World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lion Capital LLP v. Lion Capital Overseas, Ltd./Emmanuel John

Case No. D2012-1928

1. The Parties

The Complainant is Lion Capital LLP of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by SJ Berwin LLP, UK.

The Respondent is Lion Capital Overseas, Ltd./ Emmanuel John of Luxembourg, Luxembourg.

2. The Domain Name and Registrar

The disputed domain name <lionoverseas.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2012. On October 1, 2012, 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 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 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2012. On October 30, 2012, the Center extended the deadline of the due date for Response until November 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2012.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 16, 2012. 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

According to the Complaint, the Complainant was founded in June 2004 as HM (EU) Partners LLP and subsequently changed its name in May 2005 to Lion Capital LLP. The company is incorporated under the laws of England and Wales. The Complainant is a private equity investment firm.

The Complainant owns or has applied for the trademarks LION, LION CAPITAL and LION (& design) in several countries and regions including Argentina, Australia, Bahrain, Canada, Cayman Islands Overseas Territory of the United Kingdom of Great Britain and Northern Island, Chile, China, Colombia, the European Union, Ecuador, Germany, Hong Kong, SAR of China, Iceland, Israel, Japan, Monaco, Morocco, Myanmar, New Zealand, Norway, Panama, Peru, Republic of Korea, Russian Federation, Singapore, South Africa, Sri Lanka, Switzerland, United Kingdom, United States of America and Uruguay.

The disputed domain name was registered on January 29, 2010, and currently does not resolve to an active website.

5. Parties’ Contentions

A. The Complainant

The Complainant instructed a company called Farncombe International Limited to investigate and contact the Respondent and find out about its activities. Such company produced two reports (the “Farncombe reports”).

From the two reports the Complainant obtained the following evidence: a) there is no company called Lion Capital Overseas Ltd. anywhere in the world, b) searches of official Luxembourg company records located no listings for a business called Lion Capital Overseas, or any business whose director was called Emmanuel John, c) an online profile of an individual called Mr. Nurdin indicated that he was the owner of a company called Lion Overseas with a website at “www.lionoverseas.com” with the same logo of a lion previously available on the disputed domain name, d) an advertisement posted on an Indonesian job search site on April 2011 featured the same logo under the heading Pt. Lion Capital Indonesia; the advertisement contact name is […] Kaunang, e) Farncombe spoke with a person from Pt. Lion Capital Indonesia who noted that Lion Overseas was a previous holding company of Pt. Lion Capital Indonesia but that “their contract with them has ended”. Mr. Kaunang was also contacted and he noted that “We stand now with the name Global Artha Futures”, f) Farncombe sent three (3) emails to the operator of the website at “www.lionoverseas.com” but they were not opened, and g) none of the three companies that shared an address in Luxembourg with the given address on the “www.lionoverseas.com” website have heard of Lion Capital Overseas.

A second report prepared also by Farncombe stated that the investigation company spoke with a receptionist who answered a Luxembourg telephone number that had previously gone unanswered. The receptionist told Farncombe that Lion Capital was represented in Luxembourg but went on to say that she was only a receptionist who answered phones on behalf of several companies. She provided a contact email, but no answer was received from that email.

The Complainant states that the disputed domain name is confusingly similar to the Complainant registered trademarks. The disputed domain name incorporates the “lion” component of the trademark, thereby reproducing the subject of the Complainant’s trademarks.

The Complainant argues that the term “overseas” in the disputed domain name is descriptive and does nothing to deflect the impact of the trademark in the Internet users. According to the Complaint, no distinguishing feature is added by the word “overseas” for trademark purposes. In the financial services industry whereby the Complainant operates, it is usual for companies to operate internationally.

Because the Complainant operates in the UK, Europe and internationally, the word “overseas” only adds confusion as Internet users could easily misapprehend the disputed domain name as belonging to or being connected with the Complainant’s and relating specifically to activities carried out by the Complainant overseas, particularly given that both the Complainant website and the disputed domain name relates to financial services and investments. Furthermore, the Complaint states that Complainant has a subsidiary in the United States called Lion Capital (Americas) Inc. based in New York and consumers may mistakenly believe that the disputed domain name belongs to another similarly named subsidiary.

The Complainant adds that the content of the disputed domain name also is a pointer of how Internet users would perceive the disputed domain name. The Complainant states that the Respondent uses the name Lion Capital Inc. with the design of a Lion in the disputed domain name.

