WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sovereign Trust (Gibraltar) Limited, The Sovereign Group v. Stephen Jones, s jones
Case No. D2010-2087
1. The Parties
The Complainants are Sovereign Trust (Gibraltar) Limited of Gibraltar, Oversees Territory of the United Kingdom of Great Britain and Northern Ireland, and The Sovereign Group of Grand Turk, Turks & Caicos Islands, Oversees Territory of the United Kingdom of Great Britain and Northern Ireland, both represented by Adlex Solicitors, United Kingdom.
The Respondents are Stephen Jones, s jones of Doha, Qatar.
2. The Domain Names and Registrars
The disputed domain names <sovereignassurance.com>, <sovereignassurance.net>, <sovereignoffshore.com>, <sovereignqatar.com>, and <sovereignqatar.net> (the “Domain Names”) are all registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2010. On December 3, 2010, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the Domain Names. On December 4, 2010, Name.com LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 10, 2010 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 12, 2010.
The Center verified that the Complaint and 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 December 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2011. Prior to the notification of Complaint, on December 5, 2010, the Respondent submitted various documents in its defense. The Respondent subsequently made a further communication with the Center on February 5, 2011. Additionally, on January 12, 2011, the Complainant submitted a supplemental filing in this matter.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 14, 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 Sovereign Trust (Gibraltar) Limited (“Sovereign Trust”) is a Gibraltar trading company, incorporated in 1989, that offers a range of financial and corporate services to individuals, companies, governments, and professional law and accountancy firms. These services include tax planning, the establishment of offshore companies and trusts, asset management, pension administration, insurance, and capital formation. Sovereign Trust’s parent company is the second Complainant, The Sovereign Group (“Sovereign Group”), a holding company incorporated in the Turks & Caicos Islands in 1998.
The Complainants’ website summarizes the group’s business as follows:
“Sovereign’s core business is setting up and managing companies, trusts and other structures to meet the specific personal or business needs of our clients. Typically these needs would include tax planning, wealth protection, foreign property ownership and facilitating cross-border business.”
One of the group’s principal services is the administration of Qualifying Recognised Overseas Pension Schemes (“QROPS”) used by British expatriates since the United Kingdom adopted relevant tax legislation in 2004. A 2010 Financial Times report attached to the Complaint, based on government figures, indicates that Sovereign Group accounts for approximately 20% of the total QROPS market.
Sovereign Trust or sister companies in the Sovereign Group operate in more than twenty countries, including offices in the United Kingdom, Gibraltar, Guernsey, the Isle of Man, Cyprus, Dubai, and Abu Dhabi.
The Complainant Sovereign Group holds registered SOVEREIGN trademarks in numerous countries. The marks are used by the Complainant Sovereign Trust and other members of the group, as shown by examples of advertising and the group’s website at which Sovereign Trust has operated since registering that domain name in 1998. Sovereign Trust also claims use of the SOVEREIGN mark since 1989, protected by common law. The registered marks include the following:
August 4, 2000
European Union (Community Trade Mark)
December 19, 2000
European Union (Community Trade Mark)
January 4, 2005
United Arab Emirates
December 16, 2008
The Complaint attaches evidence of extensive publicity surrounding the SOVEREIGN mark from 2004 to the present, with advertising and articles in English-language newspapers and magazines throughout the world (including the Financial Times, The Economist, and Expat Magazine). According to Google Analytics, the Complainants’ website also attracted some 100,000 visits in the period January to August 2010.
The Domain Names were registered on the following dates:
<sovereignoffshore.com> July 30, 2009
<sovereignassurance.com> November 18, 2009
<sovereignassurance.net> November 18, 2009
<sovereignqatar.com> February 28, 2010
<sovereignqatar.net> February 28, 2010
In each instance, the registrant is currently listed as “s jones” of Doha, Qatar. The Respondent Stephen Jones communicated with the Center following notice of the Complaint from the Complainant, on the letterhead of Sovereign LLC (Qatar). Mr. Jones’ letter identified the Respondent Sovereign LLC (Qatar) (“Sovereign LLC”) as the owner of all five Domain Names. It appears that “s jones” refers to Mr. Jones, who is evidently a principal of Sovereign LLC. Hence, “s jones”, Stephen Jones, and Sovereign LLC (Qatar) are collectively referred to as the “Respondent” in this decision because of their shared interest in the Domain Names.
According to the Respondent’s December 5, 2010 letter to the Center, Sovereign LLC is a “legal commercial entity trading solely in the State of Qatar,” specializing in life insurance portfolios that are sold to individuals “whilst they are resident in Qatar.” The Respondent’s letter attached scanned copies of commercial and business registration documents from the Qatari Ministry of Business and Trade (“MBT”) for Sovereign LLC, articles of association, a signage license, and a photograph of what appears to be office signage. The official documents do not refer to an incorporated or registered business in Qatar before 2010.
