WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alceda Fund Management S.A. v. Michael Orden (SROW-1660081)
Case No. D2011-1542
1. The Parties
The Complainant is Alceda Fund Management S.A. of Luxembourg, represented by Heuking Kühn Lüer Wojtek, Germany.
The Respondent is Michael Orden (SROW-1660081) of Madrid, Spain.
2. The Domain Name and Registrar
The disputed domain name <ac-alternative.com> is registered with Arsys Internet, S.L. dba NICLINE.COM (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2011. On September 14, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 Registrar additionally confirmed that the language of the registration agreement was Spanish. Accordingly, the Center transmitted a Language of Proceedings document, in both Spanish and English, requesting comment from the parties. On September 27, 2011, the Complainant submitted a request that English be the language of the proceedings, reiterating the arguments stated in the Complaint. The Respondent did not submit any comment.
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 October 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2011.
The Center appointed Torsten Bettinger as the sole panelist in this matter on November 14, 2011. 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 financial investment group based in Luxembourg which has been active in the investment management industry since 2007. The Complainant provides institutional investors, asset and fund managers, banks and family offices with tailored investment solutions, and manages roughly EUR 5.3 billion in assets.
One of the Complainant’s managed asset funds is called the AC Alternative fund, which is distributed in parts via sub-funds under the name AC Alternative – Pharos Evolution Fund. The AC Alternative fund is therefore an umbrella fund, and is the name by which the Complainant, its associates and clients refer to the asset. The Complainant is authorized to distribute this fund in several countries, including the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), Germany, Switzerland, Luxemburg, and Spain, either directly or through an established network of investment advisors, asset managers and savings and co-operative banks.
The Complainant alleges that it was unaware of the Respondent, his domain name registration or activities until September 2011, when it was contacted by the Financial Services Authority (“FSA”) of the United Kingdom. The FSA contacted the Complainant by email, requesting confirmation as to whether or not the website active at the disputed domain name was connected to the Complainant’s business. The FSA representative further indicated “[the Complainant] should be informed that I am working on an unauthorized firm case called AC Alternatives, which seems to have possibly cloned your firm.” Shortly thereafter, the Complainant initiated the present proceeding.
The disputed domain name was registered on September 27, 2010, and was previously used to display information relating to financial services under the name “AC-Alternative”. The domain name does not currently resolve to an active website.
5. Parties’ Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that it holds unregistered trademark rights in the name of its AC-Alternative fund under the laws of both Germany and the United Kingdom. Further, the Complainant states that the disputed domain name is identical to its AC-ALTERNATIVE mark, as it fully includes the trademark in addition to the gTLD “.com”.
The Complainant further contends that it has not authorized the Respondent to use the AC-ALTERNATIVE mark in any manner, that the Respondent has no connection with the Complainant, and that the Respondent is not using the disputed domain name in connection with any bona fide commercial, noncommercial or fair use. The Respondent has, according the Complainant and the evidence presented in the Complaint, utilized the domain name to impersonate the Complainant and trade off the goodwill associated with the Complainant’s reputation.
Finally, the Complainant alleges that the domain name was both registered and used in bad faith. The Complainant states that the Respondent “tried to ‘clone’ the Complainant’s firm”, including copying the Complainant’s legitimate mailing address, thus misrepresenting to the public the actual identity of the Respondent and the nature of any business conducted from the website. Moreover, the Complainant states that the Respondent could make no legitimate use of the disputed domain name, given that it comprises the Complainant’s trademark in its entirety, and the Respondent may have intended to sell the disputed domain name at a profit or simply prevent the Complainant from obtaining the registration.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Before turning to an assessment of the merits in the case, the Panel must first address the question of the proper language of the proceedings. Pursuant to paragraph 11(a) of the Rules, the language of the proceedings shall be the language of the registration agreement, subject to panel discretion under the facts and circumstances of the particular case. See VingCard Elsafe AS v. Hu Qing / jing hu, WIPO Case No. D2010-1590.
In this instance, the registration agreement was written in Spanish and the Complaint was presented in English. The Complainant has requested that English be the language of the proceedings, which the Respondent has not contested. There are a number of reasons why English appears to this Panel to be the proper language of the proceedings. The Respondent’s website, when active, was written in the English language, and was apparently targeting Internet users in the United Kingdom, according to the statements made by the FSA to the Complainant. Additionally, English is not the official language of either the Complainant’s or the Respondent’s home country. Finally, the Respondent has not raised any objection to the Complainant’s request, despite having received communications from the Center in both the English and Spanish languages.
Accordingly, the Panel finds that English is the proper language of the proceedings.
A. Identical or Confusingly Similar
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323; and BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480.
Additionally, it is well established that a gTLD suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The Complainant has alleged unregistered trademark rights under the laws of both the United Kingdom and Germany, where it has done business for a number of years. The Panel notes that the Complainant has provided a copy of its financial prospectus from January of 2010, which details the extensive business activities connected with the AC-Alternative fund, as well as letters confirming the Complainant’s authority to register its AC-Alternative fund in a number of European countries, including in Spain where the Respondent appears to be domiciled.
Accordingly, the Panel finds that the Complainant has demonstrated unregistered trademark rights in the AC-ALTERNATIVE mark for the purposes of the Policy.
Furthermore, as the Respondent’s domain name consists of the trademark in its entirety, with the sole addition of the gTLD designator “.com”, the Panel finds that the disputed domain name is identical to the Complainant’s trademark.
Therefore, the Panel finds that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is, however, the consensus view among WIPO UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this case, the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has used the domain name to display information relating to what appears to be a sham organization, appropriating the Complainant’s trademark as a business name. According to information received by the Complainant from the FSA of the United Kingdom, it appears that the Respondent was attempting to “clone” the Complainant’s business, thereby luring the Complainant’s potential customers to his own website for commercial gain. Such use cannot be considered a bone fide offering of goods or services under the Policy.
Likewise, the Respondent’s activities cannot be said to constitute a legitimate noncommercial or fair use of the disputed domain name. The Respondent does not appear to be known by the disputed domain name or a name corresponding to the disputed domain name. According to the WhoIs records for the disputed domain name, the Respondent appears to be a natural individual by the name of “Michael Orden”.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The Complainant alleges that the disputed domain name has been registered and used in bad faith. The disputed domain name was registered on September 27, 2010, over a year after the Complainant’s requests to introduce its AC-Alternative fund to the United Kingdom, Germany, Switzerland, Luxemburg, and Spain were granted. This fact, in conjunction with the Respondent’s apparent activities in the same financial sector as the Complainant, and the Respondent’s adoption of “AC-Alternative” as a business name, lead the Panel to conclude that the Respondent was aware of the Complainant and its AC-ALTERNATIVE trademark at the time he registered the disputed domain name, and that such registration was intended to take advantage of the Complainant’s goodwill.
Furthermore, the Panel finds under paragraph 4(b)(iv) of the Policy that the Respondent registered the disputed domain name to take unfair advantage of the Complainant by intentionally attempting to attract, for commercial gain, Internet users to his 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 website and the products or services formerly offered on his website.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ac-alternative.com> be transferred to the Complainant.
Dated: November 22, 2011