The Complainant is Vontobel Holding Ltd. of Zürich, Switzerland, represented by Wild Schnyder AG, Switzerland.
The Respondent is Portfolio Brains, LLC of Los Angeles, United States of America.
The disputed domain name <vontobelfunds.com> (the “Domain Name”) is registered with Namesalacarte.com LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2009. On December 17, 2009, the Center transmitted by email to Namesalacarte.com LLC. a request for registrar verification in connection with the Domain Name. On December 25, 2009, Namesalacarte.com LLC. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was originally January 17, 2010.
On December 31, 2010, the Complainant's lawyers received an e-mail from the Respondent who indicated that it (the Respondent) would implement the transfer of the Domain Name to the Complainant “without any reserves”. On January 4, 2010, the Complainant's lawyers sent a letter (via e-mail) to the Center requesting that the proceedings be suspended for 20 days (until January 24, 2010). Official Notification of suspension of the proceedings was issued by the Center on January 4, 2010.
The Respondent failed to unlock the Domain Name and as such, the Complainant requested by letter dated January 11, 2010 that the Center re-institute the proceedings.
The proceedings were re-instituted on January 12, 2010 and all time periods were re-calculated and the due date for Response was January 25, 2010.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 1, 2010.
The Center appointed Tee Jim Tan, S.C. as the sole panelist in this matter on February 19, 2010. 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.
The Complainant is an internationally active corporation in the field of banking and finance. It is the holding company for the Vontobel Group of companies (the “Group”) which have activities in the field of private banking, investment banking, asset management and investment funds with operations in nineteen (19) countries worldwide.
The Complainant uses the mark VONTOBEL as the key identifier for the Group, the companies as well as their products and services both in Switzerland and internationally. The Complainant and its Group are the owners of many trade mark registrations for the VONTOBEL mark in South America, the United States, Europe, the Middle East and Asia.
The Complainant also owns the domain name <vontobel.com> which is the Complainant's main domain name for all its Internet activities and provides information on the Group and its services.
The Respondent is the registrant of the Domain Name at which the website “www.vontobelfunds.com” (the “Website” or the “Respondent's Website”) is located. The Domain Name was registered on November 1, 2009 and provides on the Website services in the field of banking as well as links to other firms that offer services in the same fields as those of the Complainant.
As mentioned above, the Respondent had agreed to transfer the Domain Name to the Complainant but had failed to implement the transfer. Consequently, the Domain Name remains with the Respondent.
The Complainant contends that:
(1) the Complainant has rights in the trade mark VONTOBEL in South America, North America, Europe, the Middle East and Asia;
(2) the Complainant's main domain name for all Internet activities and information services is <vontobel.com>;
(3) the Domain Name fully incorporates the Complainant's distinctive VONTOBEL mark in which the Complainant has rights;
(4) the Domain Name is confusingly similar to the Complainant's mark VONTOBEL because it incorporates the mark in its entirety and the addition of the generic word “funds” does not sufficiently distinguish the Domain Name from the Complainant's mark;
(5) the specific top level domain name (i.e.“.com”) is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the Complainant's trade mark and the Domain Name;
(6) the Complainant notes that the Respondent has previously been involved in several Domain Name cases where the transfer of a domain name to the respective complainant was ordered in each case (See American Airlines, Inc. v. Portfolio Brains, LLC, NAF Case FA No.1247273; Vacation Publications, Inc. v. Portfolio Brains, LLC, NAF Case FA No.1139522; Ace Cash Express, Inc. v. Portfolio Brains LLC, NAF Case FA No.1093846; Mahindra & Mahindra Limited v. Portfolio Brains, LLC, WIPO Case No. D2009-0209; Editorial Perfil S.A. v. Portfolio Brains, LLC, WIPO Case No. D2009-0486; and Universidad Autonoma de Nuevo Leon (UANL) v. Portfolio Brains, LLC, WIPO Case No. D2009-0805). The Complainant further notes that in the case of Mahindra & Mahindra Limited v Portfolio Brains, LLC, WIPO Case No. D2009-0209, the panel found that the involvement of the Respondent in prior cases demonstrated a pattern of bad faith conduct under paragraph 4(a)(iii) of the Policy.