The Complainant states that Respondent does not have rights or legitimate interests in the disputed domain name. The Farncombe report demonstrates that no company with the Respondent name owns any international, community or Benelux trademark registration. The Complainant has not licensed or authorized to use the term “lion” in the disputed domain name. According to the Farncombe report prepared for the Complainant, there is no record of any company called Lion Capital Overseas Ltd. Finally, there is no evidence that the Respondent is commonly known by the disputed domain name.

With respect to bad faith registration and use, the Complainant relies in all the above mentioned issues stating that the disputed domain name is confusingly similar to the Complainant’s LION trademarks and the Respondent’s absence of rights or legitimate interests in the disputed domain name.

The Complainant asserts that the mentioned facts and matters established that the Respondent has in accordance with paragraph 4(b)(iv) of the Policy registered and used the disputed domain name intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant trademarks as to source, sponsorship or endorsement.

The Respondent’s website contains the logo of a lion with the words “lion capital”, which appear in the same or very similar typeface used by the Complainant. According to the Complaint, the logo is highly similar to the Complainant registered figurative trademark. According to the Complainant, the Respondent is taking unfair advantage of the Complainant reputation and goodwill in the Complainant’s trademarks. The use of a lion logo on the website in relation to financial services by the Respondent leads consumers to believe that the Respondent’s website is associated with or in some way connected to the Complainant.

The Complainant states that at the time of registering the disputed domain name on January 29, 2010, the Respondent was or should have been aware of the trademarks due to the Complainant worldwide reputation and presence on the Internet. This is clearly the case considering the fact that the Respondent’s company name is highly similar to the Complainants. In addition a mere Internet search carried out by the Respondent would have revealed details of the Complainant.

The Complainant cites the Respondent’s content in the disputed domain name and contends that the Respondent claims to operate from Luxembourg whereas a number of the Complainant’s portfolio investments are held through Luxembourg holding structures, the names of nearly all of which begin with “Lion”. According to the Complainant, these further similarities indicate that the Respondent has sought to create a link with the Complainant through the content presented on the website to which the disputed domain name resolves.

The Complainant states there is no business called Lion Capital Overseas and no online details of any offices of Lion Capital Overseas in Luxembourg, London, Geneva, or Paris, as claimed in the Respondent’s website. Attempts to contact the Respondent never worked and the companies using Respondent’s address never heard of the Respondent. From this Complainant derives that the Respondent is hiding its identity, which in itself is indicative of bad faith.

Finally the Complainant points out that all the information located under the tabs across the top of the Respondent’s website are identical. Thus according to the Complaint it does not appear that the disputed domain name is put to genuine use, indicating this the bad faith of the Respondent when registering and using the disputed domain name.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), Complainants must prove that:

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

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

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

In the administrative proceeding, the Complainant must prove that each three of these elements are present.

A. Identical or Confusingly Similar

The Complainant owns trademark rights over the terms LION CAPITAL and LION. In addition the Complainant owns trademarks over the figurative mark of a stylized Lion.

The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name to determine likelihood of Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the disputed domain name.

In this sense, the Panel believes that the disputed domain name is confusingly similar to the trademark LION as the disputed domain name wholly incorporates the Complainant’s mark. The addition of the term ”overseas” in the disputed domain name does not change this conclusion in the Panel’s opinion because it is a generic term.

In the Panel's view, the disputed domain name is sufficiently proximate, both visually and phonetically, as to be confusingly similar to the Complainant's trademark.

The Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The following are examples of circumstances where a respondent may have rights or legitimate interests in a contested domain name:

“(i) before any notice to you of the dispute, your 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).

Once a prima facie case has been made, it is the Respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the Complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Respondent is in default. Therefore, the Respondent has not submitted any evidence showing that the Respondent has been commonly known as the disputed domain name. However, the Panel has carefully examined the record of the case and the two reports attached to the complaint prepared by Francombe.

