Complainant is Allianz Asset Management of America L.P., Pacific Investment Management Company LLC, United States of America (“United States”), represented by Latham & Watkins LLP, United States.
Respondent is Trade Rox, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2021. On May 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 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 May 28, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 1, 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 June 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 30, 2021. The Center appointed Colin T. O’Brien as the sole panelist in this matter on July 8, 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 Allianz is the holding company for the asset management business of Allianz SE, a leading worldwide financial services company headquartered in Munich, Germany and Complainant Pacific Investment Management Company is a subsidiary of Allianz, and is one of Allianz’s global investment managers (“Complainants”). Founded in 1971, PIMCO is a leading global investment management firm with more than USD2.16 trillion in assets under management and with offices around the world Complaints offer PIMCO investment management services primarily through the ComplainantPacific Investment Management Company owns numerous trademark registrations for the PIMCO mark including but not limited to United States trademark Reg. No. 1,459,510 registered on September 29, 1987; Chinese trademark Reg. No. 4990764 registered on June 14, 2009; Australian trademark Reg. No. 759443 registered on November 27, 1998; Canadian trademark Reg No. TMA661377 registered on March 24, 2006; Japanese trademark Reg. No. 4361016 registered on February 10, 2000, and European Union Trademark Reg. No. 797548 registered on August 18, 2000. Complainant owns numerous domain names incorporating the PIMCO mark including The Disputed Domain Name was registered on January 3, 2021. 5. Parties’ Contentions A. Complainant The disputed domain name is identical to Complainants’ PIMCO mark. The only real difference between the disputed domain name and Complainants’ PIMCO mark is the addition of the term “btc” which is a commonly known abbreviation for “Bitcoin”, a digital currency that users can purchase as an investment. Because PIMCO offers investment management services, and the “Bitcoin” currency is an investment that consumers can purchase, consumers will be led to believe that the disputed domain name is somehow affiliated with Complainant Pacific Investment Management Company. Respondent cannot claim any rights or legitimate interest in the disputed domain name because it never received Complainants’ authorization, license, or permission to use the PIMCO mark or register the disputed domain name, and it has not entered into any relationship with Complainants. Notwithstanding the total lack of authorization to use the PIMCO mark, Respondent prominently holds itself out as “PIMCO” on its website and purports to offer similar investment services as Complainants. Respondent cannot claim any legitimate interest in the domain name absent some relationship to Complainants because the PIMCO mark is a fanciful and distinctive mark that is exclusively associated with Complainants. Respondent’s only use of the disputed domain name is to mislead consumers and to trade off of Complainants’ PIMCO trademark, all for Respondent’s commercial gain. Respondent’s website is obviously for commercial gain, as it offers several types of so-called “investments”. However, many of these purported investments appear dishonest, fake, and potentially fraudulent, because Respondent is promising an unreasonable return on investment in a short amount of time, i.e., a 15% return after 24 hours, 30% return after 3 days, 45% return after 7 days. By listing Complainants’ address on the website at the disputed domain name, Respondent is using Complainants’ PIMCO brand for commercial gain. It is thus apparent that Respondent is attempting to mislead consumers into believing that the disputed domain name and Respondent’s investment services are somehow affiliated with PIMCO, when they are not. Given that Respondent references Complainants’ mark and contact information, there can be no doubt that Respondent is aware of Complainant and their trademarks, and is thus intentionally capitalizing on potential customer confusion. Respondent is not using the disputed domain name in connection with a bona fide offering, particularly given that Respondent’s website does not disclose its (lack of) relationship with Complainants. Respondent’s website has no disclaimer, and Respondent is clearly attempting to suggest an affiliation or sponsorship between its website and Complainant’s, by using (without permission) Complainants’ PIMCO trademark and physical address to misleadingly attract clients to its website. Respondent knew or should have known about Complainants’ PIMCO mark because it was properly registered with the United States Patent and Trademark Office (as well as with the trademark offices of numerous other countries) and has been extensively used by Complainants throughout the world. Respondent had actual knowledge of Complainants’ PIMCO mark, since Respondent uses Complainants’ mark on the website at the disputed domain name and it lists Complainants’ physical address for the website’s contact information. The disputed domain name not only incorporates Complainants’ mark wholesale, but also adds the additional term “btc” (an abbreviation for Bitcoin), which corresponds to a type of investment and thus indicates an awareness of this Complainants’ general line of business. Respondent was on actual notice of Complainants’ trademark rights since at least January 13, 2021, as Complainants sent Respondent a cease-and-desist letter on that date. Complainants sent Respondent a second letter on March 17, 2021, and Respondent acknowledged receipt of this letter. Although Complainants attempted to resolve the issue through several back and forth emails, Respondent abruptly stopped responding. There were numerous follow-ups by email, but Respondent did not respond. Therefore, the foregoing actual and/or constructive knowledge of Complainants’ trademark rights support a finding of bad faith registration. Since the disputed domain name incorporates wholesale Complainants’ distinctive and fanciful mark, the domain name can “only sensibly refer to Complainant” and so “there is no obvious possible justification for Respondent’s selection” of the disputed domain name other than that motivated by bad faith. Respondent is using the disputed domain name in an attempt to attract consumers to its website for commercial gain as evidenced by the fact that Respondent is using Complainants’ PIMCO mark, it offers investment services similar to Complainants’ services, and it is lists Complainants’ physical address on the website’s contact information. Accordingly, consumers will be confused and misdirected, and Respondent will thereby unlawfully derive a profit from infringing Complainant’s rights. Respondent is also purporting to offer certain investments that appear dishonest, fake, and potentially fraudulent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainants have demonstrated they own registered trademark rights in the PIMCO trademark both worldwide and in the United States. The addition of the descriptive term “btc” does not avoid a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”). Accordingly, the disputed domain names is confusingly similar to a mark in which Complainants have rights. B. Rights or Legitimate Interests Complainants have, given the facts and arguments set out above, presented a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name and has not at any time been commonly known by the disputed domain name. After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Here, Respondent has provided no evidence of any rights or legitimate interests in the disputed domain name; rather, the evidence suggests that it was registered to make an undue profit based on the Complainant’s rights. See, e.g., Bottega Veneta SA v. ZhaoJiafei,WIPO Case No. D2013-1556. In the absence of any evidence rebutting the Complainant’s prima facie case indicating Respondent’s lack of rights or legitimate interests in respect of the disputed domain name, the Panel finds that Complainants haves satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered long after Complainants first registered and used the PIMCO Mark. Given the evidence provided by Complainants it is clear that Respondent knew of Complainant’s Marks and knew that it had no rights or legitimate interests in the disputed domain name yet nevertheless continued to operate a fraudulent website in order to lure unsuspecting users for presumably fraudulent reasons. Upon the evidence before the Panel, there is no benign reason for Respondent to have registered the disputed domain name, comprising the Complainant’s trademark in its entirety Further, as to the use of the Disputed Domain Name by the Respondent is in bad faith, paragraph 4(b)(iv) states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract Internet users, for commercial gain. Complainant’s submitted evidence that the Respondent created a website similar to Complainants, included Complainants address on the website and claimed to offer plainly unrealistic rates of return for investments. Given that the Respondent has not provided any alternative explanations, the requirements to show bad faith registration and use on the part of the Respondent have been met. The Complainants have satisfied paragraph 4(a)(iii) 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, Colin O’Brien
Sole Panelist
Date: July 22, 2021
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