(7) the Respondent does not have rights or legitimate interests in respect of the Domain Name pursuant to the Policy, paragraph 4(a)(ii) because of the following reasons:
(a) the Respondent is not authorised to use or otherwise dispose of the VONTOBEL mark and is not affiliated with the Complainant in any way;
(b) the Respondent does not use the Domain Name in connection with a bona fide offering of goods or services nor is the Respondent known by the Domain Name;
(c) the Respondent is not making any legitimate non-commercial or fair use of the Domain Name;
(8) the Domain Name was registered on November 1, 2009 and provides active services in the field of banking and links to other firms that offer services in the same fields as those of the Complainant.
(9) the Respondent's Website is a typical PPC (pay per click) landing website that operates for commercial gain by attracting Internet users by using a confusingly similar Domain Name to the Complainant and its trade marks.
(10) the Domain Name was registered and is being used in bad faith for the following reasons:
(a) at the time of registration, the Respondent, no doubt, had knowledge of the Vontobel company and its trade marks;
(b) the Respondent's Website contains numerous sponsored links, including links which are sponsored by the Complainant's competitors;
(c) the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant's VONTOBEL trade marks;
(d) in the Mahindra & Mahindra case, the panel found that even without concrete knowledge about the existence of complainant's trade marks, the respondent cannot rely on “willful blindness”;
(e) the fact that the Respondent has previously been involved in the above-mentioned UDRP proceedings (where in each case the transfer of the Domain Name was ordered) shows that the Respondent has engaged in a pattern of preventing owners of a trade mark or service mark from reflecting their marks in a corresponding domain name.
The Respondent did not reply to the Complainant's contentions.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present in order to succeed in the Complaint:
(1) the Domain Name is identical with or confusingly similar to a trade mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) the Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, the Panel shall, in the absence of exceptional circumstances, decide the dispute based on the Complaint.
The Complainant has provided evidence of its registrations in relation to its VONTOBEL trade marks in Switzerland and the United States of America as well as other countries worldwide. In addition, the Complainant has been using “www.vontobel.com” for its main website for all Internet activities and information services for sometime now. Accordingly, it is the Panel's view that the Complainant has sufficiently demonstrated its rights in the VONTOBEL marks.
The Panel finds that the Domain Name is confusingly similar to the Complainant's trade marks. Not only does the Domain Name incorporate the Complainant's VONTOBEL mark in its entirety, the tacking on of the word “funds” which is a generic word that is descriptive of services provided by the Complainant further increases the likelihood of confusion.
It has widely been accepted by previous panelists that it is sufficient to establish confusing similarity for purposes of the Policy when a domain name wholly incorporates a complainant's mark and only adds a generic word. The confusion is heightened when the generic word used by the respondent is descriptive of the complainant's goods or services marketed in relation to that trade mark (see Southern Communications Services, Inc. d/b/a Southern Linc v. J Lee, WIPO Case No. D2005-0212; Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445; Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020; and Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026). In the present case, the use of the word “funds” is likely to mislead consumers to believe that the Respondent's Website relates to the Complainant's business or service concerning its investment funds.
The Panel accordingly finds for the Complainant in relation to the first element.
According to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following:
(1) the 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 before any notice to the Respondent of the dispute; or
(2) the Respondent has been commonly known by the Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(3) the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
As the Respondent has not filed file a Response, the Panel does not have before it any evidence of the circumstances specified in paragraph 4(c) of the Policy, or of any other circumstances which might reasonably be said to give the Respondent a right to or a legitimate interest in the Domain Name. In the Panel's view, the Respondent's failure to provide the circumstances is itself an acknowledgement that it has no rights or legitimate interests in the Domain Name.
There is no evidence that the Respondent was commonly known by the Domain Name prior to its registration of the name or that it has been dealing in goods or services under or by reference to the mark VONTOBEL. Indeed, the Respondent's Website does not identify the Respondent or indicate that the Respondent is in some way associated with the name “Vontobel”. It is apparent to the Panel that the purpose of the Website is to misleadingly divert consumers to the Website by capturing and diverting Internet users who intend to visit the Complainants' website, “www.vontobel.com”.
