WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lazard Freres & Co. LLC and Lazard Asset Management LLC v. Domain Administrator, PrivacyGuardian.org / Jacob Valles
Case No. D2016-1685
1. The Parties
The Complainants are Lazard Freres & Co. LLC and Lazard Asset Management LLC of New York, New York, United States of America (“US”), represented by Von Maltitz, Derenberg, Kunin, Janssen & Giordano, US.
The Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, US / Jacob Valles of Barcelona, Spain.
2. The Domain Name and Registrar
The disputed domain name <lazardassetmanagementuk.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2016. On August 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2016, 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 the Complainant on August 29, 2016, 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 August 31, 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 the Respondent of the Complaint, and the proceedings commenced on September 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2016.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on September 30, 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
The Complainant Lazard Freres & Co. LLC, its affiliates and licensees have used LAZARD as a trade name and service mark to identify their financial services for around 100 years. Their business activities include mutual fund management, asset management, corporate advisory services, capital raising and corporate advisory activities in the worldwide securities markets, principal investing for institutional investors in specific areas, real estate, and advising governments and public entities.
The Complainant Lazard Asset Management LLC is licensed by the Complainant Lazard Freres & Co. LLC and its affiliates to use the LAZARD mark and name, as well as the domain name <lazardnet.com>.
The Complainants have registered the LAZARD and the LAZARD ASSET MANAGEMENT trademarks in several countries, including in the United Kingdom of Great Britain and Northern Ireland (“UK”) and the US. The registrations of the LAZARD marks in the UK are owned by the Complainants’ affiliate Lazard & Co., Holdings Limited.
Additionally, the Complainants and their affiliates have a significant Internet presence, having registered and currently using several domain names featuring the LAZARD and LAZARD ASSET MANAGEMENT trademarks. In addition to their principal website at “www.lazard.com”, the Complainant Lazard Asset Management LLC has its own website at “www.lazardnet.com”, and its UK subsidiary, Lazard Asset Management Limited, has a website at “www.lazardassetmanagement.co.uk”.
The disputed domain name was registered on August 2, 2016.
The Panel accessed the disputed domain name on September 13, 2016, and found that there was no active page linked to it.
5. Parties’ Contentions
The Complainants make the following contentions:
- The disputed domain name is identical or confusingly similar to the LAZARD and LAZARD ASSET MANAGEMENT marks in which the Complainants have rights. The disputed domain name incorporates the Complainants’ entire LAZARD and LAZARD ASSET MANAGEMENT marks, followed by the geographical descriptor “uk”. UDRP panels have held in the past that when a domain name wholly incorporates a complainant’s registered trademark that is sufficient to establish identity or confusing similarity. The disputed domain name is almost indistinguishable from the domain name <lazardassetmanagement.co.uk>, used by the Complaint Lazard Asset Management LLC’s UK subsidiary, Lazard Asset Management Limited.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The names and marks LAZARD and LAZARD ASSET MANAGEMENT have long been established in the market and exclusively identify the Complainants, their affiliates, and their services. The Respondent has not acquired any trademark or service mark rights in LAZARD or LAZARD ASSET MANAGEMENT and has never been known by these names or by any domain name including LAZARD. To the Complainants’ knowledge, “Lazard” is neither the first name nor surname of anyone affiliated with the Respondent, nor have the Complainants or their affiliates ever authorized the Respondent’s registration or use of the disputed domain name. The Complainants are unaware of any evidence that the Respondent is making or has ever made a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain and without intent to misleadingly divert consumers. To the contrary, until August 16, 2016, the disputed domain name resolved to an inactive web page. On that date, the site was taken down by its hosting provider in response to an email sent by the Complainants.
- The disputed domain name was registered and is being used in bad faith. The Respondent knew or should have known that the disputed domain name included all or substantially all of the Complainants’ well known LAZARD and LAZARD ASSET MANAGEMENT marks and names. The Respondent’s inclusion of “uk” in the disputed domain name indicates a knowing and deliberate misappropriation, since Lazard is a global financial services organization with a UK affiliate, and that their affiliate has a website at “www.lazardassetmanagement.co.uk”. Moreover, the Respondent has used the disputed domain name to pass itself off as the Complainant Lazard Asset Management LLC’s UK subsidiary, Lazard Asset Management Limited. The Respondent has done so by sending emails to third parties, including clients of the Complainants, purporting to be from an employee of that company and requesting that the recipients invest their funds with the sender. Evidence of the said practice may be found in the email messages displayed in Annexes 13 (pages 6 and 7) and 15 to the Complaint. The risk of further fraudulent use will continue for as long as the Respondent owns the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Lazard Freres & Co. LLC and Lazard Asset Management LLC have common rights in the LAZARD and LAZARD ASSET MANAGEMENT trademarks, being therefore both accepted as the Complainants in the present case.
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that “lazard” and “lazard asset management” are terms directly connected with the Complainants’ activities in the financial business.
Annexes 7 and 8 to the Complaint show registrations of LAZARD trademarks obtained by the Complainant Lazard Freres & Co. LLC in the US, since 2002. In addition, the Complainant Lazard Freres & Co. LLC and its affiliates have registered other marks in which LAZARD is the dominant element, including LAZARD ASSET MANAGEMENT in the US, since 2002, and in the United Kingdom, since 2000 (Annexes 9 and 10 to the Complaint).
The trademarks LAZARD and LAZARD ASSET MANAGEMENT are wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainant’s trademark LAZARD ASSET MANAGEMENT by the addition of the letters “uk” (common acronym for the United Kingdom), as well as the generic Top-Level Domain (gTLD) “.com”.
Previous UDRP decisions have found that descriptive and geographical additions to a trademark in a domain name do not avoid a finding of confusing similarity. This has been held in many UDRP cases (see e.g. Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc. , WIPO Case No. D2000-0927).
It is also already well established that the mere addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ trademarks, and that the Complainants have satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainants have not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, Annex 13 to the Complaint shows that the Respondent has used the disputed domain name to pass itself off as the Complainant Lazard Asset Management LLC’s UK subsidiary, Lazard Asset Management Limited.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainants have proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) Circumstances indicating that the respondent 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 documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in August 2016) the trademarks LAZARD and LAZARD ASSET MANAGEMENT were already directly connected to the Complainants’ activities in the financial business for decades.
Therefore, the Panel considers it would be highly unlikely that the Respondent - at the time of the registration of the disputed domain name - was unaware of the Complainants’ trademark.
Furthermore, the Complainants have shown that the Respondent was recently using the disputed domain name to pass itself off as the Complainant Lazard Asset Management LLC’s UK subsidiary, Lazard Asset Management Limited. This pattern of conduct is a clear evidence of use of the disputed domain name in bad faith.
Currently, the Panel notes that there is no active website linked to the disputed domain name, but this is not enough to change the Panel’s findings. According to the evidence in the Complaint, on August 17, 2016, the disputed domain name resolved to a page with a message from the hosting provider stating that the “Account has been suspended”, Annex 14 to the Complaint. UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005.
In the Panel’s view, the circumstances that the Respondent is, (a) not presently using the disputed domain name; (b) not indicating any intention to use it; and (c) not at least providing justifications for the use of a third party trademark, certainly cannot be used in benefit of the Respondent in the present case.
Such circumstances, associated with the lack of any plausible interpretation for the adoption of the term “lazardassetmanagementuk” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainants have also satisfied the third element 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 <lazardassetmanagementuk.com> be transferred to the Complainant Lazard Freres & Co. LLC.
Date: October 13, 2016