Complainant is Macquarie Group Limited of New South Wales, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys of Melbourne, Australia.
Respondent is Jim Collins of Enugu, Nigeria. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 23, 2015. On September 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 proceeding commenced on September 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 20, 2015.
The Center appointed Fernando Triana, Esq, as the sole panelist in this matter on November 11, 2015. 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 the owner of the following service mark registrations in Australia, comprising the mark MACQUARIE (Exhibit 6 to the Complaint):
Service mark
Registration Number
Class
Registration date
Enforce until
MACQUARIE BANK
415326
36
September 18, 1984
September 18, 2015
MACQUARIE WARRANTS
742171
36
August 25, 1997
August 25, 2017
transact@macquarie
775714
36
October 14, 1998
October 14, 2018
MACQUARIE MARGIN LENDING
794805
36
May 20, 1999
May 20, 2019
MACQUARIE PORTFOLIO MANAGER
796920
36
June 10, 1999
June 10, 2019
MACQUARIE
805900
35 and 36
September 2, 1999
September 2, 2019
MACQUARIE
805904
35 and 36
September 2, 1999
September 2, 2019
MACQUARIE BANK
805905
35 and 36
September 2, 1999
September 2, 2019
MACQUARIE BANK
805906
35 and 36
September 2, 1999
September 2, 2019
Complainant owns the following domain name registrations (Exhibit 5 to the Complaint):
Domain name
Registration date
September 19, 1998
.au
Not provided
Not provided
April 10, 2003
January 3, 2005
May 17, 2005
August 25, 1997
The disputed domain name was registered on August 31, 2015 and does not resolve to any active webpage. 5. Parties' Contentions A. Complainant
Complainant is a provider of banking, financial, investment and funds management services, founded in 1969, with operation in 28 countries around the world.
The disputed domain name is confusingly similar to the service mark MACQUARIE, which is a well known service mark to identify financial related services. In fact, Complainant's net operating income in 2014 was approximately AUD 9.3 billion.
The disputed domain name reproduces entirely the service mark MACQUARIE and the country code Top-Level Domain ("ccTLD") does not affect the assessment on confusing similarity.
Respondent does not have any rights or legitimate interests in the disputed domain name.
Complainant has not authorized Respondent to register or use the disputed domain name.
Respondent has not at any time been commonly known by the disputed domain name.
Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name does no resolve to any active website.
The reverse WhoIs information determines that Respondent owns at least nine other domain names which reproduce well known trademarks and service marks, either with a different gTLD or misspelled.
Using a well known trademark or service mark to register a third party domain name is evidence of bad faith registration. Furthermore, the registration of the disputed domain name prevents Complainant from reflecting its trade mark in with the ccTLD ".". B. Respondent
Respondent did not reply to the Complainant's contentions, despite of being properly notified of the complaint. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Likewise, paragraph 10(d) of the Rules, provides that "the Panel shall determine the admissibility, relevance, materiality and weight of the evidence."
The Panel wants to place special emphasis on the evidence filed by the parties to prove their assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving to a decision. The statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration to its existence. The Panel is empowered to confirm this evidence ex officio.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that the disputed domain name be cancelled or transferred:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
First of all, the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the service mark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly, the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent. A. Identical or Confusingly Similar
Complainant contends it is the owner of the service mark MACQUARIE in Australia, financial related services.
Existence of a trademark or service mark in which the Complainant has rights
Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. As a matter of general principle, trademark rights are typically acquired by registration before a competent office.
The generally accepted definition of a trademark or service mark, involves the concept of a distinctive force as the most relevant element. It is this "distinctiveness" that gives the sign the capability to identify the products or services of its owner and differentiate them from the products and services of other participants in the market.
When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right of use over the mark, which entitles it to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks1 and thus, it is well established that a complainant is not required to own a registered trademark to invoke the Policy.
