WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Argenta Spaarbank NV v. Barbara Lesimple / Argenthal Private Capital Limited
Case No. D2015-0467
1. The Parties
The Complainant is Argenta Spaarbank NV of Antwerpen, Belgium, represented by Baker & McKenzie CVBA, Belgium.
The Respondent is Barbara Lesimple / Argenthal Private Capital Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by F J Cleveland LLP, UK.
2. The Domain Name and Registrar
The disputed domain name <argenthal.com> is registered with Gandi SAS (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2015. On March 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2015, 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 23, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email communication to the Complainant regarding the language of the proceeding since the Complaint was submitted in English but, according to the information received from the concerned registrar, the language of the registration agreement for the disputed domain name was French. The Complainant was thus requested to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into French; or 3) submit a request for English to be the language of the administrative proceedings.
The Complainant filed an amended Complaint on March 26, 2015, indicating the registrar-disclosed information of the Respondent and requesting that the proceedings be conducted in English.
On March 27, 2015, the Respondent’s representative wrote an email communication to the Center confirming its agreement on the adoption of English as the language of the proceedings.
The Center verified that the Complaint together with the amended 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 March 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2015. The Response was filed with the Center on April 17, 2015.
The Center appointed Luca Barbero as the sole panelist in this matter on May 22, 2015. 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 belongs to the Argenta banking & insurance group, which has been present and active in Belgium since 1956, in Luxembourg since 1987, and in The Netherlands since 1989.
The Complainant is the owner of the Community Trademark No. 280354 for ARGENTA, filed on June 13, 1996, and registered on March 31, 2004, for “insurance and finance” in class 36.
The Complainant operates a web site at “www.argenta.be”, registered on May 30, 1996.
The disputed domain name <argenthal.com> was registered on March 26, 2008, and points to a web site offering financial services.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <argenthal.com> is phonetically and visually identical, or at least highly visually and phonetically similar, to the Complainant’s mark. It highlights that the disputed domain name and the Complainant’s trademark share the same prefix “argen” and a common element in the suffix, as they both include the two letters “ta”.
The Complainant also contends that the disputed domain name is conceptually identical or similar to its trademark, as both signs include the word “argent”.
With reference to the Respondent’s lack of rights or legitimate interests in the disputed domain name, the Complainant asserts that:
i) the Respondent has not used the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services;
ii) the disputed domain name is used by two UK competitors of the Complainant, Argenthal & Co Limited and Argenthal Private Capital Limited;
iii) the Respondent has not been commonly known by the disputed domain name and has no trademark or service mark rights;
iv) the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use.
The Complainant argues that the true or underlying registrant of the disputed domain name, the UK company Argenthal Private Capital Limited, has applied for registration, in the UK and as a Community Trademark, of the sign ARGENTHAL, but has voluntarily withdrawn and surrendered these applications and registrations following various oppositions initiated by the Complainant before the competent Trademark Offices (United Kingdom Intellectual Property Office “UKIPO” and Office for Harmonization in the Internal Market “OHIM”).
The Complainant also informs the Panel that it has on numerous occasions proposed a co-existence with the Respondent by way of an amicable settlement, which the company has consistently ignored.
With reference to the circumstances evidencing bad faith, the Complainant states that the Respondent knew or should have known the Complainant’s well-known trademark, being active in the same industry sector. It also states that the Respondent has provided, and failed to correct, false address information in the WhoIs records, since the named registrant seems to have resigned since 2009 from the company Argenthal & Co Limited and the true underlying registrants Argenthal & Co Limited and Argenthal Private Capital Limited are concealed in the public WhoIs records through a privacy service.
As to the use of the disputed domain name, the Complainant contends that the underlying registrants are intentionally attempting to attract, for commercial gain, Internet users to their web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the site or a product or service on the site. In particular, the Complainant alleges that the services provided by the Respondent are identical or very similar to its own insurance and financial services. The Complainant concludes that, due to the identical and/or high similarity of the services, their nature, method of use, purpose, trade channels, and users, confusion is inevitable and the relevant consumer would consider that the services come from the same undertaking or economically linked undertakings.
The Respondent informs the Panel that Argenthal Private Capital Limited is the parent company of a group of operating companies including Argenthal & Co. Limited in the UK, Argenthal & Co Inc. in the United States of America (“US”), Argethal Investment Partners LLP in the UK and Argenthal Capital Gmbh in Germany, all carrying out their activities under the name “Argenthal”.
