WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Artemis Investment Management LLP v. David Carmichael
Case No. D2014-2175
1. The Parties
The Complainant is Artemis Investment Management LLP, London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Shepherd and Wedderburn LLP, United Kingdom.
The Respondent is David Carmichael of Surrey, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <artemisfundmanagers.com> is registered with Mesh Digital Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2014. On December 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 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.
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 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2015. The Respondent submitted informal correspondence on January 21, 2015.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on January 27, 2015. 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 states in evidence that:
(a) Its predecessor, Artemis Investment Management Ltd, was incorporated on January 20, 1997. In 2010, the services carried out by Artemis Investment Management Ltd were transferred to the Complainant.
(b) The Complainant is the owner of UK Trade Mark UK0002196617A for a stylized word mark for ARTEMIS, registered on May 8, 1999. This trademark was assigned to the Complainant on October 1, 2010. The trademark is registered in class 36 for investment services: capital, fund and trust investment services: investment management services: mutual fund, collective investment scheme and hedge fund services: unit trust services: financial and investment planning and research; advisory, consultancy and information services relating to all the aforesaid services.
(c) The Complainant is the owner of Community Trade Mark 001610963 for the word mark ARTEMIS, registered on November 7, 2001. This trademark was assigned to the Complainant on March 23, 2011. The trademark is registered (inter alia) in class 36 for investment services: capital, fund and trust investment services: investment management services: mutual fund, collective investment scheme and hedge fund services; unit trust services; investment planning and research; advisory, consultancy and information services relating to all the aforesaid services.
(d) The trademarks have been used consistently since registration by the Complainant and its predecessor in connection with fund management services. As at November 30, 2014, the Complainant managed approximately £20.2 billion in a range of managed funds. The mark ARTEMIS has been used on Annual Reports from at least 2002. It has been used on marketing material since at least 2002. It has been used in relation to sponsorship material, published or displayed between 2011 and 2014. For example, in 2014 the Complainant sponsored Tracey Curtis-Taylor and “Miss Isle 2014”. The marks are currently prominently displayed on the Complainant’s website.
(d) The Complainant has registered the domain names: <artemis-funds.co.uk>, <artermis-funds.eu>, <artemis-online.co.uk>, <artemis-online.com>, <artemis-online.eu>, <artemisarchtoarc.co.uk>, <artemisarchtoarc.eu>, <artemisemail.co.uk>, <artemisfunds.co.uk>, <artemisfunds.eu>, <artemisgreatkindrochit.co.uk>, <artemisgreatkindrochit.com>, <artemishighland100.co.uk>, <artemisinvestmentmanagement.co.uk>, <artemisinvestmentmanagement.com>, <artemisinvestmentmanagement.eu>, <artemisoceanracing.co.uk>, <artemisoceanracing.com>, <artemisoceanracing.eu>, <artemisonline.co.uk>, <artemisonline.com>, <artemisonline.eu>, <artemistest.co.uk>, <artemistest.com>, <artemistrusts.co.uk>, <evening-with-artemis.co.uk>, and <artemisfunds.com>.
(d) As a result of its use of the name and mark ARTEMIS, the Complainant states that it has generated significant goodwill in the name Artemis and that the ARTEMIS mark is recognized by investors as indicating the services of the Complainant.
The disputed domain name was registered by the Respondent on November 11, 2014. Evidence shows that as at December 24, 2014, the disputed domain name resolved to a page displaying the text “This page has been reserved for future use.” However, the Complainant has provided evidence that when it first visited the disputed domain name, the appearance of the website, including branding, content and products mentioned, was clearly reminiscent of the Complainant’s website. The Complainant’s trademark was displayed. The Complainant contends that the website hosted at the disputed domain name was purporting to be that of the Complainant. Evidence provided by the Complainant shows that the disputed domain name resolved to a website displaying at its foot the name of the Complainant and Artemis Fund Managers Ltd, a wholly owned subsidiary of the Complainant; the FCA authorization number 122448 which belongs to the Complainant; and the Complainant’s address (although varied very slightly).