In this case, Complainant has proven its rights of the service mark MACQUARIE (Exhibit 6 to the Complaint), as follows:
Service mark
Registration Number
Class
Registration date
Enforce until
MACQUARIE BANK
415326
36
September 18, 1984
September 18, 2015
MACQUARIE WARRANTS
742171
36
August 25, 1997
August 25, 2017
transact@macquarie
775714
36
October 14, 1998
October 14, 2018
MACQUARIE MARGIN LENDING
794805
36
May 20, 1999
May 20, 2019
MACQUARIE PORTFOLIO MANAGER
796920
36
June 10, 1999
June 10, 2019
MACQUARIE
805900
35 and 36
September 2, 1999
September 2, 2019
MACQUARIE
805904
35 and 36
September 2, 1999
September 2, 2019
MACQUARIE BANK
805905
35 and 36
September 2, 1999
September 2, 2019
MACQUARIE BANK
805906
35 and 36
September 2, 1999
September 2, 2019
This information appears to be incontestable and conclusive evidence of Complainant's ownership of the cited service mark and the exclusive right to use it in connection with the stated services. The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.
Thus, Complainant established its rights in the service mark MACQUARIE.
Therefore, the Panel concludes that Complainant has demonstrated rights in the service mark MACQUARIE for purposes of paragraph 4(a)(i) of the Policy.
Identity or confusing similarity between the disputed domain name and the Complainant's service mark
Complainant alleges that the disputed domain name is confusingly similar to its service marks and that the ccTLD should not be taken into account since it does not grant distinctiveness to the disputed domain name.
In the first place, before establishing whether or not the disputed domain name is confusingly similar to the Complainant's service mark MACQUARIE, the Panel wishes to point out that the addition of the gTLD, i.e., ".com", ".biz", ".edu", or ".org", are not generally considered when determining if the disputed domain name is identical or confusingly similar to the registered trademark. Neither do the addition of country code Top-Level Domains ("ccTLD"), i.e., ".co", ".de", ".cr", ".es", nor the insertion of a gTLD have a distinctive function.
UDRP panels have unanimously accepted that the inclusion of the ".com" (gTLD) in the disputed domain name is generally not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the trademark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmart Puerto Rico,WIPO Case No. D2000-0477, the panel stated that:
"[T]he addition of the generic top-level domain (gTLD) name '.com' is without legal significance since use of a gTLD is required of domain name registrants, '.com' is one of only several such gTLDs, and '.com' does not serve to identify a specific enterprise as a source of goods or services."
Furthermore, the Panel believes that the disputed domain name is confusingly similar to the service mark MACQUARIE as per the typical UDRP criteria. The Panel considers that the reproduction of the service mark MACQUARIE by the disputed domain name is sufficient ground to establish that the disputed domain name is confusingly similar to the service mark.2 Especially since the disputed domain name reproduces entirely Complainant's service mark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is the provider of the financial services identified with the service mark MACQUARIE.
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to the Complainant's service mark MACQUARIE and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with. B. Rights or Legitimate Interests
Prima FacieCase
Regarding this second element of paragraph 4(a) of the Policy, UDRP panels have agreed that requiring a complainant to prove the lack of rights or legitimate interests of a respondent in the disputed domain name is often an impossible task: it not only requires proving a negative but also demands access to information that is usually within the knowledge of a respondent3 .
In Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121, the panel stated that:
"Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel's view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g., he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head."
Therefore, a complainant is required to make a prima facie case that respondent lacks of rights or legitimate interests in a disputed domain name. Once this prima facie case is made, the burden of production shifts to respondent, who must come forward with concrete evidence of its rights or legitimate interests4 . If a Respondent fails to do so, a complainant is deemed to have met the second element of paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because: (i) Respondent is not commonly known by the disputed domain name; (ii) Respondent has not been authorized by Complainant to use the trademark MACQUARIE in any manner; (iii) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services because the disputed domain name is being passively held, hence, Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name; (iv) Respondent has no prior rights or legitimate interests in the disputed domain name; and (v) Respondent knew Complainant's trademark since it is a "well-known" and "famous" trademark.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
Respondent's rights or legitimate interests in the disputed domain name
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent's rights or legitimate interests in a disputed domain name:
(i) Before any notice of the dispute, respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making 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 notes that Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that Respondent has failed to submit a Response to the Complaint filed against it. In particular, Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests to the disputed domain name. In accordance with the Rules paragraph 14, the Panel thus draws such inferences as it is consider appropriate, which are that Respondent is unable to adduce evidence of any rights or legitimate interests to the disputed domain name.