The Domain Name <sovereignassurance.com> resolves to a website that does not clearly identify the Respondent as a legal entity and does not mention Qatar. Rather, it describes “Sovereign” as “part of a leading international group who specialise in insurance based offshore protection & growth portfolio’s”. The website advertises the Respondent’s services in offering life and disability insurance, QROPS, life-insurance portfolios designed for income growth and retirement security, employee benefits planning, and estate planning, all using products offered by offshore institutions in Jersey, Guernsey, and the Isle of Man. According to the website, “Sovereign” is part of the “WORLDNET GROUP” serving more than 50,000 clients in 109 countries, with “over $7 billion under our management and administration.” The QROPS page on the website refers to a partnership with Premier Pension Solutions to offer QROPS based on New Zealand pension plans.
The Domain Name <sovereignassurance.net> redirects Internet users to the website associated with <sovereignassurance.com>.
The Domain Names <sovereignqatar.com> (the Domain Name shown on the Respondent’s letterhead) and <sovereignqatar.net> resolve to a website with much of the same content but headed “Welcome to Sovereign Qatar” rather than “Welcome to Sovereign” and including information about the Respondent’s company registration and office in Qatar.
The Domain Name <sovereignoffshore.com> does not currently resolve to an active website but rather to a page with the message, “Email Server”. The Complaint attaches evidence that the Domain Name formerly redirected to the Respondent’s website associated with the Domain Name <sovereignassurance.com>.
The Complainants’ representatives sent a cease-and-desist letter regarding the Domain Name <sovereignassurance.com> in March 2010. At that time, the Respondent’s website associated with that Domain Name displayed an address in Cyprus, which has now been removed from the website, and so the Complainants’ letter was directed to that postal address as well as to the email address shown on the website. An email reply dated April 14, 2010 said that “Sovereign Assurance” was not a company and indicated that the (unidentified) operator of the website conducted no commercial activity “in Europe or in any other jurdistictions [sic] where your trademark is effective”. The email went on to say that the use of a Cyprus address was merely “for test purposes” and had now been discontinued.
The Complainants’ representatives subsequently communicated with the domain proxy service through which four of the Domain Names had been registered, with the result that the WhoIs registration details were updated to show the Respondent “s jones” of Doha, Qatar as the registrant of all the Domain Names. A cease-and-desist letter sent by post to the mailing address given for the Respondent was returned marked “unknown” in September 2010.
Because the Respondent’s websites referred to QROPs offered in partnership with Premier Pension Solutions (“Premier”), a company with which the Complainants had previously dealt, the Complainants’ representatives contacted the managing director of Premier for assistance in locating the Respondent. Apparently as a result of these contacts, the Respondent sent an email to the Complainants’ representatives dated October 4, 2010. This email claimed that the Respondent operated only in Qatar, where the Complainants’ mark was not registered. The email also cited instances of third parties using the name “Sovereign”. These paragraphs repeated, essentially verbatim, portions of the April 14, 2010 email sent in response to the Complainants’ letter directed to the address in Cyprus that was formerly listed on the Respondent’s website.
On November 30, 2010, the Respondent sent the Complainants’ representatives an email suggesting that the Complainants purchase the assets of Sovereign LLC if the Complainants were interested in entering the market in Qatar. This proceeding followed.
5. Parties’ Contentions
The Complainants contend that the Domain Names are all confusingly similar to their SOVEREIGN mark and that the Respondent has no rights or legitimate interests in the Domain Names.
The Complainants argue that the Respondent was aware of the Complainants’ mark and registered and used the Domain Names in bad faith, attempting to disrupt the Complainants’ business, mislead Internet users for commercial gain, and then possibly sell the Domain Names to the Complainants for an excessive price. The Complainants find support for these inferences in misleading content on the Respondent’s websites and in the Respondent’s evasive conduct once the Complainants asserted trademark infringement and violation of the Policy.
The Respondent does not deny prior knowledge of the Complainants and their mark. Rather, the Respondent insists that it operates only in Qatar, where the Complainants have no trademark registrations, and legitimately sells “life insurance portfolios” (not a principal offering of the Complainants) under the name of the registered company Sovereign LLC.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the 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.”
