World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cheyne Capital Holdings Limited v. James Martin/Whois Privacy Protection Service Inc.

Case No. D2011-1732

1. The Parties

The Complainant is Cheyne Capital Holdings Limited of Tortola, British Virgin Islands, Overseas territory of the United Kingdom of Great Britain and Northern Ireland, represented by Dechert, United Kingdom of Great Britain and Northern Ireland.

The Respondent is James Martin of London, United Kingdom of Great Britain and Northern Ireland and Whois Privacy Protection Service Inc. of Yarmouth, Canada.

2. The Domain Name and Registrar

The disputed domain name <cheyne-capital.net> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2011. On October 13, 2011, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On October 13, 2011, Register.com 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 October 26, 2011 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 October 26, 2011.

The Center verified that the Complaint together with the amendment to 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 November 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2011.

The Center appointed Ian Blackshaw as the sole panelist in this matter on December 15, 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 (which incorporates, amongst others, the English limited liability partnership Cheyne Capital Management (UK) LLP which is regulated and authorised by the UK Financial Services Authority) was established in 1999 and is recognised as a leading alternative asset manager, specialising in corporate credit, real estate and asset backed strategies (references to the Complainant should be read as references to the Complainant’s group). The Complainant’s group launched its first fund in 2000 and currently manages approximately USD 7.2 billion in net assets. The Complainant has offices in London, Bermuda and Switzerland.

The Complainant owns and has owned for a considerable number of years a considerable portfolio of trademark registrations world-wide for marks consisting of or including the word CHEYNE and CHEYNE CAPITAL.

By way of illustration, details of the Complainant’s United Kingdom, European Union and United States trademark registrations have been provided to the Panel.

The Complainant also has a website at “www.cheynecapital.com”.

On October 5, 2011 the Complainant’s representatives wrote to the Respondent (using the contact information available through a Whois search and the contact information available through the website at the disputed domain name) requesting that the copied content be removed from the website at the disputed domain name; the disputed domain name be transferred to the Complainant; and the Respondent cease all operations and business under the name “Cheyne”. A copy of this letter has been provided to the Panel. No response has been received.

On October 6, 2011 the Complainant’s representatives sent a further letter to the Respondent repeating the request that the disputed domain name be transferred and that the Respondent cease all operations under the name “Cheyne” (or “Cheynne”). A copy of this letter has also been provided to the Panel. Again, no response has been received.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following assertions:

i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The disputed domain name is confusingly similar to the trademarks in which the Complainant has extensive rights. The domain name is identical to the Complainant’s CHEYNE CAPITAL trademarks and is confusingly similar to the Complainant’s CHEYNE trademarks.

In relation to the Complainant’s CHEYNE trademarks, the Complainant submits that the word “capital” is non-distinctive and that it is only the CHEYNE element of the disputed domain name that has any trademark significance. It is well-established by previous UDRP panel decisions that a disputed domain name incorporating a distinctive trade mark in its entirety (in this case, the mark CHEYNE) creates sufficient similarity between the mark and the domain name as to render it confusingly similar (see e.g. Minnesota Mining & Manufacturing v JonLR, WIPO Case No. D2001-0428; & Eauto LLC v Triple S Auto Parts d/b/a Kung Fu Yea Enterprises Inc., WIPO Case No. D2000-0047).

The Complainant also relies on the case of Bayerische Motoren Werke AG v Quality Services, WIPO Case No. D2003-0077, in which a merely descriptive word was added to the trademark BMW and it was said that this was “more likely to create rather than alleviate confusion among users of the Internet.” It was further stated in Walmart Stores, Inc. v Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 that the addition of a common or generic term to a trademark does not create a new or different mark in which the respondent has rights.

ii. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))

The Complainant has not licensed or otherwise permitted or authorised the Respondent to use its trademarks or to apply for a domain name incorporating any such marks.

There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Respondent initially used the domain name to impersonate the Complainant and such use cannot be said to be bona fide. The Respondent then used the disputed domain name to promote a financial services business, falsely claiming to be UK Financial Services Authority authorised and regulated. The Respondent’s use of the domain name, being confusingly similar to the Complainant’s trademarks, in connection with identical services to those offered by the Complainant (and for which the Complainant has trademark protection) is not a bona fide offering of services. In this regard, the Complainant relies on the case of Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946, where it was held that “use of the Complainant’s trademark to offer for sale or to direct customers to the products of the Complainant’s competitors is objectionable, and therefore not bona fide, as a misleading use of a trademark, as a form of unfair competition, and also for reasons of consumer protection, as it amounts to a form of ‘bait and switch’ selling”. As the website at the disputed domain name purportedly offered the same services to those offered by the Complainant, in the minds of consumers, it is in direct competition with the Complainant, and accordingly the reasoning in the above case applies.

