ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Permira I.P. Limited v. 斌超 姚 Case No. DAI2024-0037 1. The Parties Complainant is Permira I.P. Limited, Guernsey, represented by CSC Digital Brand Services Group AB, Sweden. Respondent is 斌超 姚, China. 2. The Domain Name and Registrar The disputed domain name
is registered with 1API GmbH (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2024. On May 1, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 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 | EU Registrar/Domains By Proxy, LLC DomainsByProxy.com) and contact information in the Complaint. The Center sent an email communication to Complainant on May 6, 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 May 6, 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 May 8, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2024. Respondent sent an email communication to the Center on May 27, 2024. The Center sent an email regarding the possible settlement on May 28, 2024; however, Complainant did request for suspension before the due date. Accordingly, the Center notified the commencement of panel appointment process on June 11, 2024.
page 2 The Center appointed Stephanie G. Hartung as the sole panelist in this matter on June 18, 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. 4. Factual Background Complainant is a company organized under the laws of the Guernsey that is active in the financial industry. Complainant has provided evidence that it is the registered owner of numerous trademarks relating to its company name and brand PERMIRA, including, but no limited to, the following: - word mark PERMIRA, United States Patent and Trademark Office (USPTO), registration No.: 2860719, registration date: July 6, 2004, status: active; - word mark PERMIRA, European Union Intellectual Property Office (EUIPO), registration No.: 002324085, registration date: December 19, 2002, status: active; - word mark PERMIRA, China National Intellectual Property Administration (CNIPA), registration No.: 6397480, registration date: July 7, 2010. Moreover, Complainant has demonstrated to own various domain names relating to its PERMIRA trademark and brand, including, since 2001, the domain name which resolves to Complainant’s main website at “www.permira.com”, used to promote Complainant’s services and related products in the financial industry. Respondent, according to the disclosed WhoIs information for the disputed domain name, is located in China. The disputed domain name was registered on May 13, 2023. By the time of rendering this decision, the disputed domain name resolves to a landing page with no relevant content. Complainant, however, has demonstrated that at some point before the filing of the Complaint, the disputed domain name resolved to a typical pay-per-click (“PPC”) website, featuring various links to third-party websites, some of which directly competed with Complainant’s business in the financial industry. Complainant requests that the disputed domain name be transferred to Complainant. 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. Notably, Complainant contends to be one of Europe’s leading specialist credit investors, and that its PERMIRA brand is well recognized and respected worldwide and in the financial industry. Complainant submits that the disputed domain name is identical or confusingly similar to its PERMIRA trademark, because the disputed domain name solely consists of the latter. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is not sponsored by or affiliated with Complainant in any way, nor has Complainant given Respondent license, authorization or permission to use Complainant’s PERMIRA trademark in any manner, including in domain names, (2) the disputed domain name was registered on May 13, 2023, which falls significantly after Complainant’s registration of its PERMIRA trademark in many countries, (3) the disputed domain name is identical to Complainant’s PERMIRA trademark, and, therefore, carries a high risk of implied
page 3 affiliation or misrepresentation, and (4) Respondent used the disputed domain name in the past to direct Internet users to a website featuring links to third-party websites, some of which directly competed with Complainant’s business. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith because (1) Complainant and its PERMIRA trademark are known internationally, and Complainant has marketed and sold its goods and services using this trademark since 2001, which is well before Respondent’s registration of the disputed domain name, (2) by registering a domain name that is an exact reproduction of Complainant’s PERMIRA trademark and its domain name , Respondent has demonstrated knowledge of and familiarity with Complainant’s brand and business, and (3) the disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name, and, thus, the disputed domain name must be considered as having been registered and used in bad faith. B. Respondent Respondent did not formally reply to Complainant’s contentions, but sent an email communication to the Center on May 27, 2024, indicating that Respondent was happy to discuss with Complainant how to settle this case. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Respondent’s failure of filing a formal response in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar First, 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 PERMIRA 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 its PERMIRA trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Moreover, the entirety of such trademark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to Complainant’s PERMIRA trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel, therefore, finds the first element of the Policy has been established. B. Rights or Legitimate Interests Second, paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name.
page 4 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. Having reviewed the available record, the Panel finds 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 considers that the composition of the disputed domain name carries a high risk of implied affiliation with Complainant. WIPO Overview 3.0, section 2.5.1. In particular, Respondent has not been authorized to use Complainant’s undisputedly well-known PERMIRA trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “permira” on its own. Finally, Respondent obviously has neither used the disputed domain name for a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. On the contrary, the disputed domain name resolved, at some point before the filing of the Complaint, to a typical PPC website showing a variety of hyperlinks to third-party websites, some of which obviously belong to Complainant’s direct competitors in the financial industry, for the obvious purpose of generating PPC revenues. UDRP panels agree that using a domain name to host a PPC website does not present a bona fide offering where such PPC links compete with or capitalize on the reputation and goodwill of the complainant’s trademark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9). The Panel, therefore, finds the second element of the Policy has been established too. C. Registered and Used in Bad Faith Finally, 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. The circumstances to this case leave no doubts that Respondent was fully aware of Complainant’s rights in the undisputedly well-known PERMIRA trademark when registering the disputed domain name and that the latter is clearly directed thereto. Moreover, resolving the disputed domain name, which is even identical to such well-known PERMIRA trademark, to a typical PPC website showing a variety of hyperlinks to active third-party websites, which even include companies belonging to Complainant’s direct competitors in the financial industry, for the obvious purpose of generating PPC revenues, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s PERMIRA trademark as to the source, sponsorship, affiliation or endorsement of this website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Panel, therefore, finds that Complainant has established the third element of the Policy, too.
page 5 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. /Stephanie G. Hartung/ Stephanie G. Hartung Sole Panelist Date: July 2, 2024
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