The Complainant is Ostrum Asset Management, France, represented by Inlex IP Expertise, France.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Malone Watson, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2021. On October 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 Complainant on October 26, 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 amended Complaint on October 26, 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 the Respondent of the Complaint, and the proceedings commenced on November 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2021.
The Center appointed José M. Checa as the sole panelist in this matter on December 5, 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 is using the trademark OSTRUM in commerce in connection with asset management solutions and investment services and it owns numerous trademark registrations internationally for those services covering, among others, France and the United Kingdom (“UK”), such as European Union trademark registration No. 016979551 for OSTRUM (word), class 36 (in the UK as UK00916979551 OSTRUM (word), class 36), applied for on July 12, 2017 and registered on October 24, 2017.
Complainant operates the domain names
The disputed domain name was registered on June 28, 2021. At the time of drafting this Decision, the disputed domain name does not resolve to an active website although according to Complainant, and the evidence submitted with the Complaint, before the commencement of these proceedings, the disputed domain name was active (see Parties’ Contentions below).
5. Parties’ Contentions A. ComplainantComplainant has provided evidence of trademark registrations for OSTRUM internationally and use in connection with financial services.
According to the Complaint, the domain name is confusingly similar to the trademark OSTRUM, the addition of a term such as “group” – which is commonly associated with a Company name – being insufficient to avoid a finding of confusing similarity, especially given the fact that OSTRUM has no meaning and it is highly distinctive. The addition of the generic Top-Level-Domain (“gTLD”) “.com” to the disputed domain name is completely without legal significance.
Complainant states that Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s OSTRUM Mark or any domain name incorporating the OSTRUM Mark. Further, Respondent is not commonly known by the disputed domain name, nor was it known as such prior to the date on which Respondent registered the disputed domain name. Respondent has chosen to use Complainant’s OSTRUM trademark in its domain name to create a direct affiliation with Complainant and its business and therefore, Respondent is not making a legitimate, noncommercial fair use of the disputed domain name. As the disputed domain name reproduces Complainant’s website substantially (brand, color code, address, etc.), Respondent’s “counterfeit online service” cannot amount to using the domain name in connection with a bona fide offering of goods or services.
Complainant argues that Respondent – given that it has reproduced the overall look and feel of Complainant’s website and Complainant’s brand – has intended to attract for commercial gain internet users to its website by taking advantage of Complainant’s reputation. Complainant claims that the website is used to collect personal banking data or obtain fraudulent payments, and that email addresses at the disputed domain name have been activated which may create a high risk of phishing or scam activities. Complainant also argues that the use of privacy services by Respondent is a further indication of bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarComplainant has provided evidence of its trademark registrations for OSTRUM establishing clear trademark rights in the mark.
The Panel finds that for the purpose of considering whether the disputed domain name is identical or confusingly similar to Complainant’s OSTRUM mark, the gTLD “.com” is disregarded under the first element confusing similarity test (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.11.1). The Panel also finds that the addition of the term “group” (which is commonly used in corporate names) does not prevent a finding of confusing similarity between Complainant’s trademark and the disputed domain name (WIPO Overview 3.0, section 1.8).
Complainant’s entire mark is included at the beginning of the disputed domain name, it is fully recognizable, and it is followed by an additional term. The Panel accordingly finds that the disputed domain name is confusingly similar to Complainant’s trademark as required by paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsComplainant has put forward unrebutted assertions that it has not granted any license or authorization to Respondent to register the domain name or otherwise make use of its trademark, or that Respondent is not commonly known by the disputed domain name.
Further, Complainant argues that Respondent activated a website that is “a copy of Complainant’s website” and includes screenshots of such website. As mentioned in the Factual Background above, at the time of drafting this Decision, the disputed domain name is inactive. However, the Panel has no reason to doubt that the evidence put forward by Complainant is genuine and Respondent has not challenged such evidence. Upon examination of Complainant’s evidence, the Panel confirms that the website created by Respondent indeed includes Complainant’s trademark OSTRUM (and logo) and substantially reproduces its content e.g. background picture and a number of Complainant’s corporate identity elements (colors, etc.) creating an impression of being Complainant’s website. Such use, coupled with a domain name that reproduces Complainant’s trademark followed by a word which conveys no meaning as to Respondent’s activities, has been designed to impersonate Complainant and/or to purposely seek a false affiliation with Complainant. Nothing on the disputed domain name or its website would alert Internet users as to the lack of affiliation between the Respondent and the Complainant. Accordingly, such use could not be considered a bona fide offering of goods or services or 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 Panel considers that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests to the disputed domain name. Respondent is in default and thus, it has not put forward any circumstance that would indicate any right or legitimate interest to the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe use of the disputed domain name described above, and in particular, the reproduction by Respondent of a website substantially identical to Complainant’s, suggests that Respondent specifically targeted Complainant. Accordingly, the Panel finds that Respondent’s intention to register the disputed domain name (and subsequently use it) was likely to intentionally attempt to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location, in accordance with paragraph 4(b)(iv) of the Policy.
The Panel is also sensitive to other activities that may have been carried out by Respondent as put forward by the Complainant, such as collecting personal banking data from Internet users or obtaining fraudulent payments, as well as the activation of email addresses at the disputed domain name which may create a risk of phishing or scam activities. Although the Panel has not been able to verify such activities, the Complainant has provided evidence that it may have happened or that it may happen in the future and thus, it further supports the finding of registration and use of the disputed domain name in bad faith (WIPO Overview 3.0, section 3.4; in particular, Sydbank A/S v. Syd Bank,WIPO Case No. D2015-0324).
In addition, even if the disputed domain name is currently inactive, circumstances present in this case such as (i) the nature of the disputed domain name (reproducing a trademark that is a coined word followed by a neutral term), (ii) a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the disputed domain name, (iii) the failure of the Respondent to provide any evidence of actual or contemplated good-faith use, (iv) the implausibility of any good faith use to which the disputed domain name may be put, and (v) Respondent’s concealing its identity in this particular context , further support a finding that Respondent’s registration and use of the disputed domain name was in bad faith (WIPO Overview 3.0, section 3.3).
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith in accordance with paragraph 4(a)(iii) 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
José M. Checa
Sole Panelist
Date: December 16, 2021