ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Schroders plc v. Motana Smith Case No. D2024-1472 1. The Parties The Complainant is Schroders plc, United Kingdom (“UK”), represented by CSC Digital Brand Services Group AB, Sweden. The Respondent is Motana Smith, United States of America (“US”). 2. The Domain Name and Registrar The Disputed Domain Name is registered with Dynadot Inc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2024. On April 8, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 8, 2024, 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 (redacted for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 9, 2024, 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 April 11, 2024. The Center verified that the Complaint together with 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 April 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2024. The Center appointed Ashwinie Kumar Bansal as the sole panelist in this matter on May 13, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
page 2 Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant, Schroders plc, is a multinational asset management company, which was founded as J.F. Schröder & Co in 1800 in London. It was listed on the London Stock Exchange in 1959. By the start of the 20th century, the Complainant had clients across the Americas, Europe, and Asia. In 2000, the Complainant sold their investment banking arm to specialize in asset and wealth management. The Complainant offered the first of their diversified growth strategies in 2006 and introduced their Global Climate Change Equity fund a year late. In 2009, the Complainant launched GAIA, a platform designed to give investors easier access to hedge fund expertise. The Complainant has furnished evidence of registration of the Trademark SCHRODER in a few classes in US, UK, European Union, etc. The Complainant registered the Trademark SCHRODER in US on October 9, 2001, in IC Class 36 vide registration no. 2495598 and in UK on January 6, 2011 in IC class 35, 36, and 38 vide registration no. UK00002594039. The Complainant has also registered the Trademark SCHRODERS CAPITAL in UK on November 12, 2021, in IC class 9, 35, 36, 38, and 42 vide registration no. UK00003620203. The Respondent registered the Disputed Domain Name on January 17, 2024, without any authorisation from the Complainant due to which the present complaint has been filed. Currently, the Disputed Domain Name resolves to a blank page and lacks content. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. The Complainant has expertise in both public and private markets, and investment experience in private assets, mutual funds, institutional solutions, wealth management, and more. The Complainant presently has approximately 6,100 employees based in 38 locations around the world. The Complainant acquired in 2019, a majority stake in BlueOrchard, a leading impact investment manager and pioneer in microfinance. In 2022, the Complainant was awarded an “A” rating in CDP’s 2022 climate change questionnaire and received an MSCI ESG rating AAA. The Complainant maintains a large presence online through its nearly 400 registered domain names, many of which containing the term “schroders,” chief among them , which hosts the Complainant’s main website. According to SimilarWeb.com, the Complainant’s primary domain name received 277,900 visits during the month of February 2024. In addition to its primary domain name, the Complainant also maintains various social media accounts which it uses to engage and promote its brand and Trademark. In summary, the Complainant’s SCHRODERS brand is well recognized and respected worldwide and, in their industry, and the Complainant has made significant investment to advertise and promote the Complainant’s Trademarks worldwide in media and on the Internet over the years. In creating the Disputed Domain Name, the Respondent has added the generic, descriptive term “capital” to the Complainant’s Trademark SCHRODER, thereby making the Disputed Domain Name confusingly similar to the Complainant’s Trademarks. The fact that such term is closely linked and associated with the Complainant’s brand and Trademarks only serves to underscore and increase the confusing similarity between the Disputed Domain Name and the Complainant’s Trademark. The Complainant is a multinational asset management company and capital can be described as a financial asset. The granting of registrations by various trademark offices to the Complainant for the SCHRODER and SCHRODERS CAPITAL Trademarks is prima facie evidence of the validity of the terms “schroders” and “schroders capital” as the
