WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NUVEEN v. Private Registration

Case No. D2017-0453

1. The Parties

The Complainant is NUVEEN of Chicago, Illinois, United States of America ("United States" or "US"), represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Private Registration of St Kilda South, Victoria, Australia.

2. The Domain Names and Registrar

The disputed domain names <nuveen-realestate.com>, <nuveenrealestate.com>, and <nuveenre.com> are registered with Crazy Domains FZ-LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 6, 2017. On March 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 7, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2017. On April 7, 2017, the Center received an informal email communication. On April 7, 2017, the Center notified the Parties that panel appointment would commence.

The Center appointed Mihaela Maravela as the sole panelist in this matter on April 18, 2017. 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 NUVEEN, formerly Nuveen Investments, a company founded in 1898 in Chicago in the assets management industry. Nuveen Investments began as John Nuveen & Company, when founder John Nuveen, Sr. created the firm as an investment banking company specializing in the underwriting and distribution of municipal bonds. Nuveen now represents approximately USD 890 billion in assets under management. Nuveen operates globally with offices across the Americas, the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), continental Europe and Asia Pacific. The Complainant's main corporate website is available at "www.nuveen.com". The Complainant is the owner of several domain names in the term NUVEEN and according to Google search engine results the term NUVEEN is associated with the Complainant.

The Complainant adduced evidence of trademark registrations that include:

- Australian trademark registered under no. 780627 NUVEEN (world mark) from December 9, 1998,

- US trademark registered under no. 2313480 NUVEEN on February 1, 2000,

- Swiss trademark registered under no. P-463017 NUVEEN (world mark) entered on the trademark register on July 15, 1999.

The disputed domain names were registered on January 25, 2017 and at the date the Complaint was filed, they resolved to identical websites with the following words displayed: "THIS DOMAIN IS FOR SALE contact […]@[…].com".

5. Parties' Contentions

A. Complainant

The Complainant argues that the disputed domain names are identical or confusingly similar to the trademark in which it has rights since the disputed domain names only differ from the Complainant's NUVEEN trademark by the addition of the generic terms "realestate", "-realestate", or the corresponding acronym for real estate: "re", which reinforce the association of the Complainant's trademark with one of its business activities and thus exacerbates the likelihood of confusion.

Further, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names, the Respondent is not a licensee of the Complainant, nor has it been otherwise authorized or allowed by the Complainant to make any use of its NUVEEN trademark, in domain name or otherwise. The disputed domain names are confusingly similar to the Complainant's trademark and resolve to websites with a very minimal content with the exclusive and clear purpose of selling the disputed domain names. The Complainant argues that the Respondent cannot claim that it is commonly known by the Complainant's trademark given the notoriety surrounding the NUVEEN trademark and the fact that it is exclusively associated with the Complainant, especially when describing financial services, asset management and real estate.

The Complainant also argues that the disputed domain names were registered and are being used in bad faith since the Complainant's NUVEEN trademark is highly distinctive and well known throughout the world and significantly predates the registration of the disputed domain names in early 2017. The Respondent's use of the disputed domain names, which specifically target the Complainant, to resolve to a webpage which sole purpose is to openly and expressly offer the disputed domain names for sale, cannot be considered to be in good faith, quite the opposite in fact, as the Respondent is precisely seeking to unduly take advantage of the Complainant's rights for his own financial gain and to the Complainant's detriment. The fact that the Respondent concealed its identity by means of a privacy protection service is an additional indication of the Respondent's bad faith and its intent to use the disputed domain names is a way which may be abusive or otherwise detrimental to the Complainant and its rights.

B. Respondent

The Respondent did not reply to the Complainant's contentious; however, the Center received an email communication on April 7, 2017 indicating that "the three domains were deleted on March 17 2016 from my crazy domains account".

6. Discussion and Findings

Noting the fact that the Respondent has not filed a formal response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

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

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

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

A. Identical or Confusingly Similar

The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Here, the Complainant has demonstrated its ownership of trademark in NUVEEN mentioned above.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain names with the Complainant's trademarks.

UDRP panels treat the first element of a UDRP complaint as a standing requirement, which simply requires "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name"; some panels refer as well to the "overall impression" created by the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.

Numerous UDRP decisions have recognized that incorporating a mark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. (See Aldermore Bank Plc v. Hildegard Gruener, WIPOCase No. D2016-1617).

Here the disputed domain names incorporate the trademark NUVEEN of the Complainant, followed in each case by a generic terms pertaining to the Complainant's activity ("realestate", "-realestate" and "re", recognised as an acronym for real estate), with the addition of the generic Top-Level Domain ("gTLD") suffix ".com".

