WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Montagu Holdings Limited, Montagu Private Equity LLP v. Maksis Pausa

Case No. D2010-2268

1. The Parties

The Complainants are Montagu Holdings Limited and Montagu Private Equity LLP of London, United Kingdom of Great Britain and Northern Ireland (hereinafter “the Complainant”), represented by Macfarlanes LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Maksis Pausa of Riga, Latvia.

2. The Domain Name and Registrar

The disputed domain name <montagueequitypartners.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2010. On December 28, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 28, 2010, GoDaddy.com, Inc. 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 December 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2011.

The Respondent sent an email communication to the Center on January 21, 2011, indicating its intent to terminate the use of the disputed domain name, and the Center based on the Respondent’s email transmitted by email an instruction as to a suspension of the proceeding if parties wish to explore a possible settlement. The Complainant in its reply of January 25, 2011 indicated its intent not to request for a suspension, and the proceeding continued.

The Center appointed Lone Prehn as the sole panelist in this matter on January 27, 2011. 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 in this administrative proceeding is Montagu Holdings Limited (MHL) a company registered in England and Wales under number 04464887 and Montagu Private Equity LLP (MPE LLP), a limited liability partnership registered in England and Wales under number OC319972.

The Complainant is a leading private equity investor in the European mid-market and has been since 1968 with investors based in Europe, North America and Asia. The Complainant focuses on deals typically between EUR 100 million and EUR 1 billion. The Complainant has offices in London, Manchester, Paris, Düsseldorf, Stockholm and Warsaw. The Complainant has been trading under the marks MONTAGU and MONTAGU PRIVATE EQUITY since 2003 (but has been in the private equity industry for over 40 years). The Complainant has more than 50 global investors, approximately EUR 2.5 billion of assets under management and raises a new fund every four to five years.

The Complainant has been using MONTAGU and MONTAGU PRIVATE EQUITY as trademarks and is the registered proprietor of various trademark registrations for MONTAGU and MONTAGU PRIVATE EQUITY in Class 36 with priority from 2003 and 2004, including in Europe, Hong Kong, SAR of China and United Arab Emirates, in respect of financial services; financial affairs; monetary affairs; capital investment; private equity investment; venture capital investment; financing services; acquisition finance; provision of equity; provision of capital; and various investment and fund management services.

The Complainant (or its group companies) is also the registrant of a number of domain names incorporating the MONTAGU and MONTAGU PRIVATE EQUITY marks and variations thereof.

The Complainant received an email from its investor on September 22, 2010 stating that the investor had “recently been pestered” by a company called Montague Private Equity in Geneva. The company in question was operating from the website “www.mpepartners.com”. The Complainant’s investor sent a query regarding the company Montague Private Equity to Swiss Financial Market Supervisory Authority (“FINMA”), a financial supervisory body in Switzerland and received a reply on October 1, 2010 which confirmed that Montague Private Equity Partners Ltd had no registration with FINMA, and that the address, telephone number and fax number given on the WhoIs database for the domain name <mpepartners.com> were not valid.

The Complainant therefore instructed its legal representatives to notify Montague Private Equity that its use of the domain name <mpepartners.com> was breaching the intellectual property rights of the Complainant. The Complainant’s representative noted that on October 11, 2010 the website at “www.mpepartners.com” would not load which suggested that it had been removed as a result of their letter. However, on October 27, 2010, the Complainant’s representative discovered a new website had been established under the disputed domain name, <montagueequitypartners.com>, which stated that the company was based in Switzerland and the contact details (address, email and telephone numbers) were the same as those given on the previous website at “www.mpepartners.com”.

The disputed domain name was registered on September 7, 2010 and updated on October 25, 2010 in the name of Vadims Prilepisevs, with Janis Krumins as the administrative and technical contact.

A second letter, dated October 29, 2010, was therefore sent by the Complainant’s representatives to the then registrant of the disputed domain name, Vadims Prilepisevs, the administrative and technical contact, Janis Krumins and to Montague Private Equity Partners Ltd.