The Respondent asserts that it is an investment and advisory firm focused on the private funds industry and that it acts as a holistic strategic partner for private fund managers, not targeting the general consumer market. It also states that the company Argenthal & Co. Limited is authorized and regulated by the Financial Conduct Authority in the UK, while Argenthal & Co Inc. is a broker dealer licensed by FINRA and SIPC in the US.
The Respondent submits that Argenthal Private Capital Limited should be deemed to be the Respondent in this proceeding and confirms that, as indicated by the Complainant, Ms. Barbara Lesimple was a director of Argenthal & Co. Limited from February 7, 2007 to December 1, 2009, as well as director of Argenthal Private Capital Limited from February 12, 2007 to July 31, 2011. It also states that Ms. Lesimple is the wife of the founder of Argenthal Private Capital Limited.
Therefore, Ms. Lesimple was a director of the two companies at the time of the registration of the disputed domain name, on March 26, 2008. The Respondent states that, however, the beneficial owner of the disputed domain name has always been Argenthal Private Capital Limited, which has operated, run and paid the fees of the disputed domain name since the registration.
The Respondent concludes that, since the Complainant also considers Argenthal Private Capital Limited as the true and underlying registrant of the disputed domain name, the Complainant should have no objection in deeming said company as the Respondent in this proceeding.
The Respondent denies the confusing similarity of the disputed domain name with the Complainant’s trademark, stating that ARGENTA is not a particularly distinctive mark, especially for financial services. The Respondent also highlights that “argent” has a dictionary meaning in numerous European languages and is used by many other businesses.
The Respondent explains that it adopted the name Argenthal Private Capital Limited on March 24, 2009, and that it had applied for the UK trademark No. 2592441 for ARGENTHAL on August 24, 2011, which matured to registration on December 2, 2011. The Respondent indicates that it also applied a trademark for ARGENTHAL in stylized form on March 22, 2013.
The Respondent underlines that it first received notice of a possible dispute with the Complainant through the Complainant’s letter dated July 4, 2013, and states that, at that time:
- it had owned the disputed domain name for over 5 years;
- it had been trading under the registered company name Argenthal Private Capital Limited for over 4 years; and
- it had secured a registration for ARGENTHAL in the United Kingdom and been trading under this registered trademark for 16 months.
In view of the above, the Respondent points out that the Respondent was using the disputed domain name in connection with a bona fide offering of goods and services prior to receiving notice of the dispute.
The Respondent also contends that the Respondent is commonly known by the disputed domain name, as the Respondent has been legitimately trading under the disputed domain name for many years, is regulated by the relevant government financial services authorities, has numerous registered companies incorporating the name “Argenthal”, and has sought and obtained trademark protection for ARGENTHAL.
The Respondent asserts that, following receipt of the Complainant’s letter dated July 4, 2013, it decided to surrendered its registered trademark and withdraw the trademark application as a pragmatic commercial decision, in order to avoid a prolonged and expensive series of actions before the UKIPO and OHIM.
The Respondent states that it was not aware of the Complainant at the time of the registration of the disputed domain name and that the Complainant’s activities appear limited to the Benelux, where the Respondent does not trade.
The Respondent alleges that it chose the name of Argenthal for its business since:
- “Argenthal” is the name of the village in Germany where Ms. Lesimple’s grandparents lived;
- “Argenthal” means “valley of argent” in German and refers to the precious metal, silver, in French, which can also mean “capital”;
- “Argens” is the old French word for “Argent” and also the name of a river which crosses Ms. Lesimple’s husband’s grandparent’s real estate in the south of France.
The Respondent rebuts the Complainant’s contentions as to its bad faith registration and use and states that:
- it is using the disputed domain name in good faith for a legitimate business;
- it has not offered to sell, rent, or otherwise transfer the disputed domain name to the Complainant or any other party;
- the disputed domain name, which is not identical to the Complainant’s trademark, was not registered to prevent the Complainant from securing a domain name corresponding to its trademark;
- the Respondent did not provide false WhoIs information, as the records show the name of Argenthal Private Capital Limited as part of the address and the address given is the registered office of the Respondent;
- the Complainant has not provided evidence to support its view that the Respondent has sought to extract any benefit from confusion with its mark.