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(i) There has been no evidence produced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the disputed domain name or reasons to justify the choice of the word "macquarie" in its business operation.
Moreover, the disputed domain name has been passively held by Respondent as asserted by Complainant and verified by the Panel.
(ii) There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the service mark MACQUARIE or to apply for or use any domain name incorporating the trademark MACQUARIE;
(iii) There has been no evidence produced to show that Respondent has been commonly known by the disputed domain name.
(iv) There has been no evidence produced to show that Respondent has any registered trademark rights with respect to the disputed domain name.
(v) The disputed domain name is confusingly similar to Complainant's MACQUARIE trademark.
(vi) There has been no evidence produced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Thus, Complainant established that Respondent does not have rights or legitimate interests in the disputed domain name , which Respondent did not rebut. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a disputed domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name in bad faith, since he must have had knowledge of the service mark MACQUARIE on August 31, 20155 .
The Panel agrees with Complainant. The fact that Respondent chose the word "macquarie" to make up the disputed domain name is in this Panel's view evidence per se of bad faith. The Panel finds this selection was deliberate and not product of chance: "macquarie" is not a common word in the English, Spanish, German or French language as the Panel confirmed through searches conducted in different online dictionaries6 . Given the extent of the service mark MACQUARIE's well-known character, Respondent simply could not have been unaware of it. Thus, the Panel finds that Respondent deliberately took someone else's mark to register a domain name and to prevent its rightful owner to portrait its mark on it. Indeed, MACQUARIE is a well-known service mark as shown in Exhibit 4 to the Complaint which is the financial report of Complainant.
As per the financial report, for FY15, Complainant has a net profit of AUD 1.6 billion, which is 27% higher than FY14, the operating income is of AUD 9.3 billion, which is 14% higher than FY14. The assets under management as at March 31, 2015 were valued at AUD 486 billion. The financial report also states that Complainant was founded in 1969, has over 14,000 employees and offices in 28 countries.
The information provided is enough to determine that the service mark MACQUARIE is well-known.
Thus, this Panel deems that the mere fact of knowingly incorporating a third-party's well-known mark in a domain name constitutes registration in bad faith7 . See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel found: "The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent's prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel's opinion."
In addition, Complainant contends in the Complaint that Respondent is not using the disputed domain name which is an indicator of bad faith. The requirement of use in bad faith does not require that it prove in every instance that a respondent is taking positive action.
The mere failure to make an active use of the disputed domain name is indicative of bad faith registration and use pursuant to Policy paragraph4 (a)(iii).
The passive holding of the disputed domain name in sum with Respondent's pattern of registering multiple domain names incorporating well-known trademarks, establishes bad faith registration and use8 . Consequently, the three elements of the Policy, paragraph 4(a) are satisfied in the present case in respect to Respondent of the disputed domain name. 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.
Fernando Triana, Esq.
Sole Panelist
Date: November 18, 2015
1 See MatchNet plc. v. MAC Trading,WIPO Case No. D2000-0205; see also The British Broadcasting Corporation v. Jamie Renteria,WIPO Case No. D2000-0050.
2 See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
3 See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyP,WIPO Case No. D2012-0875; see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services,WIPO Case No. D2012-0474.
4 See Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624.
5 See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services,WIPO Case No. D2012-0474.
6 English: ""; Spanish: ""; French: "http: //"; and German: "".
7 See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, supra.
8 See EPA European Pressphoto Agency B.V. v. Wilson,WIPO Case No. D2004-1012 (finding that the respondent's registration of the , and domain names was sufficient to constitutea pattern pursuant to Policy paragraph 4(b)(ii)) and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
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