The Complainant is Man Group plc, United Kingdom, represented by Dehns, United Kingdom.
The Respondent is On behalf of mangroupfx.com, c/o IDPS International Domain Privacy Services GmbH, Germany / Rouslan Iskhakov, Green V, Israel. 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 26, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 2021, the Registrar transmitted by email to the Center its verification response identifying the Respondent only by reference to its Privacy Services. The Center verified that 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 June 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2021. Informal emails from an email address different to the email accounts identified by the Registrar were received on May 31, 2021, June 8, 2021 and July 6, 2021. The Center requested this third party to identify its relation to the Registrant, but no clarification was made. On July 8, 2021, following a further request for clarification from the Center, the Registrar finally confirmed the details of the underlying Registrant. These details matched with the third party’s details. On July 21, 2021, the Complainant submitted to the Center a Supplemental Filing. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 21, 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 active investment management company. The business was first established by James Man in 1783 in London as a sugar cooperage and brokerage. Over time, the business has grown and diversified. For the last 25 years, the business has been global funds management. The Complainant and its subsidiaries, operating as the Man Group, have offices in the United Kingdom, Ireland, the United States of America, Switzerland, Liechtenstein, Hong Kong, China, Japan, and Australia serving private and institutional clients. Together they manage some USD 127 billion in funds, which it claims makes it one of the world’s largest publicly traded hedge fund businesses. Amongst other things, the Complainant owns registered trademarks for: in respect of a range of financial and investment services in International Class 36 in the United Kingdom (Trademark No. UK00002547917) and the European Union (EUTM No. 1046727). Both trademarks were registered in 2010. The Complaint also includes evidence indicating that the Complainant has registered this trademark in numerous other countries around the world. According to the Registrar, the disputed domain name was registered on April 9, 2021. Before the Complaint was filed, the disputed domain name resolved to a website apparently offering foreign exchange and investment services to the public under the name “MANGROUPFX” where “Mangroup” is in a dark blue colour similar to the colour used by the Complainant’s group for its logo and “FX” is presented in gold. Although the website is in French, it lists telephone coordinates for United Kingdom, Belgian and Swiss numbers (although the latter is listed with ISO 3166-1 alpha-2 code for the (former) Soviet Union). The website also listed as its “London Head Office” the address of the Complainant’s head office in London. The link on the website to its “Termes & Conditions” linked through to the Terms & Conditions on the Complainant’s website (in English). On May 17, 2021, the French Financial Markets Authority (AMF) issued a public warning about the Respondent’s website. On June 21, 2021, the Complainant initiated a criminal complaint for identity theft with the Public Prosecutor in the High Court, Paris France. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (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. 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. Complainant’s unsolicited supplemental filing In considering those matters, the Panel will admit the Complainant’s unsolicited supplemental filing. Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case. The Criminal Complaint is a development which has arisen after the filing of the Complaint. It could not be brought earlier as it was not until July 8, 2021 that the Registrar revealed the identity of the underlying registrant. As the Respondent has offered to surrender the disputed domain name, the Criminal Complaint is in a sense unnecessary. However, it is relevant to the issues insofar as it provides some corroboration of the serious allegations made by the Complainant against the Respondent. There is also a public interest in the nature of the conduct being identified. The inclusion of the existence of the Criminal Complaint in the record is not prejudicial in a relevant sense. B. Respondent’s offer to surrender / transfer the disputed domain name In the Respondent’s email to the Center on May 31, 2021, the Respondent claimed to have registered the disputed domain name on behalf of a client. He further stated he did not need the “domain” if it is violating something and asked the Center to take control of it. In his email on June 8, 2021 (after formal notification of the Complaint and commencement of the proceeding), the Respondent said “So, what shall I do? Cancel or transfer the domain? Please advice [sic]”. As noted above, the Complainant nonetheless sought a formal decision on its Complaint. In these circumstances, rather than simply giving effect to the Respondent’s offer, it is appropriate for the Panel to record at least in summary fashion the reasons for the Panel’s decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.10. C. Identical or Confusingly Similar The Complainant has proved ownership of the “M Man” registered trademarks identified in section 4 above. It also claims to have a significant global reputation in “Man Group”. The Panel notes that an earlier panel accepted the Complainant’s claim to a global reputation in the “M Man” logo: Man Group plc v. Thomas VictoireWIPO Case No. D2020-1130. Whether the disputed domain name is confusingly similar to the Complainant’s trademark simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. It is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise. See for example, WIPO Overview 3.0, section 1.10. The Complainant’s “M Man” logo could be represented in a domain name by the string “mman”. The “Man” element, while appearing smaller than the “M” element is likely to serve the function of distinguishing the Complainant’s services from those of other financial services providers. Moreover, the “M” element directs attention to and so reinforces the “Man” element. The “Man” element, therefore, is an essential or important element of the trademark and not unsubstantial. In these circumstances, the Panel considers that it is appropriate to apply the approach indicated in WIPO Overview 3.0, section 1.10 above. In the disputed domain name, the “man” element is the first component. It is followed by a descriptive term “group” and, as the Complainant points out, a commonly used abbreviation for foreign exchange “FX”. While there might be other cases where the incorporation of a three letter element in a domain name would not lead to a finding of confusing similarity, therefore, the Panel considers such a finding is warranted in the present case as the “man” element in the disputed domain name, as with the Complainant’s trademark, is serving a distinguishing function and does not convey an idea or concept different to its inclusion in the Complainant’s trademark. To the extent (if any) that there is any doubt, it is clear from the Respondent’s website that the disputed domain name was being used to target the Complainant and its trademark and divert customers and potential customers of the Complainant’s group to the Respondent. See WIPO Overview 3.0, section 1.15. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied. D. Rights or Legitimate Interests and Registered and Used in Bad Faith There is no suggestion that the Respondent is licensed by or associated in any way with the Complainant or the Complainant’s corporate group. The disputed domain name is not derived from the Respondent’s name nor any other name by which the Respondent has claimed to be commonly known. It is also well-established under the Policy that the use of a disputed domain name which is confusingly similar to a Complainant’s trademark to offer, or appear to offer, services in competition with the Complainant is not a good faith offering of goods or services under the Policy. The Respondent has not sought to advance any justification or defence to rebut the Complainant’s allegations or the inferences available from the evidence advanced in the Complaint. In these circumstances, therefore, the Panel finds that the Complainant has established the second requirement under the Policy that the Respondent does not have rights or legitimate interests in the disputed domain name. The way the disputed domain name has been used in an apparent attempt to divert customers and potential customers of the Complainant’s Man Group to the Respondent is use in bad faith under the Policy in the absence of some right or legitimate interest in the disputed domain name. Given the short time between the registration of the disputed domain name and its use in that fashion to misleadingly convey the appearance of being the Complainant or associated with the Complainant’s group, the Panel readily infers that the disputed domain name was registered for the purpose for which it has been used. In the absence of some right or legitimate interest in the disputed domain name which supports such use, that constitutes registration and use of the disputed domain name in bad faith under the Policy. Accordingly, the Complainant has established the third requirement under the Policy as well. 6. 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, Warwick A. Rothnie
Sole Panelist
Date: August 4, 2021
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