page 3 Trademarks, of the Complainant’s ownership of the Trademarks, and of the Complainant’s exclusive right to use the SCHRODER and SCHRODERS CAPITAL Trademarks in commerce on or in connection with the goods and/or services specified in the registration certificates. The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s Trademarks in any manner. The Respondent is not commonly known by the Disputed Domain Name, which evidences a lack of rights or legitimate interests. Furthermore, the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s Trademark. Thus, “in the absence of any license or permission from the Complainant to use its Trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed”. By registering a domain name that incorporates the SCHRODER Trademark with the addition of generic term “capital”, the Respondent has created a domain name that is confusingly similar to the Complainant’s Trademarks SCHRODER and SCHRODERS CAPITAL, as well as its domain names , , and . As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. Moreover, the Respondent has used the Disputed Domain Name for the purposes of launching a phishing attack wherein the Respondent sent emails from the domain name posing as the Complainant. In light of the facts set forth within this Complaint, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the Disputed Domain Name was registered. Stated differently, SCHRODER and SCHRODERS CAPITAL are so closely linked and associated with the Complainant that the Respondent’s use of the Trademarks, or any minor variation, strongly implies bad faith – where a domain name is so obviously connected with such a well-known name and products. Further, where the Disputed Domain Name incorporates the Complainant’s famous SCHRODER Trademark along with the related, generic term “capital”, it defies common sense to believe that the Respondent coincidentally selected the precise domain without any knowledge of the Complainant. The Respondent has registered and used the Disputed Domain Name for purposes of launching a phishing attack, which is clear evidence of bad faith registration and use. After first creating a strong likelihood of confusion by misappropriating the Complainant’s Trademarks in the Disputed Domain Name, the Respondent has sent nearly identical emails to at least two attorney offices based in the US posing as official Schroders plc employees requesting help with a financial refund. The Respondent’s efforts to masquerade as the Complainant in an attempt to solicit sensitive, financial information from unsuspecting people certainly constitute fraud, which must be considered bad faith registration and use of the Disputed Domain Name. The Complainant pleads that the Disputed Domain Name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings As per paragraph 5(f) of the Rules, where a respondent does not submit a substantive response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the Complaint. The Panel does not find any exceptional circumstances in this case preventing it from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a substantive response. As per paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel is to draw such inferences therefrom as it considers appropriate. The Complainant is required to make out its case in all respects under paragraph 4(a) of the Policy, which sets out the three elements that must be present for the proceeding to be brought against the Respondent, which the Complainant must prove to obtain a requested remedy. It provides as follows:
page 4 “Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that: (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present.” The Panel will address all three aspects of the Policy listed above hereunder: A. Identical or Confusingly Similar The Complainant has furnished evidence of its rights in the Trademarks SCHRODER and SCHRODERS CAPITAL through the details of its registrations of the Trademarks. The Panel has considered and examined all the documents submitted by the Complainant in support of its claim that the Complainant has been using and has registrations in its favour for the Trademarks SCHRODER and SCHRODERS CAPITAL. There is no doubt that the Complainant has rights in the Trademarks SCHRODER and SCHRODERS CAPITAL. The Disputed Domain Name incorporates the entire Trademark SCHRODERS CAPITAL of the Complainant, except usage of one letter “s”. Further, the Disputed Domain Name incorporates the entire Trademark SCHRODER of the Complainant. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 provides the consensus view of panelists: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant trademark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that trademark for purposes of UDRP standing.” The Trademarks SCHRODER and SCHRODERS CAPITAL are recognizable within the Disputed Domain Name. The mere addition of the suffix “capital” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark SCHRODER. The Panel considers it useful to refer to WIPO Overview 3.0, section 1.8: “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. The nature of such additional term(s) may however bear on assessment of the second and third elements”. WIPO Overview 3.0, section 1.11.1, states that the applicable TLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such may be disregarded under the first element confusing similarity test. Therefore, the Panel finds that the Complainant has successfully established the first element of paragraph 4(a) of the Policy that there is a confusing similarity between the Disputed Domain Name and the Complainant’s Trademarks SCHRODER and SCHRODERS CAPITAL. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, but without limitation, which, if found by the Panel to be proved, may demonstrate the Respondent’s rights or legitimate interests in a Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy.