A. Respondent’s Pre-Commencement Submission and Complainant’s Supplemental Filing
In reply to notice of the filing of the Complaint, the Respondent on December 5, 2010 sent a letter and attachments to the Center with the following email cover message:
“We respond to the allegations made against ‘Stephen Jones’ by the Complainant: Sovereign Trust (Gibraltar) Limited about the domain names detailed below:
sovereignqatar.com / sovereignqatar.net / sovereignassurance.com / sovereignassurance.net / sovereignoffshore.com
Please see the enclosed.pdf scan of our response letter and the attachments, and in view of our submission we respectfully request you to reject the ‘Remedies Requested’ by the claimant and instruct name.com to unlock and return to us control of our websites.”
The Center promptly replied that the proceeding had not yet commenced. The Center was at that time verifying that the Complaint conformed to the requirements of the Rules and Supplemental Rules; the Response would be due within twenty days after the commencement of the administrative proceeding. The Center referred the Respondent to the Model Response and Filing Guidelines available on the Center’s website. Despite subsequent communications from the Center following commencement of the proceeding, the Respondent did not submit further statements or materials, save for an email received by the Center on February 5, 2011, which was not relevant to the substance of this matter.
The Panel will consider the December 5, 2010 email, letter, and attachments from the Respondent, which is not represented by counsel, in lieu of a formal Response. However, the Complainants are correct in observing that the Respondent’s submission does not include the certification required by the Rules, paragraph 5(b)(viii):
“Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
In the Panel’s view, the absence of this certification may affect the credibility of any unsupported statements of fact furnished by the Respondent.
The Complainants filed a Supplemental Submission protesting the absence of a certification of accuracy in the Respondent’s communications, as discussed above, as well as the Respondent’s suppositions concerning the Complainants’ motives, which the Panel does not find material in any event. The Supplemental Submission also attached a certified English translation of the extract from the Qatari MBT commercial register provided by the Respondent. The commercial register indicates that Sovereign LLC was registered to do business in Qatar on February 25, 2010. As the Respondent did not furnish an English translation with its submission of this document, the Panel accepts the Complainant’s Supplemental Submission and attachment as a part of the record in this proceeding.
B. Identical or Confusingly Similar
The Complainants unquestionably have rights in the SOVEREIGN trademark. This name is the dominant element of each of the Domain Names. The addition of generic or geographic terms in the Domain Names does not avoid confusion, especially since the Complainants offer offshore financial services to which the additional terms are plausibly relevant.
The Panel finds confusing similarity within the meaning of the Policy, paragraph 4(a)(i).
C. Rights or Legitimate Interests
It is undisputed that the Complainant has not authorized the Respondent to use the SOVEREIGN mark. The Policy, paragraph 4(c), lists nonexclusive circumstances demonstrating rights or legitimate interests in a domain name:
“(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 . . . “
The record does not indicate that the Respondent has acquired trademark rights in any jurisdiction in the word “sovereign”, alone or in the combinations reflected in the Domain Names. It does not appear that the Respondent was “commonly known” by a corresponding name until Sovereign LLC was registered as a company in Qatar, which appears to have occurred several months after three of the Domain Names were registered and a few days before the remaining two were registered.
The Respondent has not furnished evidence concerning advertising (apart from its websites) or sales under the “Sovereign” name. It appears from the record that the Respondent has advertised life insurance and QROPS online under the name “Sovereign” since 2009, through the website associated with the Domain Names <sovereignassurance.com>, <sovereignassurance.net>, and <sovereignoffshore.com>. It has similarly done so after February 2010 through the website associated with the Domain Names <sovereignqatar.com> and <sovereignqatar.net>.
However, if the Panel finds it probable that the “Sovereign” name was chosen for the Domain Names in 2009 and 2010, and for the Qatari company name registered in February 2010, largely to exploit the Complainants’ mark and reputation, then this could not be considered use, or demonstrable preparations for use, “in connection with a bona fide offering of goods or services”. The Panel subscribes to the reasoning of an often-cited, early UDRP decision, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847: “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. . . . To conclude otherwise would mean that a [r]espondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.” The application of this reasoning to the current proceeding depends on the analysis below concerning the Respondent’s probable intentions.
D. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:
“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or . . .
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Complainants argue that all three examples apply to the circumstances here. There is little evidence of the first on the available record, however. The Respondent ultimately offered to open negotiations to sell its entire company to the Complainants, but it does not appear that the Respondent ever contacted the Complainants about selling the Domain Names. Moreover, the Respondent’s active use of the Domain Names for months before the suggestion about selling the company tends to undermine the conclusion that the Domain Names were registered “primarily” for the purpose of selling them to the Complainants or their competitors.
