WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AGF Management Limited v. Fundacion Private Whois Domain Administrator
Case No. D2013-0448
1. The Parties
The Complainant is AGF Management Limited of Toronto, Ontario, Canada, represented by Riches, McKenzie & Herbert LLP, Canada.
The Respondent is Fundacion Private Whois Domain Administrator of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <agfeurope.com> (the “Domain Name”) is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2013. On March 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 6, 2013, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 7, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2013.
The Center appointed Dana Haviland as the sole panelist in this matter on April 9, 2013. 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, a Canadian corporation founded in 1957, is an investment management firm that provides a variety of financial services to institutions and investors worldwide, including, inter alia, management of mutual funds, stock brokerage and investment advisory services, financial planning services, income tax and life insurance services, trust company services, and mortgage and loan company services.
The Complainant has numerous Canadian and United States of America registered trademarks for its AGF trademark and trade name (the “AGF Mark”). The Complainant has used its AGF Mark since at least 1971. The Complainant has an affiliated wealth management team in Dublin, Ireland, called AGF International Advisors Company Limited, which is the base for managing the Complainant’s European investments.
The Domain Name was registered on February 15, 2013. The website to which the Domain Name resolves (the “Domain Name website”) purports to have been established by a company called AGF Europe Advisors that describes itself as an independent wealth management firm providing services similar to those of the Complainant, with its head office in Dublin, Ireland, and affiliated offices in London and Canada. The Domain Name website uses the Complainant’s Toronto address as the Respondent’s purported address in Canada. The Domain Name website invites visitors to the site interested in its financial services to fill out contact and feedback forms furnishing the visitors’ names and email addresses to the Respondent.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is identical or confusingly similar to a registered trademark in which it has rights, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent registered and used the Domain Name in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the 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 the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has trademark rights in its AGF Mark.
Under paragraph 4(a)(i) of the Policy, a domain name is confusingly similar to a mark where the domain name fully incorporates the mark and simply adds a descriptive term that does not negate the confusing similarity. See Las Vegas Sands, LLC v. Michael Silver, WIPO Case No. D2006-0979 (domain name <sandshotelmacao.com> confusingly similar to complainant’s SANDS mark); Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768 (<playboyturkey.com> domain name confusingly similar to complainant’s PLAYBOY mark). The Domain Name <agfeurope.com> fully incorporates the Complainant’s AGF mark and simply adds the descriptive geographic term “Europe” that, as held in the above cited cases, does not negate the confusing similarity.
It is well established that the generic top level domain, i.e., “.com,” may be disregarded for the purpose of evaluating confusing similarity or identity. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561; Burberry Limited v. Carlos Lim, WIPO Case No. D2011-0344; Magnum Piercing, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Hugo Boss A.G. v. Abilio Castro, WIPO Case No. DTV2008-0001.
Furthermore, the Domain Name website uses the Complainant’s business name, business address, and AGF Mark in what appears to be a deliberate effort to confuse the Internet user in order to gain private and proprietary information for commercial gain.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s AGF mark. The Complainant has thus established the first element of its claim, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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 Complainant alleges that the Respondent is not known by the Domain Name, has no trademark rights in the Domain Name and is not authorized to use the Complainant’s AGF marks in the Domain Name or otherwise. The Complainant further alleges that there is no indication 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 with any noncommercial or fair use.
The Complainant alleges that the Respondent is illegally passing-off itself as being the Complainant, in that the Respondent is using the Complainant’s business name and address and its AGF Mark, as though the Complainant had itself established the Domain Name website. According to the Complainant, “The Respondent’s website purports to be that of the Complainant and purports to represent the Complainant’s Irish team on its website. All of this is entirely without any authorization from the Complainant and is of a very serious concern to the Complainant”.
As shown on a screenshot of the Complainant’s own website at “www.agf.com”, the Complainant has an affiliated wealth management team called AGF International Advisors Company Limited., in Dublin, Ireland, which was founded as a base for managing AGF’s European investments. The Complainant asserts that the Respondent is not associated with the Complainant or any of the Complainant’s teams.
The Complainant has submitted several screenshots of the Domain Name website captioned “AGF Europe”, showing a copyright notice for a company named AGF Europe Advisors, offering financial services similar to those of the Complainant, and stating “Because you deserve an independent financial firm focusing solely on management of your money”. The website provides contact information for AGF Europe at a purported head office in Dublin, a branch office in London and a third office in Toronto at the Complainant’s business address. The Domain Name website invites visitors to the website to fill out a “Contact” form or a “Feedback” form with the visitor’s name and email address.
“[W]here Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is uniquely within the knowledge and control of the respondent.” Diebold, Incorporated v. Paul Terwilliger, WIPO Case No. D2003-0416.
The Respondent has not submitted a Response to the Complaint and has provided no evidence in opposition to the Complainant’s allegations or in support of any rights or legitimate interests described in the three above subparagraphs of paragraph 4(c) of the Policy, or any other right or legitimate interest in the Domain Name.
The Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name, and that the Complainant has satisfied the second element of its claim, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4 (a)(iii) above:
(i) circumstances indicating that the registrant has registered or 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain,
Internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location.
The evidence submitted by the Complainant is sufficient to show the Respondent’s bad faith registration and use of the Domain Name, in violation of paragraph 4(b)(iv) of the Policy. The Respondent appears to be engaged in a phishing scheme with the intention of defrauding consumers into revealing personal and proprietary information for the Respondent’s commercial gain. “Use of a disputed domain name for the purpose of defrauding Internet users by the operation of a “phishing” website is perhaps the clearest evidence of registration and use of a domain name in bad faith”. The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093.
In conclusion, the Panel finds that the Complainant has established the Respondent’s bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy, and that the Complainant has therefore satisfied the third element of its claim under paragraph 4(a)(iii) of the Policy.
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 <agfeurope.com> be transferred to the Complainant.
Date: April 23, 2013