The Complainant is Insight Investment Management Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Kemp Little LLP, UK.
The Respondent is Hossein Fazlollahi of Johannesburg, Gauteng, South Africa. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2016. On January 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceeding commenced on January 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2016.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on February 18, 2016. 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
The Complainant is a well-known asset management company offering services in the UK, across Europe, in North America, and Asia, under and by reference to its INSIGHT INVESTMENT brand. In particular, the Complainant has a significant presence in the UK, United States of America (“US”) and Australia. It is one of the UK’s largest investment management companies. It has offices in London, New York and Sydney and employs over 650 people.
The Complainant owns 12 trademark registrations for INSIGHT INVESTMENT. In particular, it points to the following trademark registrations:
Mark
Jurisdiction
Registration no.
Class
Registration date
INSIGHT INVESTMENT
Community Trade Mark
247855
36
June 11, 2002
INSIGHT INVESTMENT
US
4774611
36
March 18, 2013
INSIGHT INVESTMENT
Australia
1563890
36
March 18, 2013
The Complainant has owned the domain name since June 7, 2002. In total, the Complainant owns 17 domain names for “insightinvestment”. The Complainant also has a social media presence through sites such as Twitter and LinkedIn.
The disputed domain name was registered on November 30, 2015. On that same day, the Complainant’s COO and CFO, received an email from the address “[…]@” (i.e., an email address associated with the disputed domain name intended to mimic the email address of the Complainant’s CEO) which read:
“Good morning, Atul,
Can you please do me a favor and perform a wire transfer for me?”
On December 1, 2015, the Registrar suspended the disputed domain name following a complaint from the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name incorporates, reproduces in its entirety, and consists only of its brand INSIGHT INVESTMENT. The use of the “.co” suffix enhances the risk of confusion between the disputed domain name and the Complainant’s goods and services because it differs from the Complainant’s own domain name by only one letter. The Complainant therefore contends that there is a real risk that Internet users will be confused into thinking that there is a connection between the disputed domain name and the Complainant and/or the Complainant’s goods and services.
The Complainant states that it has never assigned, granted, licensed, sold or otherwise transferred its rights in its trademarks to the Respondent. Further, the Complainant states that to its knowledge, there is no evidence of the Respondent using or preparing to use the brand, the disputed domain name, or any similar domain name incorporating the brand, in connection with the offering of bona fide goods or services. The Complainant also states that there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name, to its knowledge.
As to the requirement of registration and use in bad faith, the Complainant states that on November 30, 2015, the Complainant’s COO and CFO received an email from the address associated with the disputed domain name requesting a wire transfer. The Complainant states that this email consisting of the name of the Complainant’s CEO was an attempt to impersonate him in order to perpetrate a “sphear phishing” fraud against him/the Complainant. This email was sent on the same day the disputed domain name was registered. The Complainant contends that this shows that the disputed domain name was clearly registered with knowledge of the Complainant’s brand and trading status and with the intention of using the similarities between the disputed domain name and the Complainant’s domain name as a means of confusing the Complainant and third parties into believing that emails from accounts registered with the disputed domain name were from the Complainant. The Complainant contends that by registration and use of the disputed domain name, the Respondent is intentionally attempting to confuse parties receiving emails from email accounts connected with the disputed domain name into believing they are from the Complainant with the intention of conducting fraud.
The Complainant states that if the Respondent is not restrained from using the dispute domain name, the Complainant will suffer and/or continue to suffer loss of customers and loss to the goodwill and reputation associated with its brand. In addition, the Complainant states that there is a risk that the Complainant and/or third parties may suffer losses due to criminal activities on the part of the Respondent. The Complainant therefore requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) That the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) That the 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. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the word mark INSIGHT INVESTMENT as a result of its trademark registrations.
The Panel finds that the disputed domain name is identical to the Complainant’s INSIGHT INVESTMENT trademarks. The Top-Level Domain “.co” is to be generally disregarded when comparing identity between the Complainant’s mark and the disputed domain name.
Thus, the Panel finds that the first element of the Policy has been met. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to a disputed domain name in connection with a bona fide offering of goods or services; or
(ii) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Complainant states, and the Panel accepts, that the Complainant has not assigned, granted, licensed, sold or otherwise transferred its rights in its trademarks to the Respondent.
In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, and in the absence of any response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) That the Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) That the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) That by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel is satisfied that the disputed domain name has been registered and is being used in bad faith for the following reasons:
(a) The Panel finds that at the time of registration of the disputed domain name, the Respondent was aware of the Complainant’s rights in the trademark INSIGHT INVESTMENT. On the same day that the Respondent registered the disputed domain name, an unknown party used the email address “[…]@” to impersonate the Complainant’s CEO through misspelling his name. This clearly shows that the Respondent had to have known about the Complainant and its business and therefore registered the disputed domain name in bad faith and with the intention of conducting, or attempting to conduct, fraudulent activities.
(b) Further, paragraph 2 of the UDRP puts a burden on registrants where it states “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party … it is your responsibility to determine whether your domain name infringes or violates someone else’s rights.” Even if the Respondent did not know of the Complainant and its trademark when registering the disputed domain name (which is not believable given the proximity of the sending of the email), the most cursory search prior to the Respondent acquiring the disputed domain name would have instantly revealed the Complainant and its trademark. See in this regard paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
(c) The impersonation of the Complainant’s CEO by creation of an email address using a misspelling of his name and the sending of an email to the Complainant’s COO also demonstrates use of the disputed domain name in bad faith.
(d) The Panel agrees with the Complainant that by registration and use of the disputed domain name, the Respondent is intentionally attempting to confuse parties receiving emails from email accounts connected to the disputed domain name into believing that they are from the Complainant, with the intention of conducting fraud. 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.
Andrew Brown Q.C.
Sole Panelist
Date: March 3, 2016
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