WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mapletree Investments Pte Ltd v. Domains By Proxy, LLC / MapleTree Capital
Case No. D2016-0662
1. The Parties
Complainant is Mapletree Investments Pte Ltd of Singapore, represented by Baker & McKenzie, United Kingdom of Great Britain and Northern Ireland.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / MapleTree Capital of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <mapletree-capital.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 5, 2016. On April 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 11, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 15, 2016.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 9, 2016.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on May 20, 2016. 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
Complainant is a Singapore-based company specializing in, among other things, financial management services and financial analysis. Complainant was incorporated as Mapletree Investments Pte Ltd in the year 2000. Complainant owns registrations for the mark MAPLETREE and variations thereon globally, including, in Singapore, Registration No. T0722243G (registered 2008) for MAPLETREE, and Registration No. T0722244E (registered 2008) for MAPLETREE and design. Complainant also owns the registration for the domain name <mapletree.com.sg>.
Respondent registered the disputed domain name, <mapletree-capital.com>, on December 31, 2015. Respondent uses the disputed domain name to resolve to a website that appears to reflect much of the same content as that posted on Complainant's own website, and displaying Complainant's trademarks.
Respondent has no affiliation with Complainant, nor any license to use its marks.
5. Parties' Contentions
Complainant contends that (i) the disputed domain name, <mapletree-capital.com>, is identical or confusingly similar to Complainant's trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it is the owner of the MAPLETREE mark. Complainant contends that Respondent has incorporated this mark in the disputed domain name and merely added the term "capital", which is descriptive of financial services similar to those offered by Complainant. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name, and rather has registered and is using it in bad faith, resolving the URL from the disputed domain name to a website with content that is very similar to that of Complainant, but concealing Respondent's contact details in the WhoIs registration and website contact information.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name, <mapletree-capital.com>, is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates in full Complainant's registered mark, MAPLETREE, and combines it with the term "capital" which is descriptive of financial services similar to the financial management services and financial analysis offered by Complainant.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less "identical or confusingly similar" for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (transferring <walmartbenfits.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>). Rather, it is likely that consumers who encounter the website affiliated with the disputed domain name would assume that the term "capital" refers to the financial services offered by Complainant.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no "rights or legitimate interests" as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name "in connection with a bona fide offering of goods or services"; (ii) demonstration that the respondent has been "commonly known by the domain name"; or (iii) "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".
No evidence has been presented to this Panel that might support a claim of Respondent's rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.
Therefore, this Panel finds that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where "by using the domain name [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site 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 respondent's] web site or location or of a product or service on [the] web site or location". As noted in Section 4 of this Panel's decision, Respondent has resolved the URL affiliated with the disputed domain name to a website with content very similar to that offered by Complainant, and which includes and displays Complainant's trademarks. Respondent is thus trading on the goodwill of Complainant's trademarks to attract Internet users, presumably for Respondent's own commercial gain. This evidences bad faith by Respondent.
Given the overall circumstances, the Panel finds that Respondent was undoubtedly aware of Complainant's rights when registering and using the disputed domain name. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith in accordance with 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 disputed domain name, <mapletree-capital.com>, be transferred to the Complainant.
Date: June 3, 2016