Complainant is AGF Management Limited, Canada, represented by Riches, McKenzie & Herbert LLP, Canada.
Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Giuseppe Furiosi, Italy.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2021. On October 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 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 October 19, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 21, 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 October 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 16, 2021.
The Center appointed Ingrida Kariņa-Bērziņa as the sole panelist in this matter on November 24, 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 BackgroundComplainant, based in Canada, operates in the investment and financial services sector in countries around the world, including through a subsidiary in Ireland. It is the proprietor of numerous registrations for its AGF mark, including the following:
- Canadian Trademark No. TMA185086 for AGF (word mark), registered on August 25, 1972 for services in classes 35 and 36;
- Canadian Trademark No. TMA542115 for AGF.COM (word mark), registered on March 9, 2001 for services in class 36;
- European Union Trade Mark No. 013119664 for AGF (word mark), registered on January 6, 2015 for services in class 36;
- Irish Trademark No. 204135 for AGF (word mark), registered on November 27, 1996 for services in class 36.
Complainant operates its primary business website at the domain name
The disputed domain name was registered on March 22, 2021. It resolves to a website offering investment and trading services to consumers. The website states that the services are offered by “AGF INTERNATIONAL ADVISORS COMPANY LTD.” The website states that this entity is incorporated and licensed in Ireland.
5. Parties’ Contentions A. ComplainantComplainant’s contentions may be summarized as follows:
Under the first element, Complainant states that it was founded in 1957 and is an independent and globally diverse asset management firm. It provides financial services to its clients in Canada and around the world, including through a subsidiary in Ireland called AGF International Advisors Company Ltd. In Dublin, Ireland, abbreviated as “AGFIA.” The letters “IA” within the disputed domain name refer to the term “International Advisors,” as found in Complainant’s subsidiary name. Therefore, Complainant’s AGF mark is incorporated in the disputed domain name. Moreover, Respondent states on its website that it is “AGF International Advisors Company Ltd,” which is the name of Complainant’s entity. The content of Respondent’s website offers further evidence in support of a finding of confusing similarity. For instance, Respondent cites a Dublin address that is identical to the address of Complainant’s office, and Respondent display’s Complainant’s Central Bank of Ireland license number.
Under the second element, Complainant states that there is no evidence of Respondent’s use of the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not been commonly known by the disputed domain name, and Respondent has not acquired trademark rights therein. Respondent has not made legitimate noncommercial or fair use of the disputed domain name. Respondent is using the disputed domain name for commercial gain to mislead or divert clients of Complainant.
Under the third element, Complainant states that Respondent has registered the disputed domain name with the primary purpose of illegally misappropriating Complainant’s identity to scam its clients and obtain money fraudulently. It is possible that such fraud has already taken place. The disputed domain name encompasses Complainant’s AGF mark. Respondent is claiming to be Complainant by appropriating its subsidiary’s name, address and bank license number. It is implausible that good-faith use exists.
Complainant requests transfer of the disputed domain name.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly SimilarComplainant has provided evidence establishing that it has trademark rights in the AGF mark through registration in Canada, Ireland, the European Union and numerous other jurisdictions. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.
In comparing Complainant’s mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks. The disputed domain name comprises Complainant’s AGF mark in its entirety, followed by the letters “ia.” It is the consensus view of UDRP panels that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. Moreover, 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. See WIPO Overview 3.0, sections 1.7 and 1.8.
It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain, in this case, “.com”, to a disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsThe Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by Complainant and has no rights in the AGF mark. The disputed domain name reflects Complainant’s mark in its entirety, thereby suggesting sponsorship or endorsement by the trademark owner. Such use cannot confer rights or legitimate interests. See, for example, WIPO Overview 3.0, section 2.5.1.
Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent has not proved rights or legitimate interests. There is no evidence that Respondent is commonly known by the disputed domain name, nor that there are any circumstances or activities that would establish Respondent’s rights therein. The disputed domain name redirects to a website at which Respondent holds itself out as being Complainant’s Irish subsidiary, using Complainant’s name, address and bank license number. The Panel is satisfied that such redirection has been created with the intention of misleading Internet users. Such use can never confer rights or legitimate interests. See WIPO Overview 3.0, section 2.13.1, and cases cited thereunder.
Therefore, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant’s rights in its AGF mark predate the registration of the disputed domain name by nearly 50 years. The disputed domain name reflects Complainant’s AFG mark in its entirety, together with the letters “ia,” which implies affiliation with Complainant’s Irish entity, AGF International Advisors Company Ltd., abbreviated to “AGFIA.” The Panel finds that the evidence supports a finding that Respondent was aware of Complainant when registering the disputed domain name.
The Panel finds that Respondent has demonstrated bad faith use of the disputed domain name. The evidence on record supports a finding that Respondent is attempting to defraud Internet users by inviting them to invest funds to an entity holding itself out as affiliated with Complainant. The Panel notes that Respondent’s website is not visually similar to that of Complainant. Nevertheless, the use of Complainant’s name, address and bank license are clear evidence of impersonation. All these factors support a finding of bad faith registration and use of the disputed domain name. See WIPO Overview 3.0, section 3.4 and cases cited thereunder. See also Xero Limited v. Privacy service provided by Withheld for Privacy ehf / John David,WIPO Case No. D2021-2630.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.
7. DecisionFor 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
Ingrida Kariņa-Bērziņa
Sole Panelist
Date: December 8, 2021