The Respondent has not previously been known by the disputed domain name. The domain name was registered on September 6, 2011, a considerable period after the Complainant’s trademarks were registered and the Complainant’s group commenced business under the name “Cheyne”. At no time did the website at the disputed domain name purport to be that of a genuine business operating under the name “Cheyne-Capital” – initially the domain name purported to be that of the Complainant’s group and subsequently that of a so-called “Cheynne Capital Limited”. No such company is incorporated in the United Kingdom and the Respondent has not provided any information as to the country of incorporation of such entity, despite the Complainant’s requests. The Respondent has not provided any evidence that it has been previously known by the disputed domain name.

Furthermore, it is submitted that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name as described in paragraph 4(c)(iii) of the Policy. The website formerly at the domain name sought to promote a financial services business which is not a non-commercial use. As at the date of the Complaint, there is no content on the website at the disputed domain name.

It is, therefore, submitted that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

iii. The domain name was registered and is being used in bad faith

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

It is submitted that the disputed domain name was registered and is being used in bad faith because:

a. Contrary to Rule 4(b)(iii) of the Policy, the Respondent has registered the disputed domain name primarily to disrupt the business of a competitor, namely the Complainant. It is submitted that the intention of the Respondent in registering the domain name, as evidenced by the use to which the domain name has been put, is to divert the Complainant’s customers or potential customers away from the Complainant’s website and towards the website at the disputed domain name.

b. Contrary to Rule 4(b)(iv) of the Policy, the Respondent is using the disputed domain name intentionally 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 trademarks as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location. Initially, the Respondent used the disputed domain name to host a website that purported to be that of the Complainant’s group. This is clear evidence of the Respondent’s intention to attract Internet users to its website by creating confusion with the business of the Complainant’s group. The sole purpose of using the Complainant’s trademarks and purporting to be the Complainant was to give legitimacy to the operations being conducted through the website at the disputed domain name and to confuse Internet users into thinking they were contacting the genuine Cheyne Capital (the Complainant), doubtless in an attempt to get such Internet users to make investments on the basis of such confusion.

After the Respondent made changes to the website at the disputed domain name, the Complainant submits that the use being made of it still amounted to bad faith. Due to the use of the Complainant’s trademarks in the domain name, anyone accessing the domain name would reasonably expect the company offering services at the website to be either the Complainant itself or at the very least a commercially connected undertaking, which is not the case. Given that the website at the disputed domain name continued to purportedly offer services which are in direct competition with those of the Complainant, there is a real likelihood of confusion. The purpose of trying to attract Internet users appears at all times to have been to induce investments which is clearly a commercial gain.

The Complainant submits that the disputed domain name has been selected and is being used with the intent to confuse and direct Internet users to the Respondent’s website at the domain name when they are, in fact, looking for a website operated or endorsed by the Complainant.

c. The fact that the website at the disputed domain name initially featured content copied from the Complainant’s website and purported to be the website of the Complainant clearly shows that the Respondent was fully aware of the Complainant and its business at the time the domain name was registered. The Respondent’s actions in impersonating the Complainant are clear evidence of bad faith registration and use of the domain name. In this regard, the Complainant refers to the decision in Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615: “In particular, Respondent has registered a series of domain names that are rooted in a name that is neither generic nor identified with an idea, practice, or activity that is distinguishable from the business and custom of Complainant. Comerica is not a word that is in common use. Nor is it identified with a legitimate business or activity apart from the business of Complainant. By adding such words as “banking” “retire” and “web” to “Comerica” in the disputed domain names, the only reasonable conclusion to draw is that Respondent has deliberately sought to appropriate Complainant’s name with a view to using that name in some future venture, whether by selling the disputed domain names to others, by purporting to provide a service related to Complainant’s business, or by engaging in some other unlawful design. See e. g, Panavision Int’l L.P. v. Toeppen, 945 F. Supp 1296 (C.D. Cal. 1996).”

B. Respondent

The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.