In relation to the existence and activity of the Respondent under the name “Lion Overseas Ltd.” or “Pt. Lion Capital Indonesia” the Panel notes that:

- An online profile of an individual indicated that he was the owner of a company called Lion Overseas with a website at “www.lionoverseas.com” with the same logo of a lion previously available on the disputed domain name;

- An advertisement posted on an Indonesian job search site on April 2011 featured the same logo under the heading Pt. Lion Capital Indonesia;

- Farncombe spoke with a person from Pt. Lion Capital Indonesia who noted that Lion Overseas was a previous holding company of Pt. Lion Capital Indonesia but that they have changed their name;

- The same person noted that now they operate under the name Global Artha Futures;

- The Panel visited the website of Global Artha Futures (available at “www.gaf.co.id/”) and was able to verify that the website offers an online platform with similar references to the ones available at the disputed domain name;

- A receptionist who answered a Luxembourg telephone number told Farncombe that Lion Capital was represented in Luxembourg but went on to say that she was only a receptionist who answered phones on behalf of several companies. She provided a contact email, but no answer was received from that email.

In addition, the Panel visited “www.archive.org1” and was able to check that the disputed domain name had activity since the year 2004. On March 25, 20042 the disputed domain name had a legend with the term “Welcome ... Lion Overseas Trading Company”, and a login page with the legend “Copyright © Lion Overseas Trading Company”. The same legend was available in the year 2005. The Panel notes that Complainant was incorporated in June 2004 as HM (EU) Partners LLP and it subsequently changed its name in May 2005 to its current name Lion Capital LLP.

On “www.archive.org” there is a gap3 until the year 2010. In July 2010 an Internet user visiting the disputed domain name would have found the web page cited by Complainant with the mention of Lion Capital Overseas Ltd. instead of Lion Overseas Trading Company.

It is thus conceivable on the record, and further supported by the Panel’s research that before notice of these proceedings over the disputed domain name, the Respondent had made use or has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services (see Policy, paragraph 4(c)(i)).

On the record the Panel is not able to say in certainty whether or not the Respondent has a right or legitimate interest in respect of the Domain Name but on the balance of probabilities it is not possible to affirm that Respondent is or was a fake company. Since the overall burden of proof rests on the Complainant, it follows that this requirement of the UDRP has not been satisfied to the Panel. The point is, in any event, academic in view of the Panel’s finding below on bad faith registration.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

Each of those circumstances requires, or implies, that a Respondent must have known, or ought to have known, of a Complainant’s rights. The Panel finds on the balance of probabilities that the Respondent did not had such knowledge.

In addition, the Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must establish and prove each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent's default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding (see paragraph 4.6 of WIPO Overview 2.0).

The Complainant has failed to prove its case because there is no compelling evidence showing the Respondent’s bad faith registration of the disputed domain name.

First, the Complainant cannot rely on the first two prongs of the Policy to demonstrate bad faith registration. The bad faith element needs to be demonstrated by any of the examples enumerated on paragraph 4(b) of the Policy, or other circumstances.

The Complainant mentions but fails to offer evidence that the Respondent intentionally attempted to attract Internet users based on the trademark value of the Complainant’s mark thereby indicating bad faith registration. On the record in this case, the Panel sees no evidence that the disputed domain name was registered nor used for such purpose.

The consensus view is that the general standard of proof under the UDRP is "on balance" - often expressed as the "balance of probabilities" or "preponderance of the evidence" standard. Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true. Conclusory statements unsupported by evidence which merely repeat or paraphrase the criteria or scenarios under paragraphs 4(b) of the UDRP would typically be insufficient (see, paragraph 4.7, WIPO Overview 2.0).

The record shows that there existed at some point an entity called Lion Overseas. In the first Francombe report, it is noted that the investigator spoke with a person from Pt. Lion Capital Indonesia who stated that Lion Overseas was a previous holding company of Pt. Lion Capital Indonesia but that “their contract with them has ended”. Another individual was also contacted and he noted that “We stand now with the name Global Artha Futures”. The report also mentions that the disputed domain name provided updated third party data feeds giving updated financial news, specially Forex, CFD and Futures trading information. There was also an online trading platform, including an online downloadable software that was a client terminal for Forex, CFD and Futures trading, published by MetaQuotes Software Corp.

The Panel visited the website of Global Artha Futures (available at “www.gaf.co.id/”) and was able to check that the website offers an online platform with similar references to the ones available at the disputed domain name.

From the record it is not possible to conclude if Lion Capital Overseas was a fake entity or if it was operating under a tradename. Lion Overseas may have existed as a holding company of some other company located in Indonesia or even if it was not incorporated, it seems to have certain activity under such name. The "balance of probabilities" does not favor the Complainant’s case under these circumstances.

Currently the disputed domain name is not operating but the screenshots attached to the Complaint shows a site devoted to online trading. The disputed domain name was active at that time. There is no way to know why the disputed domain name is not active now, and why it was deactivated. According to the available evidence, if the entity Lion Overseas existed, then it may have registered in good faith the disputed domain name <lionoverseas.com>.

