The Complainant is BEX Capital, France, represented by DIPTIC, France.
The Respondent is WhoisSecure, WhoisSecure, United States of America (“United States”) / Hlb Group, 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 June 26, 2021. On June 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. After several reminders, on July 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 29, 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 amendment to the Complaint on July 29, 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 July 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2021. The Respondent sent two informal emails to the Center on August 3, 2021. The Center appointed Nicholas Smith as the sole panelist in this matter on August 30, 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 French company, founded in 2010, that provides secondary investment services in the private equity field, with over USD 500 million in assets under management. The Complainant is the owner of, amongst other registrations, a European Union Trade Mark registration for a composite mark consisting predominantly of the words “BEX CAPITAL” along with the less prominent words “secondary investments” and a “C” shaped device (the “BEX CAPITAL Mark”) registered on December 17, 2011, (registration number 8809667) for services in class 36 relating to financial affairs. The Domain Name The Complainant makes the following contentions: (i) that the Domain Name is identical or confusingly similar to the Complainant’s BEX CAPITAL Mark; The Complainant is the owner of the BEX CAPITAL Mark, having registered the BEX CAPITAL Mark in the European Union. The Domain Name is confusingly similar to the BEX CAPITAL Mark as it reproduces the predominant and characteristic word elements that comprise the BEX CAPITAL Mark. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website that provides competing services. The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website that offers competing investment services, the Respondent is using the Domain Name to disrupt Complainant’s business and divert Internet users searching for the Complainant to a competing website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent The Respondent did not provide a formal Response but on August 3, 2021 sent two emails to the Center, which are extracted in full below: “I do not understand the MAIL but i never realized any website bears BEX-CAPITAL” To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the BEX CAPITAL Mark, having a registration for the BEX CAPITAL Mark as a trade mark in the European Union. The Domain Name contains the prominent word elements of the BEX CAPITAL Mark (the remaining elements being descriptive or (in the case of the device) not reproducible in a domain name, along with the top-level domain and a hyphen. A domain name which entirely reproduces the dominant feature of the trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element, see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds that the Domain Name is confusingly similar to the Complainant’s BEX CAPITAL Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the BEX CAPITAL Mark or a mark similar to the BEX CAPITAL Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services. The Respondent’s use of the Domain Name to redirect to a webpage offering investment services in direct competition with the services offered by the Complainant does not, on the face of it, amount to use for a bona fide offering of goods and services. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trade mark 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 domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s 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 (Policy, paragraph 4(b)). The Panel finds that the Respondent was aware of the Complainant and its reputation in the BEX CAPITAL Mark at the time the Domain Name was registered. The Domain Name was registered over 10 years after the Complainant had applied to register the BEX CAPITAL Mark as a trade mark. Furthermore the Respondent’s Website prominently reproduces the BEX CAPITAL Mark. The registration of the Domain Name in awareness of the BEX CAPITAL Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith. The Respondent’s Website purports to offer investment services in direct competition with the Complainant. Given that the Respondent has offered no plausible explanation for the registration of the Domain Name, the Panel finds that that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the BEX CAPITAL Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. Although the Domain Name does not currently resolve to an active website, this does not prevent a finding of bad faith in the circumstances of this case. As such, the Panel finds that the Domain Name is being used in bad faith. Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under 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 Domain Name Nicholas Smith
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
“Will i get my Domaim (sic) back?” 6. Discussion and Findings A. Identical or Confusingly Similar
Sole Panelist
Date: September 1, 2021
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