WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

M&G Limited v. Smith Taylor

Case No. D2018-1892

1. The Parties

The Complainant is M&G Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Smith Taylor of Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mandginvestment.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2018. On August 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 22, 2018, 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 August 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2018.

The Center appointed Nicholas Smith as the sole panelist in this matter on September 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 funds management company based in the United Kingdom that has been active since 1931. It currently employs more than 2,000 people and manages assets of approximately GBP 298 billion. It maintains an active website at “www.mandg.com” (the “Complainant’s Website”).

The Complainant holds registered trademarks in the European Union for the word mark M&G (“M&G Mark”), which was first registered on October 19, 1999 for services in class 36, under Registration Number 000754556.

The Domain Name was registered by the Respondent on June 26, 2018. It is presently inactive but prior to the commencement of this proceeding redirected to a website (the “Respondent’s Website”) that purported to offer financial services similar to the Complainant. The Respondent’s Website is strikingly similar to the Complainant’s Website, utilizing a similar design, the same color scheme and reproducing the M&G logo displayed prominently on the Complainant’s Website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s M&G Mark;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

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

The Complainant is the owner of the M&G Mark, having registered the M&G Mark in the European Union and internationally through WIPO. The Domain Name is confusingly similar to the M&G Mark, with the word “and” replacing the ampersand and adding the word “investment” which is descriptive of the services offered by the Complainant.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name nor has the Complainant provided a licence or authorization to register the Domain Name or any domain name incorporating the M&G Mark. There is no evidence, since the Respondent registered the Domain Name, 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 or for a legitimate non-commercial purpose. The Domain Name resolves to a website that has purposely been designed to serve as a an exact replica of the Complainant’s website, all as a means of deceiving internet users into believing that the Domain Name and its website are associated with the Complainant. This does not provide the Respondent with rights or legitimate interests.

The Domain Name was registered and is being used in bad faith. Given the use of the Respondent’s Website, the Respondent had knowledge of the M&G Mark at the time of registration. Such knowledge is an indication of bad faith registration. The Respondent is using the Domain Name for a website that mimics the Complainant’s Website for the purpose of causing confusion and profiting. This amounts to bad faith use under paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the M&G Mark, having registrations for the M&G Mark as a trade mark in the European Union.

The Domain Name consists of the M&G Mark with the ampersand, which cannot be used in a domain name, replaced with the aurally and conceptually identical word “and”. The Domain Name then adds the descriptive term “investment” which describes the services offered by the Complainant under the M&G Mark. Neither of these changes operates to avoid confusing similarity between the Domain Name and the M&G Mark, which remains clearly recognizable in the Domain Name. The Panel finds the Domain Name is confusingly similar to the Complainant’s M&G Mark. Consequently the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(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 non-commercial 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.”

The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the M&G Mark or a mark similar to the M&G Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.

There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate non-commercial fair use or a bona fide offering of goods and services. Rather, the use of the Domain Name for a website that mimics the Complainant’s Website is evidence that the Domain Name is used by the Respondent to pass itself off as the Complainant, which does not amount to use for a bona fide offering of goods and services.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has failed to rebut that prima facie case and establish that it has rights or legitimate interests in the Domain Name under the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, 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 name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark 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 name; or

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

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

(iv) by using the domain name, 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 the Respondent must have been aware of the Complainant and its reputation in the M&G Mark at the time the Respondent registered the Domain Name. The Respondent’s Website is so strikingly similar to the Complainant’s Website that the Respondent must have registered the Domain Name in awareness of the Complainant and its reputation in the M&G Mark. The Respondent has provided no explanation, and none is immediately obvious, why an entity would register the Domain Name and redirect it to the Respondent’s Website, unless there was an awareness of and an intention to create a likelihood of confusion with and the Complainant and its M&G Mark. In these circumstances, the Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.

The Respondent’s Website purports to offer investment services, which if legitimate would be services in direct competition with the Complainant, using a similar domain name and very similar website to that used by the Complainant. In these circumstances the Panel finds that that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the M&G Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. As such the Panel finds that the Domain Name is being used in bad faith.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

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 Domain Name <mandginvestment.com> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: September 21, 2018