6. Discussion and Findings
A. Identification of the proper Respondent
The Complainant, both in the Complaint and in the Amended Complaint, identified as true or underlying registrants the companies Argenthal & Co Limited and Argenthal Private Capital Limited, mentioning that Ms. Lesimple, indicated as the registrant in the WhoIs records, was a director of the first company.
The Registrar for the disputed domain name cites “Argenthal Private Capital” in its disclosure of the registrant information, though the name is listed in the “Registrant Street” field instead of the “Registrant Organization” one.
The Respondent has requested that Argenthal Private Capital Limited be considered as the proper Respondent in this proceeding, highlighting that the company name has actually been indicated in the WhoIs records and that said company i) provided for the payment of the renewal fees of the disputed domain name and ii) actually used the disputed domain name.
In light of the parties’ allegations and of the indications provided in the WhoIs records for the disputed domain name, the Panel determines that Argenthal Private Capital Limited is to be considered the appropriate Respondent in this case. Therefore, any reference to “the Respondent” in this decision shall be intended as referring to Argenthal Private Capital Limited.
B. Language of the proceeding
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
In the case at hand, the language of the Registration Agreement is French. However, the Complaint has been submitted in English, which is the mother language of the Respondent, and the Respondent has consented to the selection of the English language.
In view of the mutual agreement between the parties as to this procedural issue and considering that all the documents have been submitted by the Parties in English, the Panel determines that the language of the proceedings be English.
C. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has provided evidence of a Community Trademark registration for ARGENTA.
As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold 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 domain name.
The Panel finds that the disputed domain name <argenthal.com> and the Complainant’s trademark ARGENTA are visually and phonetically similar, since they have the same prefix “argen” and the common element “ta” in the suffix, and the addition of the letters “h” and “l” in the disputed domain name is not sufficient to exclude the likelihood of confusion.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(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.”
It is established in paragraph 4(a) of the Policy that the Complainant has the burden of proof. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with previous UDRP decisions, it is well-established that it is sufficient that the Complainant make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
Based on the evidence on the record, including excerpts from the UK Financial Services Register regarding Argenthal & Co Limited and copies of abbreviated accounts of Argenthal Private Capital Limited, the Panel is satisfied that the Respondent and its subsidiaries have been operating in the financial sector since 2009 under trade names including the name “Argenthal”.
As highlighted in the paragraphs above, the Respondent also filed, and successfully registered, the trademark ARGENTHAL in the UK in 2011 and, only after receipt of a cease-and-desist letter from the Complainant on July 4, 2013, surrendered this registration and withdrew the additional trademark application for ARGENTHAL (figurative mark) in the UK that it had filed in March 2013.
In view of the circumstances of the case, considering the evidence provided as to the use of the sign ARGENTHAL in connection with the Respondent’s financial services, and in light of the fact that no evidence has been submitted by the Complainant in the present proceeding to demonstrate its actual use of the mark ARGENTA in connection with financial services in the UK, where the Respondent is based, or of the possible confusion or deception caused by the Respondent’s use of the disputed domain name, the Panel finds that the Complainant has not discharged its burden of proving the Respondent’s lack of any right or legitimate interest in the disputed domain name. Based on the evidence in the case record, the Panel finds that the Respondent has, at least, demonstrated that it is commonly known by a name substantially corresponding to the disputed domain name.
The Panels also notes that this is not the venue to assess the validity of the trademarks on which the parties rely and that a Court proceeding would be appropriate to deal with this kind of issues.
Thus, in light of the above, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrate that the disputed domain name has been registered and is being used in bad faith.
As highlighted above, the filing date of the Complainant’s Community Trademark (June 13, 1996) predates by several years the registration date of the disputed domain name, which occurred on March 26, 2008.
However, in the Panel’s view, the Complainant has not submitted sufficient elements that could demonstrate the Respondent’s possible or actual knowledge of the Complainant’s trademark until the sending of the Complainant’s cease-and-desist letter. Rather, the Panel notes that the Complainant has not provided any evidence to demonstrate its actual use of the mark ARGENTA in connection with financial services in the UK, where the Respondent is based.
Moreover, the Panel finds that no convincing evidence has been submitted as to the fact that the Respondent, by registering and using the disputed domain name, might have targeted the Complainant and its mark to misleadingly divert and attract users looking for the Complainant and its services.
In view of the above, the Panel finds that the Complainant has also failed to prove that the disputed domain name has been registered and used in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: June 5, 2015