The Complainant is Marshall Wace LLP, United Kingdom, represented by Simone Intellectual Property Services Asia Limited, China.
The Respondent is Yong Woon Chin, Malaysia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 9, 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 17, 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 amended Complaint on February 18, 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 the Respondent of the Complaint, and the proceedings commenced on February 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on April 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 The Complainant is an alternative investment manager specializing in long/short equity. It was founded in 1997 by Paul Marshall and Ian Wace. Its name is a combination of the founders’ surnames. It is one of the largest hedge fund managers in the world in terms of assets under management. The Complainant is based in London and also has locations in Hong Kong, China, New York, Shanghai, and Singapore. Nothing in the record of this proceeding indicates that the Complainant or its parent company, Marshall Wace Asset Management Ltd, holds a trademark registration for “Marshall Wace”. The Complainant has registered the domain name The Respondent is an individual resident in Malaysia. The disputed domain name was registered on July 30, 2020. It formerly resolved to a website in Chinese that purported to be for the Complainant and prominently displayed the MW logo. The website displayed a list of financial services that included asset management. The website invited Internet users to register and input their bank card details. At the time of this Decision, the disputed domain name no longer resolves to any active website; rather, it is passively held. The Registrar confirmed that the language of the Registration Agreement is English. 5. Parties’ Contentions A. Complainant The disputed domain name is identical to the Complainant’s Marshall Wace name/mark. The Complainant has established unregistered or common law rights in its name. As a brand, “Marshall Wace” has acquired substantial fame and recognition in China; there is a high degree of actual public (e.g., relevant consumer, industry, media) recognition between the Marshall Wace name/mark and the Complainant. The disputed domain name contains that name/mark in its entirety with the addition of the letters “am”, which can be interpreted as an abbreviation of “asset management”, which will only further mislead relevant consumers into believing this is an official, authorized or endorsed website of the Complainant in China. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed or otherwise authorized the Respondent to use its Marshall Wace name/mark or to register a domain name incorporating its Marshall Wace name/mark. There clearly is no legitimate noncommercial or fair use of the disputed domain name being made by the Respondent. The disputed domain name has been registered and is being used in bad faith. Given the overwhelming reputation of the Marshall Wace name/mark, the Respondent is fairly assumed to have full knowledge of that name/mark. The Respondent has set up and been operating a website associated with the disputed domain name that is an exact copy of the Complainant’s official website, only with the content translated into Chinese. The Respondent’s website asks visitors to upload details of their personal ID and bank cards for asset management purposes. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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 Complaint is based on an allegation of common law rights in the trademark MARSHALL WACE. The evidence shows that the Complainant has used the name “Marshall Wace” in the course of trade since 1997 to refer to itself and its asset management services, including on its website. The Complainant is one of the largest hedge fund managers in the world. Since 1999, it has won numerous alternative investment and hedge fund industry awards, particularly in Europe and Asia. The evidence shows that the financial press, including online, refer to the Complainant as “Marshall Wace” in relation to its asset management services. Based on the evidence submitted, the Panel is satisfied that the Complainant has demonstrated that the name “Marshall Wace” has become a distinctive identifier that clients, industry and media in the financial sector in the United Kingdom and likely elsewhere associate with the Complainant and its asset management services. Therefore, the Panel is satisfied that the Complainant has common law rights in the trademark MARSHALL WACE in the United Kingdom. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3. Given the global nature of the Internet and Domain Name System, the jurisdiction where the Complainant has rights in the trademark is not relevant to the Panel’s assessment under the first element of paragraph 4(a) of the Policy. Accordingly, it is unnecessary for that assessment to determine whether the Complainant holds rights in an unregistered trademark in the jurisdiction where the Respondent is resident or in the jurisdiction to which the website is directed. See WIPO Overview 3.0, section 1.1.2. The disputed domain name wholly incorporates the MARSHALL WACE mark. While the disputed domain name adds the element “-am” after the mark, this element does not prevent a finding of confusing similarity with the mark. The mark remains clearly recognizable within the disputed domain name. See WIPO Overview 3.0, section 1.7. The only other element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The disputed domain name formerly resolved to a website in Chinese that was presented as if it were the Complainant’s Chinese website. The disputed domain name wholly incorporates the Complainant’s MARSHALL WACE trademark but the Complainant submits that it has not licensed or otherwise authorized the Respondent to use its MARSHALL WACE mark or to register a domain name incorporating that mark. At the time of this decision, the disputed domain name is passively held. The Panel does not consider either use to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is either use a legitimate noncommercial or fair use of the disputed domain name for the purposes of paragraph 4(c)(iii) of the Policy. The Respondent is identified in the Registrar’s WhoIs database as “Yong Woon Chin”, not the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.” The disputed domain name was registered in 2020. The Complainant has used its name “Marshall Wace” since 1997. Based on the evidence, the Panel is satisfied that the Complainant acquired its common law rights in the MARSHALL WACE mark long before the registration of the disputed domain name. The disputed domain name wholly incorporates the MARSHALL WACE mark as its initial element. It combines that mark with a hyphen and the letters “am”, evidently as an abbreviation of “asset management”, which is a description of the Complainant’s services. The Respondent’s website displayed the Complainant’s MW logo and was presented as if it were the Complainant’s Chinese website. Given these circumstances, the Panel finds that the Respondent knew of the Complainant and its MARSHALL WACE mark at the time that he registered the disputed domain name. The Respondent formerly used the disputed domain name, which wholly incorporates the Complainant’s MARSHALL WACE mark, to resolve to a website that falsely purported to be the Complainant’s Chinese website. The Respondent’s website invited Internet users to register and provide their bank card details. This use was presumably intended for commercial gain. Given these circumstances, the Panel considers that the disputed domain name was intended to attract Internet users by creating a likelihood of confusion with the Complainant’s MARSHALL WACE trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a service on that website within the terms of paragraph 4(b)(iv) of the Policy. The Panel notes that the use of the disputed domain name has since changed, and that it no longer resolves to an active website. This change of use does not alter the Panel’s conclusion and may in fact constitute a further indication of bad faith. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 Matthew Kennedy
Sole Panelist
Date: April 13, 2021
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