6. Discussion and Findings

To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(ii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ assertions and evidence, as well as inferences drawn from the Respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, a panel must not decide in the complainant’s favor solely based on the respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In this case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP cases that, where a disputed domain name incorporates a Complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the disputed domain name incorporates the Complainant’s well-known and well-established registered trademarks CHEYNE CAPITAL and CHEYNE. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information on the Complainant’s company and its services marketed under its well-known and well-established registered trademarks CHEYNE CAPITAL and CHEYNE.

The addition in the disputed domain name of a hyphen between the words “cheyne capital” and the addition to the word “cheyne” of the word “capital”, being descriptive, does not provide any distinguishing feature to the disputed domain name. Indeed, it only adds to the confusion as the Complainant is in the financial services industry. See Harrods Limited v. Simon Harkin Travel, WIPO Case No. D2004-0546 in which the panel held that:

“Although the [d]omain [n]ame consists of the word “harrods” and the word “travel,” it is well settled that a domain name suffix, such as the word “travel” in the present case, is merely descriptive and does not add any distinctiveness to the word “harrods,” which is the quintessential and distinctive part of the [d]omain [n]ame. See Harrods Limited v.Vineet Singh, WIPO Case No. D2001-1162, where the [p]anel held that “… any use of the name Harrods in conjunction with a description… would suggest a false sense of origin…for any associated goods or services”. See also Harrods Limited v. Brad Shaw, WIPO Case No. D2004-0411, where the [p]anel held that “The [d]omain [n]ame consists of the word HARRODS plus a hyphen and the generic term ’poker’. The latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark”.

The addition of a generic top level domain name (gTLD), “.net”, to the disputed domain name does not constitute an element in the disputed domain name so as to avoid confusing similarity. See The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known and well-established registered trademarks CHEYNE CAPITAL and CHEYNE, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights in and prior commercial use of the same. The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- whether there is any evidence of 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;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

There is no evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known and well-established registered trademarks CHEYNE CAPITAL and CHEYNE. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known registered trademarks CHEYNE CAPITAL and CHEYNE inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its services (see further on this point below). Further, the Panel finds that the Respondent is consequentially tarnishing the Complainant’s well-known and, therefore, valuable registered trademarks CHEYNE CAPITAL and CHEYNE and also the valuable goodwill that the Complainant has established in these trademarks through prior commercial use of the same, sufficient evidence of which has been provided to the Panel as mentioned above, without any right or legal justification for doing so.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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] web site or location or of a product or service on [its] web site or location.”

Based on the record, the Panel considers that the Respondent, by registering the disputed domain name, is trading unfairly on the Complainant’s valuable goodwill established in its well-known and well-established registered trademarks CHEYNE CAPITAL and CHEYNE.

By registering and using the disputed domain name incorporating the well-known and well-established registered trademarks CHEYNE CAPITAL and CHEYNE, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Furthermore, see also Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.

Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record of the case file, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name, which incorporates the Complainant’s well-known and well-established registered trademarks CHEYNE CAPITAL and CHEYNE, by chance, but on the basis of being aware of the notoriety of the Complainant‘s trademarks and its business activities in the financial services industry. Indeed, this reasonable inference is strengthened by the fact that the disputed domain name also incorporates the descriptor “capital”. This, in the view of the Panel, is a further indication of bad faith on the part of the Respondent.

Also, the Panel agrees with the Complainant’s contentions that the Respondent's use of the disputed domain name by redirecting Internet users interested in the Complainant's services to its own website for presumed commercial gain, not only does not constitute legitimate noncommercial or fair use; but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd./Mr.Cartwright, WIPO Case No. D2007-0267.

Further, as mentioned above, the failure of the Respondent to answer the cease-and-desist letters, mentioned above, sent on behalf of the Complainant by its representatives to the Respondent, also suggests bad faith on the part of the Respondent. See America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460 and the UDRP cases therein cited.

Finally, the failure also of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Therefore, taking all these particular facts and circumstances into account and for all the above mentioned reasons, as well as those advanced by the Complainant in its contentions, including the disruption by the Respondent of the Complainant’s business (contrary to the provisions of Paragraph 4(b)(iii) of the Policy), as set out above and supported by previous WIPO UDRP cases cited by the Complainant, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

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 <cheyne-capital.net> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist
Dated: December 19, 2011

 

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