5. Parties’ Contentions
The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions within the deadline. However, the Respondent has provided a brief informal communication dated January 21, 2015.
Admissibility of a late communication is in the sole discretion of the Panel. The Panel declines to consider this informal communication to be admissible. The Respondent has not explained why it was unable to respond within the prescribed time. In any event, had the Panel considered the Respondent’s communication this would not have altered the outcome of the case.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) That the disputed domain name is identical or confusingly similar to a trade 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.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has established trade mark rights and goodwill in its registered trademark ARTEMIS for services relating to funds management.
The Panel finds that the disputed domain name is confusingly similar to the trademark. The trademark ARTEMIS is recognizable within the disputed domain name. The trademark ARTEMIS is the dominant component of the domain name. The addition of “fund managers” is descriptive of the same services for which the Complainant has both registered trade marks and goodwill and heightens the risk of confusion.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services: or
(ii) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trade mark or service mark rights: or
(iii) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Complainant states, and the Panel accepts, that the Complainant is not aware of the Respondent being involved in fund management services. The Complainant also notes that the Respondent, who is resident in England, is not authorized by the UK regulatory authority, the FCA, to carry out investment activities.
In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, and in the absence of any formal response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trade mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name: or
(ii) That the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct: or
(ii) That the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor: or
(iii) That by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 Respondent’s website or location or of a product or service on the Respondent’s website or location.
As already outlined, the Complainant has registered rights in ARTEMIS which well predate the relevant date. The Panel is satisfied that the disputed domain name was registered in bad faith. In this regard, the Panel relies on the following.
The disputed domain name includes both the Complainant’s trademark but also the term ‘Fund Managers’ which is descriptive of the activities which the Complainant has carried on since at least 2002. The Complainant has provided evidence from shortly after registration on November 11, 2014 that the appearance of the website hosted at the disputed domain name including body, content and products was designed to emulate the Complainant’s website. The Complainant’s trademark ARTEMIS was prominently shown. A customer testimonial was displayed, claiming that the customer had been a client of Artemis for years in relation to investments. This testimonial is clearly falsified as the Respondent is not authorized to provide fund management services.
In addition, the foot of the webpage included the name of the Complainant and Artemis Fund Managers Limited which is a wholly owned subsidiary of the Complainant. The FCA authorization number 122448 was used, which belongs to Artemis Fund Managers Limited. The Complainant’s address, varied slightly, was also used on the website.
This evidence shortly after registration of the disputed domain name clearly demonstrates that at the time of registration the Respondent knew very well of the Complainant and its prior trademarks and other rights to ARTEMIS in respect of managed funds. The emulating of the Complainant’s website and the quoting of the Complainant’s FCA authorization number on the disputed domain name is clear evidence of this. This evidence further shows that the Respondent acquired the disputed name for the purpose of taking advantage of the trade mark and goodwill of the Complainant for his own benefit.
As to the second limb of the third element, the Panel is also satisfied that the disputed domain name has been and is being used in bad faith. In this regard, the Panel relies on the following.
The disputed domain name was first used to create an impression that it was the Complainant’s own website, by including the name of Complainant and Artemis Fund Managers Ltd, a wholly owned subsidiary of the Complainant: including the FCA authorization number 122448, belonging to the Complainant: and by including the Complainant’s address.
In addition, the disputed domain name displayed an online submission form inviting customers to submit details to enable the setting up of a Fixed Rate Investment Bond. The disputed domain name was clearly intended to be used as a phishing website with the purpose of taking money from the public. The fact that the website later resolved to a page displaying the text “this page has been reserved for future use” does not affect the Panel’s findings.
Accordingly, the Panel finds that paragraph 4(a)(iii) is satisfied in favor of the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <artemisfundmanagers.com> be transferred to the Complainant.
Andrew Brown Q.C.
Date: February 10, 2015