The Complainants are LO IP SA (the “first Complainant”) and Banque Lombard Odier & Cie SA (the “second Complainant”), Switzerland, represented by Baker & McKenzie Zurich, Switzerland.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Taylor Tech, Taylor Marsden, United Kingdom. 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 6, 2021. On April 7, 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 Complainants on April 14, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on April 15, 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 April 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2021. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 26, 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 Complainants are part of the Lombard Odier group of companies (“Lombard Odier”) which provide wealth management services on a worldwide basis. Lombard Odier was founded in 1796 and the first Complainant is the owner of the following trademark registrations (Annexes 5 and 6 to the Complaint): - Swiss trademark registration No. 2P-412721 for the word mark LOMBARD ODIER & CIE, registered on June 28, 1994, and subsequently renewed, claiming first use in 1830, in class 36; and - International trademark registration No. 627468 for the word mark LOMBARD ODIER & CIE, registered on October 13, 1994, and subsequently renewed, in International class 36. The disputed domain name The Complainants assert to be part of the Lombard Odier group of companies, a leading provider of wealth management services, which has used the LOMBARD ODIER & CIE trademark continuously and extensively all over the world since, at least, 1830. In the Complainants’ view, the disputed domain name reproduces the distinctive element of the Complainants’ famous LOMBARD ODIER & CIE trademark as “& CIE” means “and company” in French, with the descriptive suffix “banking” and which does not prevent a finding of confusing similarity with the Complainant’s trademark. Rather, the Complainant points out that Internet users will assume that the disputed domain name is connected to the Complainants. Moreover, the Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name given that: (i) the Respondent is not related to the Complainants and has not been authorized to register the disputed domain name and (ii) the Respondent is not making a noncommercial or fair use of the disputed domain name given that there is no effective use of the disputed domain name. As to the registration and use of the disputed domain name in bad faith the Complainant argues that UDRP Panels have consistently found that the registration and use of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith pursuant to paragraph 4(b)(iv) of the Policy, having the Respondent specifically targeted the Complainant given the addition of the term “banking” which further endorses an assumption of affiliation or sponsorship between the Complainants and the Respondent, causing the likelihood of confusion amongst Internet users. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainants: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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. The Complainants must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar The Complainant has established its rights in the registered LOMBARD ODIER & CIE trademark. The Panel finds that the disputed domain name reproduces the distinctive element of the Complainant’s trademark with the addition of the term “banking” and is therefore confusingly similar to it. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). The first element of the Policy has therefore been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are: (i) before any notice 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, in spite of not having acquired 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 Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent. In that sense, the Complainant indeed states that the Respondent is not related to the Complainants and has not been authorized to register the disputed domain name. Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks registered by the Respondent corresponding to the disputed domain name, corroborates the absence of any rights or legitimate interests in the disputed domain name. Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation. WIPO Overview, section 2.5.1. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. The second element of the Policy has therefore been established. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of: (i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainants who are the owner of a trademark relating to the disputed domain name or to a competitor of the Complainants, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or (ii) the 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 the Respondent has engaged in a pattern of such conduct; or (iii) the 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, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances: (i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name; (ii) the well-known status of the Complainants’ trademark and the nature of the disputed domain name (reproducing the distinctive element of the Complainant’s trademark in connection with an expression that describes the Complainants’ activities affirms a finding of targeting of the disputed domain name with respect to the Complainants’ trademark) suggest rather a clear indication of the Respondent’s registration and holding of the disputed domain name in bad faith, with the implausibility of any good faith use to which the disputed domain name may be put; and (iii) the Respondent’s concealing of its identity in the WhoIs data. For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith. The third element of the Policy has therefore been established. 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, Wilson Pinheiro Jabur
Sole Panelist
Date: June 7, 2021
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