The Complainant’s representative received a response, via email, from Montague Equity Partners Ltd on November 2, 2010. The response acknowledged that Montague Equity Partners sounds similar to the Complainant’s name. The email also confirmed that all promotional and/or trading activities under the Montague Equity Partners brand were stopped in the middle of October and that the website would be permanently terminated by November 25, 2010. The email response was signed off with “Former Montague Equity Partners” (hereinafter the Respondent Company).

The Complainant’s representative responded on November 2, 2010 requesting that the Respondent Company execute undertakings confirming, inter alia, that it would immediately cease to use the MONTAGU mark and the disputed domain name. No response was received from the Respondent Company.

The registrant details for the disputed domain name were then updated on November 8, 2010 in the name of the Respondent. On November 29, 2010, the Complainant’s representatives emailed the Respondent Company to notify it that, despite its agreeing to take the necessary steps to terminate the website by November 25, 2010, the website remained active and that, accordingly, the Complainant would be taking further steps to prevent the unauthorised use of the Complainant’s mark by the Respondent. The Complainant then filed the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s name and trademarks. Whilst the disputed domain name is not identical to the Complainant’s mark, it is visually, aurally and conceptually very similar, particularly in light of the dominant component of the Complainant’s mark being “montagu” and the Respondent’s being “montague”.

In addition, the Complainant’s mark is highly distinctive and enjoys a strong reputation. The distinctive nature of the Complainant’s mark, and in particular its reputation, means that there is likely to be greater confusion. Accordingly, the Complainant considers that the Respondent’s use of the disputed domain name is likely to confuse the public into thinking that the Respondent’s business is linked or connected to, or affiliated with, the Complainant’s business.

The Complainant further notes that the Respondent Company acknowledged that its name was aurally similar to the Complainant’s name and mark.

The Respondent has not, and is not, using the disputed domain name, or a name corresponding to the domain name, in connection with a bona fide offering of goods or services. According to the website at the disputed domain name, the Respondent Company is based in Switzerland but FINMA does not have a record of this company and both the telephone number and address given on the website are invalid. In addition, FINMA states that the company does not have an office infrastructure.

The website at the disputed domain name describes the Respondent Company “as an international investment intermediary that introduces investors to world-class wealth creation products, services and systems” and is the equities arm of Hong Kong registered Montague International Trading. However, a company search carried out by the Complainant’s representatives of Montague International Trading revealed that this entity is registered in Hong Kong, and is a subsidiary of Jurat Properties Ltd but that the only company affiliated with it is Monterey Capital Limited. The Respondent Company does not appear on the search to be a group company or an affiliated company.

The Complainant contends that the Respondent Company is marketing itself as being a broker catering for “all types of investors”. However, whilst the website at the disputed domain name may appear, on the face of it, to be a legitimate business website, it does not contain any specific detail about the services the company provides, who their clients are or provide any detail about the company itself, for example, its background and history. The Complainant would expect that information such as this would feature on a legitimate business website. The Complainant considers that the lack of information available for the Respondent and the Respondent Company alludes to the fact that the Respondent is not using the disputed domain name for a legitimate interest.

By taking down the website at “www.mpepartners.com” in response to the Complainant’s representative’s first letter dated October 1, 2010, the Respondent acknowledged that it had no legitimate interest in that domain name. By agreeing, on November 2, 2010, to take down the website at the disputed domain name by November 25, 2010 and to cease to trade under the Montague Equity Partners Ltd name, again, the Respondent clearly acknowledged that it had no legitimate interest in the disputed domain name.

The Complainant also considers that the fact that the registrant details were updated on November 8, 2010 in the name of the Respondent also provides evidence that the Respondent has no legitimate interests in the disputed domain name. Neither the Respondent nor the Respondent Company can be considered as being commonly known by the disputed domain name because: (i) the disputed domain name was only registered on September 7, 2010; and (ii) they have readily changed both their domain name and the registrant.

Furthermore, the Respondent or the Respondent Company is not making fair use of the disputed domain name but has, instead, been misleading clients and attempting to divert clients away from the Complainant. As a result, the Complainant’s reputation and its marks have been, and continue to be, tarnished. By way of evidence, the email that the Complainant received on September 22, 2010 from one of its investors clearly demonstrates that the Respondent Company is specifically targeting, and marketing to, the Complainant’s clients and has been attempting to drive the Complainant’s clients away to obtain services from the Respondent Company.