It is undisputed that the Respondent offers services for establishing QROPS in direct competition with one of the Complainants’ principal lines of business. Thus, it is conceivable that the Domain Names were intended to disrupt the Complainants’ business, consistent with the example of bad faith given in the Policy, paragraph 4(b)(iii). The example is not entirely apt, however, since there is no evidence in the record that the Respondent had a pre-existing financial services business or that the Respondent engaged in this business other than through the websites associated with the Domain Names. Thus, it seems unlikely that the Respondent registered the Domain Names “primarily” for the purpose of disrupting the Complainants’ business.
Paragraph 4(b)(iv), however, fits the circumstances of the current proceeding. The Respondent does not deny awareness of the Complainants’ business, which clearly overlaps with the Respondent’s offerings. This is particularly true with respect to QROPS and other savings and investment schemes tailored for British investors and expatriates. The record shows that the Complainants are major players in this market worldwide and advertise in publications aimed at British expatriates. Moreover, the Respondent’s websites indicate that its QROPS services are provided through Premier Pension Solutions, the QROPS transfer company that previously worked with the Complainants.
It appears likely that the Domain Names were selected in contemplation of the SOVEREIGN mark. With some 20% of the total QROPS market, and a strong presence in other financial services of interest to British investors and expatriates, the Complainants have established a reputation connected with the SOVEREIGN mark that could be expected to attract Internet users seeking such services. It is hard to believe that this was not a significant factor in choosing the Domain Names for a competing business. The Respondent, previously unknown in this field as far as can be ascertained from the record, registered five Domain Names incorporating the “sovereign” name and offered competing services through the websites associated with the Domain Names. Since 2009, the Respondent advertised such services simply under the name “Sovereign”, without identifying a legal entity. The Respondent’s “Sovereign” website first displayed an address in Cyprus (where the Complainants have offices and a trademark registration) and then dropped any indication of location. The Respondent’s “Sovereign” website does not state any geographic limitation on the Respondent’s customers; nor, for that matter, does the Respondent’s “Sovereign LLC (Qatar)” website, which was created after the establishment of Sovereign LLC (Qatar). Thus, despite the Respondent’s protestations to the contrary, it does not appear that the Respondent has structured a business so as not to compete with the better known Complainants. The Respondent’s submissions have failed to rebut the plausible inference that the name “Sovereign” was chosen for the Domain Names (and for the recently established Qatari company) more for their trademark value than for any generic value of the English word “sovereign”.
The Respondent’s conduct in the face of the Complainants’ trademark claims tends to support an inference of bad faith. The Respondent’s explanation for displaying a Cyprus address on its “Sovereign” website (“for test purposes”) is implausible. That address was removed only when the Complainants sent a cease-and-desist letter, and the Respondent then asserted that it did not operate in Europe where the Complainant had trademark registrations. Subsequently, the Respondent changed contact information repeatedly and failed to reply to the Complainants until they approached another company to intervene.
Ultimately, the Respondent’s chief defense advanced in this proceeding, as in earlier emails with the Complainant, is based on the Respondent‘s claim that it is not operating in countries where the Complainant has trademark registrations. This claim is belied by the lack of geographic limitations in the Respondent’s online advertising for clients, its former listing of a Cyprus address, and the absence of any information on its “Sovereign” website concerning the identity and location of the legal or natural person offering the services. A “testimonial” included on both of the Respondent’s websites says that “Sovereign” has been assisting the client for four years, which appears to be longer than the Respondent has been established as a Qatari company.
In any event, it is not dispositive that the Complainants lack trademark registrations in all countries, and specifically in Qatar. The UDRP proceeding is not identical to a trademark infringement action under national law. Bad faith can be established under the Policy if the Respondent registered and used a domain name confusingly similar to a trademark, protected in any jurisdiction, to mislead Internet users for commercial gain.
This motivation seems probable in this case. The Respondent advertises on the websites associated with the Domain Names without expressing any geographic constraints. The Respondent has not established that it is legally limited to selling services to Qatari residents and that its prospective customers cannot obtain competing services from the Complainants. To the contrary, on the available record it appears that the Respondent competes with the Complainants in some kinds of financial services, and that both have used some of the same institutions and intermediaries.
The Panel concludes that the Respondent more likely than not registered and used the Domain Names in bad faith, in an attempt to attract customers, in particular British expatriates, with Domain Names that on first blush would appear to be associated with a better known provider of international financial services geared to the British market. Consequently, the Panel finds that both the second and third elements of the Complaint have been established.
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 Names, <sovereignassurance.com>, <sovereignassurance.net>, <sovereignoffshore.com>, <sovereignqatar.com>, and <sovereignqatar.net>, be transferred, as requested, to the Complainant Sovereign Trust (Gibraltar) Limited.
W. Scott Blackmer
Dated: February 11, 2011