WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vitruvian Partners LLP v. Kenneth Ojo, Kenneth Okon

Case No. D2017-2361

1. The Parties

The Complainant is Vitruvian Partners LLP of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Clifford Chance, LLP, United Kingdom.

The Respondents are Kenneth Ojo of Tennessee, United States of America ("United States") / Kenneth Okon of Enugu Enugu, Nigeria.

2. The Domain Names and Registrar

The Disputed Domain Names <vitruvianpartner.com> and <vitruvianpatners.com> are registered with Registrar of Domain Names REG.RU LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 29, 2017. On November 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On December 1, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 6, 2017 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 amended Complaint on December 8, 2017.

The Complaint and the amended Complaint were submitted in the English language. The language of the Registration Agreement for the Disputed domain name is Russian. On December 6, 2017, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding as submitted in the Complaint. The Respondent did not reply to the Center's communication regarding the language of the proceeding or the Complainant's submission.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 10, 2018.

The Center appointed Mariya Koval as the sole panelist in this matter on January 19, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a European private equity firm, incorporated on May 22, 2006, focusing on leveraged buyout and growth capital investments. Vitruvian Partners LLP has three operational headquarters in London, Munich, and Stockholm and has 56 professionals employed.

The Complainant is the owner of two trade mark registrations for VITRUVIAN, used, among others, in connection with financial services, namely US trademark No. 3714038, VITRUVIAN, registered on November 24, 2009 (covering class 36) and European Union trademark No. 005162938, VITRUVIAN, registered on May 24, 2007 (covering class 36).

The Complainant has prior registered (May 17, 2006) and operates the trademark VITRUVIAN as domain name under generic Top-Level Domain ("gTLD") ˂vitruvianpartners.com˃.

According to the current record, the Disputed Domain Names were registered: <vitruvianpatners.com>, on March 17, 2017, <vitruvianpartner.com>, on August 7, 2017.

As at the date of this decision, the Disputed Domain Names do not resolve to any active websites.

5. Parties' Contentions

A. Complainant

The Complainant is of the opinion that the Disputed Domain Names are abusive of the Complainant's VITRUVIAN trademark.

In this connection the Complainant makes the following contentions:

(i) that the Disputed Domain Names are identical or confusingly similar to the Complainant's VITRUVIAN Mark; and

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Disputed Domain Names; and

(iii) that the Disputed Domain Names have been registered and are being used in bad faith.

The Complainant is the owner of the VITRUVIAN mark, having registered its mark in the European Union since 2007 and in the United States since 2009. The Complainant has been using its website "www.vitruvianpartners.com" since 2006 to promote its services and its website is rather popular for attendance: the average annual views for website "www.vitruvianpartners.com" are approximately 23,756 (according to copy of statistics provided by the Complainant).

The Respondents have no rights or legitimate interests in the Disputed Domain Names. The Respondents are not known as either of the Disputed Domain Names. The Respondents do not have any license or authorization from the Complainant to use the VITRUVIAN mark.

The Complainant argues that the Respondents registered the Disputed Domain Names in bad faith, to harm the Complainants' business and goodwill, to mislead recipients into assuming the Disputed Domain Names belong to the Complainant by implying a connection with Vitruvian Partners LLP. The Respondents fraudulently represented themselves to be employees (Mr. Chalk, Mr. Holroyd) of the Vitruvian Partners LLP for fraudulently acquiring confidential information from third parties. For this purpose the Respondents have created fake email addresses with use of the Disputed Domain Names which correspond to the real names of the Complainant's personnel.

The Complainant maintains that the Respondents are a single person and that the details of the Disputed Domain Names provided by the Respondents do not reflect the true ownership of the Disputed Domain Names.

B. Respondents

The Respondents did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Preliminary Issue: Consolidation of the Parties

"Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder" . Section 4.11.1, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").

(a) Consolidation of Respondents

The Complainant submitted a request that the Disputed Domain Names are under common ownership and there is a single Respondent to this Complaint.

It is well-established that a single consolidated complaint may be brought against multiple respondents where "(i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario." Section 4.11.2, WIPO Overview 3.0. The following factors, which have been found to warrant consolidation are: "similarities in or relevant aspects of […] (ii) the registrants' contact information including email address(es)[…] (iii) relevant Internet Protocol ("IP") addresses […] (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>) […] (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s)."

Here, the evidence shows that each of the Disputed Domain Names adopted a common format: Each of the Disputed Domain Names consists of the Complainant's trademark, the words "patners" and "partner". Both Disputed Domain Names have the same generic gTLD ".com". Both Disputed Domain Names are registered with the same Russian Registrar (REG.RU). Further, both websites, to which the Disputed Domain Names direct, are inactive. The Disputed Domain Names <vitruvianpartner.com> and <vitruvianpatners.com> that were registered with REG.RU LLC by Kenneth Ojo and Kenneth Okon respectively, used to be nearly identical.

The Panel finds that taken together, the circumstances of this case clearly indicate that the Disputed Domain Names are subject to common control. Absent any objections from the Respondents, the consolidation is fair and equitable to all of the parties. All references hereafter will be to the "Respondent" in singular form.

B. Language of the proceeding

The Complainant requested that the language of this proceeding be English. Paragraph 11(a) of the Rules provides that: "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."

Because the language of the Registration Agreements for the Disputed Domain Names is Russian, the default language of the administrative proceeding would be Russian. The Complainant argues that it communicates in English, it is an English-registered partnership and has filed a complaint against two ".com" domains and would be prejudiced should it be required to incur additional costs. Further, the Complainant alleges that the Respondent understands English because the Respondent and the Registrar have corresponded in English and the Respondent has prepared legal documents in English. Moreover the Complainant maintains that the Registry operates in both Russian and English and the claimed location of the Respondent is United States of America and Nigeria, the official language of both of which is English.

Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. "Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant's mark, […] (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint [...]". Section 4.5.1, WIPO Overview 3.0.

Here, the evidence shows that on November 21, 2017 the Respondent, claiming to be Mr. Chalk (Vice-President of the Complainant), contacted a third party by email with respect to "investment opportunities". The Respondent included in correspondence with a third party a signed copy of a nondisclosure agreement (hereafter "NDA"). This correspondence along with the NDA were performed by the Respondent in English. Also on September 18, 2017, the Respondent, representing himself as being Mr. Holroyd (Partner of the Complainant), contacted a different third party also with respect to "investment opportunities", and also in English. The Panel finds that the Respondent's emails indicate that the Respondent can read and comprehend English. The evidence also shows that the Center provided the Respondent with an opportunity to comment on or object to the Complainant's language request, but the Respondent failed to do so. Taken together the fact that the Respondent can apparently understand English, that the Respondent had been given a fair chance to object to the language of the proceeding and has not done so, and that forcing the Complainant to translate the Complaint will cause it financial harm as well as delay the proceeding, the Panel grants the Complainant's request for English to be the language of this proceeding.

C. General discussion

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a Disputed Domain Name, a complainant must demonstrate each of the following:

(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

(iii) the disputed Domain Name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, "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."

The Panel is of the opinion that the Complainant's contentions are reasoned and that the Disputed Domain Names should be transferred to the Complainant pursuant to the Policy.

D. Identical or Confusingly Similar

To satisfy paragraph 4(a)(i) of the Policy, the Complainant must show that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

It is uncontroverted that the Complainant has established rights in the VITRUVIAN Mark based on both long use as well as its two trademark registrations in the European Union since 2007 and in the United States since 2009 for the VITRUVIAN Mark.

Each of the Disputed Domain Names <vitruvianpartner.com> and <vitruvianpatners.com> incorporates the Complainant's VITRUVIAN Mark in its entirety. The term "vitruvian" in the Disputed Domain Names is a dominant element which is identical to the Complainant's trademark. At the same time each of the Disputed Domain Names has one omitted letter from the word "partners" which is a part of the Complainant's Company Name: in the Disputed Domain Name <vitruvianpartner.com> the letter "s" has been omitted; in the Disputed Domain Name <vitruvianpatners.com> the letter "r" has been omitted. It is likely that the difference between the Complainant's domain name <vitruvianpartners.com> and the Disputed Domain Names <vitruvianpartner.com> and <vitruvianpatners.com> is very slight and it is rather difficult to note it at once, without close inspection. It can thus be found that the Disputed Domain Names are confusingly similar to the Complainant's VITRUVIAN mark and to the Complainant's Company Name.

Moreover both Disputed Domain Names are phonetically identical to the Complainant's Company Name since the difference in one letter is aurally nearly imperceptible.

The Panel finds that the Complainant satisfied the first element of the UDRP.

E. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Section 2.1, WIPO Overview 3.0.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its VITRUVIAN mark. The name of the Respondent has no connection to the disputed domain names that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The Complainant does not have any type of business relationship with the Respondent. The Complainant did not authorize the Respondent to register or use the Disputed Domain Names or to seek the registration of any domain name incorporating the VITRUVIAN mark or a mark similar to the VITRUVIAN mark.

Currently both Disputed Domain Names <vitruvianpartner.com> and <vitruvianpatners.com> are inactive. There are no evidences of the use of the Disputed Domain Names in connection with a bona fide offering services.

Accordingly, the second element has been met by the Complainant.

F. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registrations to the Complainant who is the owners of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain names; or

(ii) The respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain names, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location. (Policy, paragraph 4(b)).

The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.

First, when the Disputed Domain Names were registered by the Respondent (in March and in August, 2017) the trademark VITRUVIAN and the company name Vitruvian Partners were already well-known and directly connected to the Complainant's activity. In view of this it is likely that the Respondent was well aware of the Complainant and its activity and goodwill in the VITRUVIAN mark at the time each of the Disputed Domain Names was registered. The Respondent's websites are now inactive.

Second, taking into consideration the fraudulent acts of the Respondent, namely attempt to impersonate Vitruvian Partners LLP by:

1) representing himself as a Partner and as a Vice-President of the Complainant

2) creating fake email addresses which represented the real names of the Complainant's personnel

3) forwarding emails allegedly on behalf of the Complainant to different third parties trying to acquire confidential information from them

Further, the Respondent's bad faith can also be inferred from his lack of reply to the cease-and-desist letter sent by the Complainant's counsel prior to commencing this proceeding.

Finally, the Respondent also provided the Registrar (REG.RU LLC) with the false and different details in respect of the Disputed Domain Names.

Moreover, it is improbable that natural person(s) would register two domain names that both incorporate the VITRUVIAN mark and both omit one letter from the Complainant's Company Name without having awareness of the Complainant's activity.

The Panel considers it is obvious that the Respondent similarly selected and used the Disputed Domain Names in bad faith to for creating a likelihood of confusion with the Complainant's VITRUVIAN mark and the Complainant's Vitruvian Partners company name and to disrupt the Complainant's business.

The Panel concludes that the third element has been established by the Complainant with regard to both Disputed Domain Names.

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 <vitruvianpartner.com˃ and ˂vitruvianpatners.com> be transferred to the Complainant Vitruvian Partners LLP.

Mariya Koval
Sole Panelist
Date: February 1, 2018