The Respondent’s use of the disputed domain name also takes unfair advantage of the distinctive character of the Complainant’s marks. Given the significant reputation of the Complainant, the distinctiveness of its name, the close similarity between the disputed domain name and the Complainant’s name and marks and the proximity of the services to those apparently offered by the Respondent Company, on a global assessment, the disputed domain name takes unfair advantage of the Complainant’s rights in its name and marks.

The Respondent registered the disputed domain name knowing of the Complainant’s name, reputation and the prevalence of its private equity activities in Europe. The Complainant therefore considers that the Respondent’s use of the disputed domain name amounts to clear riding on the coat-tails of the reputation of the Complainant’s name and marks. The Respondent cannot, therefore, be considered to have any legitimate interests in respect of the disputed domain name.

The Complainant invests significant resources into the protection of its goodwill and reputation both in the United Kingdom of Great Britain and Northern Ireland and worldwide. The Complainant may suffer serious and irreparable damage if the Respondent and/or the Respondent Company continue to use the disputed domain name.

B. Respondent

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

6. Discussion and Findings

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

Paragraph 4(b) provides that 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 acquired a 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 documented out-of-pocket costs directly related to the domain name; or

(ii) registration of a 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 the respondent has engaged in a pattern of such conduct; or

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

(iv) use of the domain name, with the intention to attract, for commercial gain, Internet users to the 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 the website or location or of a product or service on the website or location.

A. Identical or Confusingly Similar

The disputed domain name is <montagueequitypartners.com>. The Complainant has shown that it uses the company names Montagu Holdings Limited and Montagu Private Equity and that it holds registrations of the trademarks MONTAGU and MONTAGU PRIVATE EQUITY. The dominant part of the disputed domain name, MONTAGUE, is clearly confusingly similar to the Complainant’s company name and trademark MONTAGU considering the very distinctive nature of this sign. Apart from the word “montague”, the disputed domain name contains the descriptive terms “equity partners”. Considering that these words may very well describe the field of business of the Complainant, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant’s mark MONTAGU is highly distinctive and enjoys a strong reputation. The Complainant has not authorized the Respondent to use its trademark MONTAGU or to incorporate the trademark into any domain name.

Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name

In the present case the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights.

The Panel finds the Complainant has established such prima facie case, inter alia, due to the fact that the evidence shows that the Respondent Company which is described on the website at the disputed domain name “Montague Private Equity” is not recorded with the Swiss company register, and both the telephone number and address given on the website are invalid.

Furthermore, the Panel agrees with the Complainant that by taking down the website at the domain name <mpepartners.com> in response to the Complainant’s representative’s first letter dated October 1, 2010, the company “Montague Private Equity” acknowledged that it had no legitimate interests in that domain name, and that by agreeing, on November 2, 2010, to take down the website at the disputed domain name by November 25, 2010 and to cease to trade under the Montague Equity Partners Ltd name, again, the company “Montague Private Equity” clearly acknowledged that it had no legitimate interests in the disputed domain name.

The Respondent has not submitted a Response to the Complaint and has not provided any evidence to show that he has any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)).

Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

It is suggestive of the Respondent’s bad faith that the trademark MONTAGU of the Complainant was well-known and registered before the registration of the disputed domain name. The Complainant submitted evidence, which shows that the Complainant's trademark MONTAGU is registered and is known in connection with the equity business and that its trademark would be recognized publicly.

A review of the website operating under the disputed domain name referring to the company Montague Private Equity in Switzerland which according to the Swiss company register does not exist and the fact that the company provided a false telephone number and address on its website is a clear indication that the disputed domain name has been registered and is being used in bad faith.

In the Panel’s view, it is evident that the Respondent registered the disputed domain name with knowledge of the Complainant and the MONTAGU trademark and services with the intent of operating a website increasing the likelihood that Internet users would be confused and identify the Respondent as either the source or associated with the Complainant.

It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <montagueequitypartners.com> be transferred to the Complainant.

Lone Prehn
Sole Panelist
Dated: February 8, 2011