The Complainant is L.M. Waterhouse & Co., Inc., United States of America (“United States”), represented by Roche Pia LLC, United States.
The Respondent is Scott Myers, Intersearch Global, Philippines. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2021. On March 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 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 April 13, 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 April 14, 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 April 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2021. The Center appointed John Swinson as the sole panelist in this matter on May 31, 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 financial services firm that provides financial expertise in relation to the management of family assets. The Complainant has been utilizing the unregistered mark L.M. WATERHOUSE in commerce since the founding of the company almost 41 years ago – when L.M. Waterhouse & Co., Inc. was first incorporated on July 31, 1980. The Respondent did not file a Response, so little is known about the Respondent. The disputed domain name was registered by the Respondent on April 20, 2017. The Complainant originally registered the disputed domain name in 2001, but let it lapse by accident in 2017. The disputed domain name resolves to a website that is designed to look like a website operated by the Complainant. 5. Parties’ Contentions A. Complainant The Complainant made the following submissions in the Complainant: Identical or Confusingly Similar The Complainant has been utilizing the unregistered trademark L.M. WATERHOUSE in commerce since the founding of the company almost 41 years ago – when L.M. Waterhouse & Co., Inc. was first incorporated on July 31, 1980. In partnership with T.D. Waterhouse, the Complainant was able to offer competitive prices and a complete array of financial services and products. From its long-term use of “L.M. WATERHOUSE” in this industry, the Complainant established brand equity and recognition in L.M. WATERHOUSE. The Complainant registered and utilized the disputed domain name, and the website located at the disputed domain name to promote its services to the consuming public. The Complainant first acquired the disputed domain name in 2001. In or about 2017, the Complainant’s business transitioned to another line of business and the Complainant inadvertently allowed the disputed domain name to lapse. The disputed domain name is identical to L.M. WATERHOUSE. The Respondent is falsely holding itself out as the Complainant. This includes the Respondent’s fraudulent use of the Complainant’s actual contact information on the website at the disputed domain name. Given the great risk to consumers in the financial services industry, the Respondent’s conduct causes significant harm to the Complainant’s brand and reputation, as well as a significant risk to the consuming public. Those consumers who have done business with the Complainant in the past or who might be looking for or interested in the services of a financial advisor are and will be drawn to the disputed domain name based on the Complainant’s trademark. Once there, these consumers are encouraged to fill out various PDF forms revealing personal identifying information and are then instructed to email that information back to the Respondent along with “your photo ID and proof of address in the form of a utility bill”. In the context of this fraudulent scheme, the Respondent is operating by and through the L.M. WATERHOUSE trademark in an effort to deceive the consuming public. Rights or Legitimate Interests Given that the Respondent is merely impersonating the Complainant, by definition the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent is clearly misusing the Complainant’s trademark in an effort to deceive the consuming public into believing it is actually the Complainant. The Respondent’s intent in this regard is fully demonstrated by its use of the Complaint’s actual physical contact information on the website at the disputed domain name. Behind this façade, the Respondent attempts to entice consumers to provide personal identifying information to them for what clearly appears to be improper use by the Respondent. The Respondent cannot claim any legitimate interests with respect to the disputed domain name given the disputed domain name is merely the identity of the Complaint (which the Respondent is impersonating the Respondent in the instant matter is trading upon the Complainant’s identity and the Respondent has designed the content of the website at the disputed domain name to convince others that it is actually the Complainant. Moreover, the Respondent’s control over the disputed domain name gives it the ability to send emails that would appear (seemingly without doubt) to originate from the Complainant. With an email address associated with the disputed domain name, the Respondent is in a position to engage in unlawful practices, and to obtain confidential data, including personal identifying information, from consumers, applicants for employment, and/or other third parties, and then use that information for an improper purpose. The Respondent is also in a position to collect credit card information or other payments from unsuspecting victims. The Respondent is not commonly known as L.M. WATERHOUSE. Registered and Used in Bad Faith The Respondent’s conduct demonstrates not only the Respondent’s knowledge of the Complainant and its trademark, but also demonstrates that the Respondent has specifically targeted the Complainant for its fraudulent scheme to impersonate the Complainant and suggest to the consuming public that it is a trusted provider in the financial services industry, by registering disputed domain name after the Complainant failed to renew it, and then by using the disputed domain name to impersonate the Complainant. The Respondent fails to provide any accurate contact information for itself. This is troubling in that consumers seeking financial advisory services are especially vulnerable to significant financial loss through fraud. The Complainant relies upon Startup Group v. Whois Agent, Domain Protection Services, Inc. / Dominique Geffroy,WIPO Case No. D2020-3303 which has similar facts to the present case. The bad faith of the Respondent is further demonstrated by what appears to be copyright infringement occurring on the site at the disputed domain name. The disputed domain name must be transferred to the Complainant in an effort to not only safeguard consumers and investors, but also to ensure that the Complainant is not charged with wrongdoing in which it did not engage. 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 enumerated in paragraph 4(a) of the Policy have been satisfied, namely: The onus of proving these elements is on the Complainant even though the Respondent failed to submit a Response. Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar The Complainant does not rely upon registered trademark rights. Rather, the Compliant relies upon common law trademark rights as it is entitled to do. To establish common law trademark rights for purposes of the Policy, the Complainant must show that its trademark has become a distinctive identifier which consumers associate with the Complainant’s financial services. See for example Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk,WIPO Case No. D2020-2773. The Complainant has provided evidence that the Complainant – active for some 41 years – has longstanding rights in the trademark L.M. WATERHOUSE. The fact that the Respondent is targeting the Complainant’s trademark (as discussed below) supports the Complainant’s assertion that its trademark has achieved significance as a source identifier. The disputed domain name includes the Complainant’s trademark L.M. WATERHOUSE in its entirety. The Panel accordingly concludes that the disputed domain name is confusingly similar to the Complainant’s L.M. WATERHOUSE trademark, disregarding the Top-Level Domain “.com”. The Complainant succeeds on the first element of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (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. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. UDRP Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. None of the circumstances listed in paragraph 4(c) apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the L.M. WATERHOUSE trademark. The Complainant has rights in the L.M. WATERHOUSE trademark which significantly precede the Respondent’s acquisition of the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name; to the contrary, the evidence points to the Respondent illegally masquerading as the Complainant. The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name. The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the disputed domain name. The Complainant succeeds on the second element of the Policy in relation to the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith. In the present circumstances, the fact that the disputed domain name resolves to a website which impersonates the Complainant leads the Panel to conclude the registration and use of the disputed domain name are in bad faith. The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainant and its trademark. By registering the disputed domain name after the Complainant failed to renew it, and then by using the disputed domain name to impersonate the Complainant, demonstrates that the Respondent specifically knew of and targeted the Complainant to impersonate the Respondent and suggest to the public that the Respondent is a trusted financial services provider. Further, the Respondent failed to provide any accurate contact information for itself on the website at the disputed domain name or in the WhoIs record for the disputed domain name. The Panel agrees with the Complainant that the Respondent’s website appears to be some form of “phishing” or fraudulent scheme which is manifestly evidence of bad faith – see Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031, and the cases therein referred to, for further analysis of why “phishing” activities amount to use in bad faith. This case was cited with approval in Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk,WIPO Case No. D2020-2773 which involved a website that was masquerading as the website of a financial advisory firm. This case has similar factual circumstances of the present case. Accordingly, the Panel finds that paragraph 4(b)(iv) of the Policy applies in the present case. The Complainant succeeds on the third element of the Policy in relation to the disputed domain name. 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 John Swinson
(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.
Sole Panelist
Date: June 14, 2021
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