ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Loomis Sayles & Company. L. P. v. Superior Equipment, Jol company Case No. D2024-2459 1. The Parties Complainant is Loomis Sayles & Company. L.P., United States of America (“United States”), represented by MIIP - MADE IN IP, France. Respondent is Superior Equipment, Jol company, United States. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2024. On June 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 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, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to Complainant on June 19, 2024, 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 June 21, 2024. 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 June 24, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 15, 2024. The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on July 26, 2024. 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.
page 2 4. Factual Background Complainant is a very large United States-based investment management firm, founded in 1926 by Robert H. Loomis and Ralph T. Sayles. Complainant owns several registrations for the LOOMIS SAYLES trademark including United States Trademark Registration No. 4188902, registered August 14, 2012 (with a first use in commerce dating from at least as early as 1939) and European Trademark Registration No. 009792565, registered August 18, 2011. The disputed domain name was registered on May 23, 2024, and does not presently resolve to an active webpage. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Complainant alleges that its trademarks are well known and avers that, through its offices in Europe, Asia, and the Americas, Complainant manages USD 348 billion in client assets. Notably, Complainant contends that Complainant has registered and maintained its website at “www.loomissayles.com” since 1996 and that this is a clear case of typosquatting, since the disputed domain name simply omits the single character “s” from Complainant’s registered trademarks. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel notes that the disputed domain name simply omits the single character “s” from Complainant’s LOOMIS SAYLES trademark. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.9 (“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”). The Panel finds that the first element of paragraph 4(a) of the Policy has been established.
page 3 B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which a respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. The record indicates that the disputed domain name does not resolve to an active webpage; under these circumstances, the Panel finds that there is no evidence of Respondent’s use (or demonstrable plans for such use) with a bona fide offering or legitimate noncommercial or fair use. Policy paragraph 4(c). The Panel also agrees with Complainant’s allegation that Respondent is not commonly known by the disputed domain name. Id. Having reviewed the available record, the Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted 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. The Panel finds that the second element of Policy paragraph 4(a) has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, Respondent registered the disputed domain name (which is confusingly similar and nearly identical to Complainant’s registered trademarks) nearly 100 years after Complainant’s company was founded by Messrs. Loomis and Sayles and at least 85 years after the LOOMIS SAYLES mark was used in commerce. Under these circumstances, it is clear to the Panel that Respondent, in bad faith, targeted Complainant’s trademark in registering the disputed domain name. Panels have found that the non-use of a domain name (including a blank or error page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and longevity of Complainant’s trademark, and the composition of the disputed domain name. The Panel finds that in the circumstances of this case, the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. The Panel finds that Complainant has established the third element of paragraph 4(a) of the Policy.
page 4 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 Complainant. /Jeffrey D. Steinhardt/ Jeffrey D. Steinhardt Sole Panelist Date: August 7, 2024
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