The Complainant is PRIMECAP Management Company, United States of America (United States), represented Byron Raphael LLP, United States.
The Respondent is PrivacyGuardian.org, United States / Georgios Shipillis, Longbridge Partners LLC, Cyprus. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2021. On March 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on March 24, 2021 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 amendment to the Complaint on April 8, 2021. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2021. The Response was filed with the Center on May 3, 2021. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 25, 2021. 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 an investment management company based in the United States. It has been offering financial services under the PRIMECAP trademark since 1983. As of December 2020, it managed approximately USD 143 billion in investments. Although the majority of its customers are based in the United States, it also has managed funds in the United Kingdom and the European Union. Over the years, its investment strategy has been recognised in the financial press and ratings bodies for repeatedly outperforming the returns earned by other investment funds and managers. The Complainant’s funds have grown in size so that, as a result, they have all been closed to new investors for at least 10 years. The Complaint includes evidence that the Complainant owns three registered trademarks in the United States. For present purposes, it is necessary to mention only Registered Trademark No. 2,965,219 PRIMECAP for a range of financial and investment services in International Class 36. This trademark was filed on May 11, 2004 and registered on July 5, 2005. It is registered in the Principal Register. According to the Registrar, the disputed domain name was first registered on August 21, 2020. It resolves to a website from which the Respondent appears to offer a platform for investment and trading in international financial markets such as foreign exchange, gold, oil, stocks, indices and digital money. The Financial Conduct Authority in the United Kingdom has recently issued a warning identifying the Respondent as a firm which has been providing financial services in the United Kingdom without the Authority’s authority. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and Paragraph 15(a) of the Rules directs the Panel to decide the 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. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven ownership of the registered trademark PRIMECAP identified in section 4 above. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of "likelihood of confusion" under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.71. In undertaking that comparison, it is permissible in the present circumstances to disregard the country code Top Level Domain (“ccTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. Disregarding the “.io” ccTLD, the disputed domain name consists solely of the Complainant’s registered trademark. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent's name. Nor does the Respondent make such a claim. The disputed domain name does resolve to what appears to be an active website offering financial services. The services being offered, however, have attracted the warning from the Financial Conduct Authority in the United Kingdom that the Respondent is engaged in unauthorised trading in the United Kingdom. The Complainant has also submitted evidence of Trustpilot reviews of the Respondent. There are 20 such reviews. Only one is favourable to the Respondent. Each of the others claims that the Respondent is engaged in scamming them or has failed and refused to refund their moneys in accordance with its published withdrawal policies or at all. It appears, however, that some of these reviewers have been able to reclaim their money through the intervention of some third party services. If true, these allegations would disqualify the Respondent from claiming it was engaged in some sort of good faith offering of goods or services. The Response does not dispute these matters. It merely stated: “Thank you for bringing this matter to our attention. Although the Response stated that “domains” and associated “instances” and emails would be taken down, in fact the website at least is still active. In these circumstances, the Panel finds that the Complainant has established a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered or Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been registered or used in bad faith by the Respondent. Generally speaking, a finding that a domain name has been registered or is being used in bad faith requires an inference to be drawn that the respondent in question has registered or is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. The Complainant contends that the Respondent has adopted the disputed domain name with knowledge of the Complainant and its trademark in an attempt to exploit the fact that the Complainant’s funds are closed to new investors by misleading potential investors into thinking the Respondent is in some way associated with the Complainant through the use of the confusingly similar disputed domain name. Bearing in mind the disputed domain name was registered only in August 2020, it also appears that the disputed domain name was registered to engage in providing at the very least financial services online without the necessary regulatory authorisations. If the reviews on Trustpilot are taken at face value, the Respondent’s conduct would be even more heinous. The Respondent has not disputed any of these allegations but, instead, has claimed it would discontinue use of the disputed domain name. A claim which it has not complied with as yet. In these circumstances and having found that the Respondent does not have rights or legitimate interests in the disputed domain name, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. Accordingly, the Complainant has established all three requirements under the Policy. 6. 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 Warwick A. Rothnie 1 Noting the similarities between the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) and the Policy, the Panel has referred to prior UDRP cases and the WIPO Overview 3.0, where appropriate.
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
We would like to express our utmost apologies for this for this matter. We have instructed our technical and legal team to comply to your request. We would kindly ask for grace period till 20th of may to conclude all necessary actions from our side to bring down all domains, instances and emails where ‘primecap’ is used.
We would emphasize that this mater [sic] has been taken to highest priority to be compliant with requirements in shortest period of time.”
Sole Panelist
Date: July 9, 2021
Full & Egal Universal Law Academy