As held by previous UDRP panels in similar cases, the addition of the dictionary terms mentioned above within the disputed domain names does not dispel any confusing similarity between the disputed domain names and the Complainant's trademark (see CSX IA, Inc. v. Registrant [190789]: International Domain Names Inc / Registrant [342918], Moniker Privacy Services, WIPO Case No. D2007-0612: "The mere addition of the generic words "real estate" following the trademark does not eliminate the similarity between the Complainant's marks and the disputed domain name, as "real estate" is a common term for services also offered by the Complainant. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words"; The Bonita Bay Group, Inc. et al. v. Total Concept, Inc., WIPO Case No. D2003-0126: "Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." The Sole Panelist finds that the phrases "real estate," "estates," "rentals," "condos," and "fsbo" are descriptive and non-distinctive." (citation omitted)).

Moreover, the addition of the dictionary term "real estate" in two of the disputed domain names and the acronym for real estate, "re" in the third disputed domain name reinforces the association with the Complainant trademark given that the activities of the Complainant include offering of services in the real estate area. For a similar finding see Elders Limited v. Domain Administration Limited/ David Halstead, WIPO Case No. D2007-1026: "The domain name in issue is clearly very similar to the trademarks of the Complainant. It uses the mark ELDERS in its entirety. It does however also include a generic term "realestate". But given the Complainant's sphere of activity, which includes real estate…[i]ts inclusion may strengthen in the mind of the Internet user the possibility if not likelihood of the owner of the domain name in fact being the owner of the mark to which it is similar, or some form of association between the Respondent and the Complainant."

It is well accepted by UDRP panels that a gTLD, such as ".com", is typically ignored when assessing whether the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.

The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent's rights or legitimate interests in a disputed domain name:

(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in WIPO Overview 2.0, paragraph 2.1, which states: "[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]".

In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has established that it is the owner of the trademark NUVEEN, and claims that the Complainant has it not licenced or otherwise authorised the Respondent to use the said trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain names or the name "nuveen". See, e.g., ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.

By not submitting a formal Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain names. See, e.g., Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839.

The Panel therefore finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain names have been registered and are being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain names' registration and use in bad faith.

The fact that the disputed domain names are confusingly similar with the Complainant's trademarks and that the said trademarks have been used for a long period of time prior to the registration of the disputed domain names indicate not only that the Respondent was aware of the Complainant's business and trademark at the time of registration, but also that it registered the disputed domain names to mislead Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant's services.

The Complainant's NUVEEN trademark, included in the disputed domain names, has been used in commerce for almost 20 years prior to the registration of the disputed domain names, such that it is unlikely that the Respondent was unaware of the Complainant's rights when it registered the disputed domain names. See Comerica Bank v. WhoisGuard Protected, WhoisGuard, Inc. / Ryan Murray, WIPO Case No. D2016-0062.

The Respondent provided no explanations for why it registered the disputed domain names.

The Respondent has, to date, failed to make any genuine use of the disputed domain names. The absence of any bona fide use of the domain names at the very least results in a failure to rebut the inference noted above. See, e.g., Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186.

At the date of the Complaint each of the disputed domain names resolved to identical websites with the following words displayed: "THIS DOMAIN IS FOR SALE contact […]@[…].com".

This Panel agrees with the findings in similar cases where panels have held that "The language at such site – "This domain is for sale" – clearly suggests that Respondent registered the domain name primarily for the purpose of selling it to Complainant or to one of its competitors for valuable consideration in excess of Respondent's out-of-pocket expenses" (Royal Bank of Canada v. Namegiant.com, WIPO Case No. D2004-0642), or that "The Panel also notes that Respondent is also listed as "This Domain is For Sale" and Respondent provides a direct link for making an offer. The record further indicates that Respondent is in the business of purchasing and reselling domain names. This in itself is not bad faith, but when a respondent obtains a domain name containing another's trademark, primarily for the purpose of reselling it at a profit, this is a further indication of bad faith" (Primedia Specialty Group Inc. v. This Domain is For Sale, Alan Lam, WIPO Case No. D2007-0789).

Furthermore the Respondent availed of a privacy shield service to protect its identity. While the use of a privacy shield is not in any way objectionable in itself, in the present case it contributes to the accumulation of elements pointing to bad faith registration and use. See Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler, WIPO Case No. D2016-1357.

In the Panel's view these circumstances represent evidence of registration and use in bad faith of the disputed domain names.

Consequently, the Panel ascertains that the disputed domain names were registered and are being used 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 names, <nuveen-realestate.com>, <nuveenrealestate.com>, and <nuveenre.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: May 2, 2017