The Complainant states that at the time of registering the disputed domain name on January 29, 2010, Respondent was or should have been aware of the trademarks due to the Complainant’s worldwide reputation and presence on the Internet. The Complainant states that this is clearly the case considering the fact that the Respondent’s company name is highly similar to the Complainant.

The registration of the disputed domain name can only be regarded as in bad faith where the Respondent knew or should have known that the disputed domain name contained a distinctive and well-known trademark which has been used on a substantial scale and hence that such use would be liable to divert Internet users seeking a website of the owner of the trademark. But every plaintiff in an infringement action must prove as an affirmative aspect of his case that his mark has commercial recognition at the date of the infringement; a Complainant under the Policy may do so to show that the Respondent was aware of the trademark and thus the disputed domain name was registered in bad faith. In these circumstances no favorable inference can be justified from a naked allegation of a legal conclusion (the allegedly worldwide reputation of the Complainant’s trademark), even in the absence of a denial from the Respondent.

The Complainant cites the Respondent’s content in the website at the disputed domain name and contends that the Respondent claims to operate from Luxembourg whereas a number of the Complainant’s portfolio investments are held through Luxembourg holding structures, the names of nearly all of which begin with “Lion”. According to the Complainant, these further similarities indicate that the Respondent has sought to create a link with the Complainant through the content presented on the website to which the disputed domain name resolves.

It is difficult for this Panel to see how the Complainant’s holding structures in Luxembourg may be used to create a link to the Complainant’s goodwill. Again, it is not credible to the Panel that the Respondent had in mind such holding structures in Luxembourg when registering the disputed domain name and providing content to the website.

Finally the Complainant states that the Respondent logo is highly similar to the Complainant registered figurative trademark and the Respondent is taking unfair advantage of the Complainant reputation and goodwill in the Complainant trademarks because the use of a lion logo on the website in relation to financial services by the Respondent leads consumers to believe that the Respondent’s website is associated with or in some way connected to the Complainant.

The Panel disagrees. Both logos represent a lion, but they are different designs of the figure of a lion. A trademark owner who registers the figure or device of a lion with a certain design does not own trademark rights over every design of a lion. The lions of both designs are quite different as it can be seen in both websites and thus it is not possible to consider the adoption of a lion design as an element of bad faith in this case.

Apart from what is mentioned above, the Panel takes into consideration the following circumstances:

- It is the view of this Panel that despite being in the financial services industry, the Complainant’s activities and the disputed domain name activities seem to be different. As stated, the Complainant is a private equity firm offering services of investments in mid and large-sized, consumer-oriented businesses in Europe and North America and it describes itself as a recognized leader in investing in consumer businesses. The Respondent’s website seems to be (or have been) an online stock trading and futures company.

- There is no material evidence before the Panel to indicate that the Respondent has attempted to profit from confusion between the Complainant’s mark and the disputed domain name. There appears to be no advertising, nor pay per click uses of the disputed domain name, beyond reference to the Respondent’s own products.

- Currently the disputed domain name is not operating. There is no way to know why the disputed domain name is not active now, and why and when it was deactivated.

- Passive holding of the domain name was not argued by the Complainant.

- The Panel notes there appears to be no evidence of any offer by the Respondent to sell the disputed domain name to the Complainant, or of any pattern or history indicating bad faith registration of domain names on behalf of the Respondent (either Lion Capital Overseas Ltd or Emmanuel John).

In this case, the evidence does not show that the Respondent knew or should have known that the disputed domain name reflected part of the Complainant’s trademark. In these circumstances, the Complainant has not proved registration and use in bad faith. Therefore, the third requirement of the UDRP has not been satisfied and the Complaint must therefore be rejected.

Additionally, while the disputed domain name does not appear to involve a clear case of cybersquatting that the Policy was designed to address, naturally this decision is wholly without prejudice of any recourse to Trademark Law and the jurisdictions where the Complainant may choose to pursue legal actions.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Pablo A. Palazzi
Sole Panelist
Date: December 6, 2012


1 A panel may undertake limited factual research into matters of public record (See WIPO Overview 2.0, paragraph 4.5).

2 http://web.archive.org/web/20040325023127/http://lionoverseas.com/

3 http://wayback.archive.org/web/*/http://lionoverseas.com

 

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