The Panel notes that the Respondent's Website is a typical PPC landing site and is of the view that it was deliberately created to exploit the Complainant's trade marks by creating the erroneous impression that the Website is the Complainant's website or is in some way associated with the Complainant, thereby generating revenue for the Respondent. Such use, in the Panel's view, is not fair use.
Further, the Panel notes that by an e-mail dated December 31, 2009, the Respondent informed that it would transfer the Domain Name to the Complainant “without any reserves”. This, in the Panel's view, is an acknowledgement that the Respondent has no legitimate rights or interest in the Domain Name and that the rights or interest belongs to the Complainant.
The Panel therefore finds for the Complainant in relation to the second element.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(1) 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 domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(2) circumstances showing that the respondent has registered the disputed 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 the respondent has engaged in a pattern of such conduct; or
(3) circumstances showing that the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(4) the respondent has, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to its 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.
By failing to file a Response, the Respondent has failed to invoke any of the circumstances that could demonstrate that the Respondent did not register and use the Domain Name in bad faith and to assist the Panel in this regard. In the Panel's view, the Respondent's failure amounts to an acknowledgment that it could not justify its registration and use of the Domain Name and that it registered and used the Domain name in bad faith. This aside, there is overwhelming evidence that the Respondent deliberately registered and used the Domain Name to exploit the Complainant's trade marks for commercial gains.
As mentioned above, there is no evidence that the Respondent was or was commonly known by the Domain Name prior to the registration of the name or that it has been dealing in goods or services under or by reference to the mark VONTOBEL.
As noted above, the Domain Name was registered in respect of the Website which offers services in the same fields as those of the Complainant. This cannot be due to serendipity but in fact suggests that the Respondent was at all material times aware of the Complainant and its commercial activities in the same fields. The addition of the generic word “funds” in the Domain Name is unlikely to be fortuitous; it is likely to be due to the Respondent's awareness or knowledge of the Complainant and its activities as well as the Respondent's intention to exploit or free-ride on the Complainant's mark VONTOBEL in relation to the Respondent's Website which is a PPC site.
Previous panels have found that the use of a distinctive trade mark, together with a generic term which describes the complainant's commercial activities, suggests that it is unlikely that the respondent was unaware of the complainant's trade marks at the time of registration of the domain name and, further, such conduct is evidence of bad faith (See e.g. Sainsbury's Bank Plc v. Owen Webster, WIPO Case No. D2007-1246, in which the panel stated that “the fact that the domain name, in addition to the distinctive and non descriptive word “sainsburys”, also contains a generic word, “finance”, describing the services provided by the Complainant under the trademark SAINSBURY'S BANK, makes it highly unlikely that the Respondent was unaware of the Complainant's trademarks at the time of registration of the domain name. In the absence of any other explanation to why the Respondent chose a domain name containing “sainsburysfinance”, the Panel, in view of the above facts, finds that the disputed domain name has been registered in bad faith”).
Further, there are many panel decisions that state that the use of a confusingly similar domain name to lure Internet users to a site hosting links to providers of competing products or services is evidence of bad faith (see e.g. Edmunds.com v. Ultimate Search, Inc. WIPO Case No. D2001-1319, in which the panel stated that “registration and use of a domain name to redirect Internet users to websites of competing organizations constitute bad faith registration and use under the Policy.” See also Nikon, Inc. and Nikon Corporation v. Technilab, Inc, WIPO Case No. D2000-1774, where it was held that the use of the <nikoncamera.com> domain name for a site that sold Nikon products and those of its competitors constituted an improper use of complainant's mark to attract Internet users to respondent's site for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the site).
Additionally, there is compelling evidence that the Respondent has been engaged in a consistent pattern of conduct in registering and/or using the names and marks of others in or as part of its domain names. This has led to a number of UDRP cases in which the Respondent was compelled to transfer the domain names in question. In the Panel's view, the Respondent's pattern of conduct supports the fact that the Respondent is also engaged in such conduct in respect of the Domain Name.
For all of the above reasons, the Panel finds for the Complainant in relation to the third element.
In the premises, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <vontobelfunds.com>, be transferred to the Complainant.
Tee Jim Tan, S.C.
Dated: March 1, 2010