page 5 The Complaint is based on the Trademarks SCHRODER and SCHRODERS CAPITAL registered in the Complainant’s favor. The Panel finds that in consideration of the status and fame of the Complainant’s Trademarks, the Respondent cannot claim any rights or legitimate interests in the Disputed Domain Name which incorporates the Complainant’s Trademarks entirely. The Panel considers it relevant to consider the WIPO Overview 3.0, section 2.5, which provides that, “Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” The Respondent is in no way related to the Complainant; neither is the Respondent an agent of the Complainant, nor does it in any way or manner carry out activities for or on behalf of the Complainant. The Trademarks SCHRODER and SCHRODERS CAPITAL indisputably vest in the Complainant as evidenced by the statutory registrations secured by the Complainant and its continuous usage of the Trademarks. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. WIPO Overview 3.0, section 2.1 states that: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” There is no evidence before the Panel that the Respondent has any Trademark rights associated with the Disputed Domain Name or has actually been commonly known by the disputed domain name, apart from registration of the Disputed Domain Name. Therefore, the Respondent has failed to demonstrate any rights or legitimate interests in the Disputed Domain Name as per paragraph 4(c) of the Policy or otherwise. Considering the evidence submitted by the Complainant, the Panel finds that the Complainant has satisfied its burden to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Moreover, given that the Disputed Domain Name is a one-letter typographical variation of the Complainant’s SCHRODERS CAPITAL Trademark, and the Complainant’s domain name , the Disputed Domain Name is inherently misleading and was similarly put to such misleading and fraudulent use by means of a phishing email scheme impersonating the Complainant. Such composition and use can never confer rights or legitimate interests upon a Respondent. WIPO Overview 3.0, section 2.13. Accordingly, the Panel is satisfied that the second element of the Policy has been met. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be the evidence of the registration and use of the Disputed Domain Name in bad faith. The Complainant is required to prove both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith. Hence, circumstances at the time of registration and thereafter have to be considered by the Panel. The Respondent has failed to make effective use of this Disputed Domain Name’s website and has not demonstrated any attempt to make legitimate use of the domain name and website, which evinces a lack of rights or legitimate interests in the Disputed Domain Name. The Respondent is using the Disputed Domain Name to resolve to a blank page and lacks content. Thus, the Disputed Domain Name is passively held by the Respondent. Panels have found that the non-use of a domain name (including a blank or “coming soon”
page 6 page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the Disputed Domain Name does not prevent a finding of bad faith in the circumstances of this proceeding. WIPO Overview 3.0, section 3.2.2 states: “Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark.” The Complainant’s Trademark SCHRODER has acquired significant uniqueness and repute due to its long and continuous usage by the Complainant. There is virtually no possibility, noting inter alia the well-known nature of the Complainant’s Trademark SCHRODER and the well-established reputation and goodwill associated with it that the Respondent was unaware of the existence of the Trademark SCHRODER. The Complainant has produced evidence of registration of the Trademark SCHRODER since 2001. The Respondent registered the Disputed Domain Name on January 17, 2024, incorporating in it the entirety of the Trademark SCHRODER of the Complainant. The Complainant has not granted the Respondent permission or a license of any kind to use its Trademark SCHRODER and register the Disputed Domain Name. Such unauthorized registration by the Respondent suggests opportunistic bad faith in these circumstances. Moreover, given the use to which the Disputed Domain Name has been put, it is evident that the Respondent had clear knowledge of, and an intent to target, the Complainant, seeing at the Respondent sent emails impersonating the Complainant via the Disputed Domain Name. Panels have held that the use of a domain name for per se illegitimate activity is manifestly considered evidence of bad faith registration and use. WIPO Overview 3.0, section 3.1.4. In view of the above, the Panel concludes that the third and last condition provided for by paragraph 4(a)(iii) of the Policy is met. The Panel, therefore, finds that the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. 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 be transferred to the Complainant. /Ashwinie Kumar Bansal/ Ashwinie Kumar Bansal Sole Panelist Date: May 27, 2024
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