WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CG Asset Management Limited v. Russel Lardsen
Case No. D2014-1521
1. The Parties
The Complainant is CG Asset Management Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by McCann FitzGerald Solicitors, Ireland.
The Respondent is Russel Lardsen of New York, New York, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <cgpfunds.com> is registered with LiquidNet Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 4, 2014. On September 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2014, 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 October 14, 2014. The Complainant filed a further amended Complaint later that day.
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 October 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 5, 2014.
The Center appointed Luca Barbero as the sole panelist in this matter on November 7, 2014. 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.
An administrative procedural order (Panel Order) was notified to the parties on November 10, 2014. The Complainant was thereby requested to clarify whether it was asserting common-law trademark rights in Capital Gearing Portfolio Fund, CGP Fund, CPG or a combination of these. It was also requested to provide evidence in support of its claim of any common-law trademark rights. The Complainant was requested to provide such information by November 15, 2014. The Respondent was invited to submit any additional comments on information supplied by the Complainant in response to the Panel Order by November 20, 2014.
The Complainant submitted a reply to the Panel Order on November 13, 2014. The Respondent did not submit any response to the Panel Order.
4. Factual Background
The Complainant provides financial services and is acting in this administrative proceeding on its own behalf and on behalf of Capital Gearing Portfolio Fund p.l.c. (hereinafter, "the Fund"), a fund listed on the Irish Stock Exchange. The Complainant was incorporated in 2000.
The Complainant operates the web site "www.cgasset.com", where it publishes information about the funds that it manages.
The disputed domain name <cgpfunds.com> was registered on April 10, 2014.
5. Parties' Contentions
The Complainant asserts that the names of the Complainant and the funds that it manages are unregistered trademarks in which the Complainant and the funds have rights under common law tort of passing off, due to the considerable goodwill associated with the services provided by the Complainant which is attached to those names.
The Complainant contends that the disputed domain name is confusingly similar to the name of the Fund in view of the fact that it consists of an acronym of its name and in light of the content of the web site operated from the disputed domain name.
With reference to the Respondent's lack of rights or legitimate interests, the Complainant points out that the Respondent is using the disputed domain name for illegitimate commercial purposes with the intention of misleading potential investors into believing that the Respondent's web site is connected with the Fund.
The Complainant also states that there is no evidence that the Respondent operates a bona fide business under the name "cgpfunds" or any similar name, or is otherwise commonly known by such a name. The Complainant further states that the Respondent used the web site operated from the disputed domain name with the aim of causing potential customers of the Complainant to mistakenly believe that the Respondent's web site is operated by or with the authorization of the Complainant.
As to the bad faith requirement, the Complainant alleges that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's trademark and the Fund as to the source or affiliation of the web site and the services offered therein. The Complainant asserts that said web site relates to investment services offered under the name "Capital Gearing Portfolio Funds", thus fraudulently misrepresenting to the public that the business being operated via the web site is part of or associated with the Complainant's business. The Complainant also indicates that the Respondent published on its web site the address of the Complainant as its "trading office" and the address of the Fund as its "head office" and made reference to directors of the Fund under the heading "Invest with us".
The Complainant also states that it is aware of a fraudulent communication, purpotedly addressed on behalf of the Fund, which was sent from an email address incorporating the disputed domain name and which included the Fund's Financial Conduct Authority (FCA) registration number. The Complainant is concerned that this may be one of many such emails that might have been sent from this email address or other email addresses incorporating the disputed domain name.
In addition, the Complainant points out that, on the web site published at the disputed domain name, the Respondent is inviting the public to contact it via email only. The Complainant is thus also concerned that the Respondent may be attempting to establish relationships via email with members of the public who are under the false impression that they are corresponding with the Complainant. The Complainant thus concludes that, in light of these circumstances, the Respondent may be attempting to defraud the members of the public and has registered and is using the disputed domain name in bad faith.
In its Response to the Panel Order, the Complainant clarifies that it is asserting common law trademark rights in the name "CG Asset Management" and "Capital Gearing Portfolio Fund". It has also submitted the following documents to support its allegations: a key investor information document in respect of the Capital Gearing Portfolio Fund, a prospectus in respect of the Capital Gearing Portfolio Fund, a document showing performance history of the Capital Gearing Portfolio Fund and screenshots of web pages of the web site "www.cgasset.com" and of a web page on the Financial Times web site "www.ft.com".
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service 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.
A. Identical or Confusingly Similar
The Complainant has not provided evidence of ownership of any trademark registration and relies on asserted common law trademark rights in the names "CG Asset Management" and "Capital Gearing Portfolio Fund". The Complainant provided only a key investor information document relating to the Fund, a prospectus in respect of the Fund, the performance history of the Fund, and screenshots of webpages of the Complainant's website, as well as a webpage from the Financial Times website.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.7, in order to successfully assert common law rights, a complainant "must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. (…) [A] conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence".
The Panel notes that the signs on which the Complainant relies are constituted of generic terms and, as mentioned in the cited WIPO Overview 2.0, in such a circumstance there is a greater onus for a complainant to submit evidence of secondary meaning or distinctiveness.
The documents provided by the Complainant show that the Complainant and the Fund used the signs "CG Asset Management" and "Capital Gearing Portfolio Fund" in connection with financial and investment services, but no convincing evidence was submitted as to the consumer recognition of such signs as being business identifier of the Complainant, notwithstanding the chance given to the Complainant to provide such evidence in response to the Administrative Panel Order.
In view of the above, the Panel finds that the Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.
In light of the finding under the first element, it is not necessary for the Panel to address the issue of the Respondent's rights or legitimate interests (or lack thereof) in the disputed domain name and the issue whether or not the disputed domain name was registered and is being used in bad faith
For the foregoing reasons, the Complaint is denied.
Date: November 27, 2014