The Complainant is Lazard Freres & Co. LLC, United States of America (“United States”) and Lazard Frères S.A.S., France, represented by Von Maltitz, Derenberg, Kunin, Janssen & Giordano, United States.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Domain Admin, Kevin Yao, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2021. On April 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 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 12, 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 12, 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 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2021. The Center appointed Antony Gold as the sole panelist in this matter on May 14, 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 comprises two associated companies with head office locations in the United States and France respectively. The Complainant provides a wide range of corporate advisory, capital raising and financial services, in the United States, France and 41 other countries. Its revenue for the year 2019 was USD 2.587 billion. The name “Lazard Frères” was first used by a predecessor company of the Complainant in the 1840s. The Complainant’s primary trading name is now LAZARD and the Complainant and its affiliates have registered the LAZARD mark in over 90 countries. The Complainant’s trade mark registrations include, by way of example only, United States service mark, registration number 2,638,222 registered on October 22, 2002, in classes 35 and 36. In December 2020, the Complainant’s wholly owned subsidiary, LazardNext S.A.S., began to use the trade name “LAZARDNEXT” in the field of advisory financial services. On January 12, 2021, Lazard Strategic Coordination Company, an affiliate of the Complainant, filed applications to register the trade mark LAZARDNEXT in Benelux and Switzerland. On January 14, 2021, the Complainant filed an application to register the same mark in France. The disputed domain name was registered on January 13, 2021. It does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. The Complainant refers to its many trade and service marks for LAZARD and says this name was first used in the 1840s and is revered in the world of finance. The Complainant has prior rights in both its LAZARD and LAZARDNEXT marks. The disputed domain name is confusingly similar to the Complainant’s LAZARD mark and is identical to its LAZARDNEXT mark. The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s LAZARD and LAZARDNEXT marks exclusively identify the Complainant and its affiliates. The Respondent has not acquired any trade mark rights in either of these names, nor has it ever been known by either of them, nor by any domain name including the term LAZARD. Neither the Complainant nor its affiliates have ever authorized the Respondent’s registration or use of the disputed domain name. The Complainant is unaware of any evidence that the Respondent is making, or has ever made, a legitimate non-commercial or fair use of the disputed domain name. Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The timing of the registration of the disputed domain name, one day after the Complainant filed applications to register LAZARDNEXT as a trade mark, indicates that the Respondent knew that the Complainant owned prior rights in the mark. The evidence therefore suggests that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its LAZARDNEXT mark in a corresponding domain name and/or for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant or to a competitor of it, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. Such conduct comprises bad faith under paragraphs 4(b)(i) and (ii) of the Policy. Moreover, the Respondent knew or should have known that the disputed domain name included the Complainant’s worldwide and well-known LAZARD name and mark in its entirety and this comprises additional evidence of bad faith, as does the personal-named Respondent’s use of a privacy service to hide his identity; see O2 Holdings Limited v. Peter Davis,WIPO Case No. D2012-1866, and Andrey Ternovskiy dba Chatroulette v. 1&1 Internet Limited,WIPO Case No. D2017-0266. In all of the above circumstances, the Respondent’s holding of the disputed domain name constitutes bad faith use of it under the doctrine of passive holding; see Johnson & Johnson v. Daniel Wistbacka,WIPO Case No. D2017-0709, and the factors set out therein. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate. Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is identical or confusingly similar to a trade mark 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 Complainant has provided details of the many registered trade and service marks it owns for LAZARD, including the service mark in respect of which full details have been provided above, which establish its rights in this mark. The Complainant and/or its affiliates appear to have at least three pending applications, in France, Benelux and Switzerland for LAZARDNEXT, albeit, as at the date of the Complaint, they do not appear yet to have proceeded to grant. Section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that; “While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed”. Section 1.1.4 of the WIPO Overview 3.0 explains that a pending trade mark application would not by itself establish trade mark rights within the meaning of paragraph 4(a)(i) of the Policy. With this in mind, and whilst it is possible that the Complainant might have acquired unregistered rights in LAZARDNEXT, it is sufficient for the first element to be considered by reference to the Complainant’s granted mark for LAZARD. As a technical requirement of registration, the generic Top-Level Domain (“gTLD”), that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The only difference between the Complainant’s LAZARD mark and the disputed domain name is the word “next”, which is placed after the mark. This additional component does not prevent the disputed domain name from being considered confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Complainant’s LAZARD service mark is clearly recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarized briefly: if the respondent has been using the domain name in connection with a bona fide offering of goods and services, if the respondent has been commonly known by the domain name, or if the respondent has been making a legitimate noncommercial or fair use of the domain name. The inactive status of the disputed domain name comprises neither use in connection with a bona fide offering of goods and services nor a legitimate noncommercial or fair use of it. In particular, as explained at section 2.5.1 of the WIPO Overview 3.0; “[e]ven where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”. Finally, there is no evidence that the Respondent has been commonly known by the disputed domain name. Once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent; see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out, without limitation, circumstances which might evidence bad faith registration and use of a domain name. The circumstance set out at paragraph 4(b)(i) of the Policy, in summary, is if a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. As at the date of registration of the disputed domain name, the Complainant’s distinctive LAZARD trade mark was both long-established and well-known in the field of financial services. The Panel accepts the Complainant’s assertion that the Respondent was aware of the Complainant’s mark, as at the date of its registration of the disputed domain name, and registered it because the filing by the Complainant’s affiliate, Lazard Strategic Coordination Company, of trade mark applications for LAZARDNEXT in Benelux and Switzerland suggested that this was to be an additional trading name to be adopted within the Complainant’s group of companies. The appropriate inference to draw is that the Respondent hoped that the Complainant would wish to acquire the disputed domain name so that it could properly reflect its new trading style online. The fact that the disputed domain name was registered the day after the Complainant’s applications were filed excludes any other plausible explanation. Such registration falls within the circumstance of bad faith described at paragraph 4(b)(i) of the Policy. Whilst UDRP panels would not normally find bad faith on the part of a respondent where the domain name in issue has been registered before a complainant’s trade mark rights have been registered, panels have found bad faith where a respondent’s intent in registering the domain name in issue has been to unfairly capitalize on a complainant’s nascent trademark rights. Among the circumstances where such a finding would be appropriate is if a respondent has registered the domain name in issue as a result of having established that the complainant has applied for a trade mark; see section 3.8.2 of the WIPO Overview 3.0 and, by way of example, General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online,WIPO Case No. D2003-0845. Having regard to the sequence of events outlined above, that has plainly been the motivation for the Respondent’s registration of the disputed domain name. In all the circumstances, the Panel finds that the registration of the disputed domain name by the Respondent, with evident knowledge of the Complainant and its LAZARD mark as well as its pending trade mark applications for LAZARDNEXT, was in bad faith. It is next necessary to consider whether the inactive status of the disputed domain name amounts to bad faith use under the doctrine of passive holding. The factors usually considered material to such an assessment have been set out in a number of earlier decisions of UDRP panels, including in Johnson & Johnson v. Daniel Wistbacka (supra). Each of those considerations points to the Respondent’s passive holding of the disputed domain name being in bad faith. Specifically; (i) the Complainant’s LAZARD mark is distinctive and well-established (ii) the Respondent has failed to submit a response to the Complaint or provide any evidence of good-faith use (iii) the Respondent has taken steps to conceal its identity through use of a privacy service (iv) there is no conceivable good faith use to which the disputed domain name could be put by the Respondent. The Panel therefore finds the Respondent to have registered and used the disputed domain name in bad faith. 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 Antony Gold
Sole Panelist
Date: May 27, 2021
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