. The disputed domain name is additionally confusingly similar to Complainant’s later ALGEBRIS INVESTMENTS mark as the dominant feature and/or more than half of this mark is recognizable in the disputed domain name. Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, Respondent’s 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) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent 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. The circumstances stated in the Complaint, the amended Complaint and evidence in support set forth in the annexes thereto indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which comprises Complainant’s established ALGEBRIS mark with a hyphen and a descriptive term that alludes to the nature of Complainant’s business, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.2. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the ALGEBRIS mark with the permission of Complainant. The fact that Respondent changed its name to “Algebris Invest B.V.” a few weeks prior to registering the domain name does not confer such rights or legitimate interests. The overall circumstances demonstrate that Respondent changed its name to “Algebris Invest B.V.” primarily to circumvent the application of the UDRP or otherwise prevent Complainant’s exercise of its rights. Moreover, as previously noted, the nature of the disputed domain name, which consists of Complainant’s ALGEBRIS mark plus a descriptive term that alludes to the nature of Complainant’s business, cannot constitute fair use since it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. There is no use of the disputed domain name that would support a finding of rights or legitimate interests. The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. The circumstances of the case, in particular, the very close proximity of the disputed domain name to Complainant’s mark and the nature of the descriptive term, prevent the inference of any rights nor legitimate interests on the part of Respondent. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or (ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or (iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel finds bad faith registration and use under the Policy. Complainant’s rights in the distinctive ALGEBRIS mark predate the registration of the disputed domain name by more than a decade. It is not credible that Respondent was unaware of Complainant’s well-established mark when it registered the disputed domain name. The addition of the term “invest” demonstrates a deliberate effort to emulate Complainant’s mark, as does the very recent corporate name change to “Algebris Invest B.V.” by Respondent. Considering all these circumstances, the Panel finds that such a registration targets Complainant and creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith. The Panel finds that Respondent has demonstrated bad faith by passive holding of the disputed domain name. In particular, the Panel finds that Complainant’s trademark is distinctive, Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name, and there is no plausible actual or contemplated use of the disputed domain name that would not be illegitimate. Such a finding is consistent with previous UDRP decisions, such asWIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmellows. See also WIPO Overview 3.0, section 3.3. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: March 23, 2021
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