WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fundsmith LLP v. Registration Private, Domains By Proxy, LLC / Asym Mirza
Case No. D2017-0614
1. The Parties
The Complainant is Fundsmith LLP of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Asym Mirza of Karachi, Sindh, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <fundsmithequity.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 March 27, 2017. On March 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2017, 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 March 31, 2017, 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 April 3, 2017.
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 April 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2017.
The Center appointed Martine Dehaut as the sole panelist in this matter on May 1, 2017. 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 following facts have been duly established by the Complainant:
The Complainant, Fundsmith LLP, is an investment management company located in London, United Kingdom. It was founded in 2010 and operates two investment vehicles which are both identified under the main brand “Fundsmith”: these are “Fundsmith Equity Fund”, and “Fundsmith Emerging Equities Trust”. The Complainant operates a website hosted at “www.fundsmith.co.uk”, and is the owner of a European Union trade mark registration no. 9432436 over the word mark FUNDSMITH (registered on February 23, 2011), which designates in particular a variety of financial services.
The disputed domain name, <fundsmithequity.com>, was registered by an individual who made use of a WhoIs privacy service. The Respondent’s identity was subsequently disclosed as Asym Mirza, with an address in Karachi, Pakistan.
The disputed domain name <fundsmithequity.com> was registered on October 10, 2016, and has apparently never resolved to an active web page. It has, however, been used as part of an email address which has been relied upon in a scheme of “advanced fee fraud”, which as explained by the Complainant has targeted some of its clients to incentive them to make advance or upfront payments for services or financial gains which obviously would not ultimately materialize. Some of these emails are annexed to the Complaint; they are signed by individuals which, according to the Complainant, are not employees or otherwise linked to its business, and which indicate as contact details the email address “[…]@fundsmithequity.com”.
As an illustration, below is an extract of an email sent to a client of the Complainant on January 11, 2017:
“Following a recent telephone conversation yesterday, I can hereby confirm your total holdings with us here at Fundsmith Equity currently stands at £32,028.00.
As discussed, due to an outstanding tax fee of £6,405.60, we are unable to release the£32,028.00 until the outstanding balance has been settled.
Once the outstanding balance has been settled we will instruct the release of your holdings within 24 hours”.
This email is signed by a Mr. James St. Patrick who, according to the Complainant, is not an employee of Fundsmith LLP or a person connected to its activities. This message was sent using the email address “[…]@consultant.com”, and at the bottom of the message the following contact email is provided for: “[…]@fundsmithequity.com”.
5. Parties’ Contentions
The Complainant asserts the following in support of its case:
First, the disputed domain name is confusingly similar with the trade mark FUNDSMITH registered in the European Union. It indicates in particular that “the disputed domain name only differs from the Complainant’s mark by the addition of the word ‘equity’. The Complainant contends that the additional word is merely generic and descriptive and therefore does nothing to distinguish the disputed domain name from the Complainant’s mark. The Complainant notes that ‘equity’ is a term relating to stocks, shares and investments and that it is word that is therefore closely associated with the Complainant’s business and which therefore adds to the potential for confusing similarity.”
Second, the Complainant indicates that the Respondent has no rights or other legitimate interests in the disputed domain name. This can be inferred from several concurring elements, including: the use of the disputed domain name as part of an email address in a fraudulent scheme, the fact that the disputed domain name does not resolve to any active website, and the fact that the Respondent is apparently not known, or does not conduct its own activities, under the name Fundsmith Equity.
Third, the Complainant alleges that the disputed domain name has been registered, and is being used, in bad faith. More precisely, the Complainant relies mainly on the doctrine of passive bad faith holding, and indicates that a criteria set out in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 is met in particular because the trade mark FUNDSMITH enjoys a strong reputation, and as no good faith use of the disputed domain name can be foreseen. Alternatively, the Complainant claims that the disputed domain name has been used in association with a fee fraud scheme.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service 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 disputed domain name <fundsmithequity.com> reproduces in attack position the trade mark FUNDSMITH. It is followed by the word “equity”.. As mentioned in the factual background to this decision, the Complainant operates an equity business.
With this in mind, it is obvious that the first element of paragraph 4(a) of the Policy is complied with here: the disputed domain name <fundsmithequity.com> is confusingly similar with the trade mark FUNDSMITH held by the Complainant. The addition of the descriptive element “equity” may reinforce the link and the confusion between the disputed domain name and the Complainant’s trade mark, as it explicitly refers to the business of the Complainant.
The Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is well established from prior UDRP decisions that the Complainant has simply the burden of making out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. If the Complainant is successful in doing so, the burden of production shifts to the Respondent to rebut the Complainant’s prima facie case. The Panel finds that the Complainant has established such a prima facie case here and, failing any rebuttal from the Respondent, this Panel will accept the allegations made by the Complainant.
Indeed, one can hardly foresee any rights or legitimate interests in the registration of a domain name for the purpose of attempting to conduct apparently fraudulent activities, here in the form of a scheme of advance fee fraud.
Besides, the Respondent does not appear to be known by the disputed domain name, or to have been licensed or otherwise authorized by the Complainant to use its trade mark in a domain name or otherwise.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 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] website or location or of a product or service on [the respondent’s] website or location.
For reasons of procedural economy, the Panel will not review the claim of alleged passive domain name holding, on which the Complaint relies primarily. Indeed, the Panel is satisfied that the disputed domain name <fundsmithequity.com> has been registered and actively used in bad faith by the Respondent.
The Respondent has clearly targeted the Complainant when choosing to register the disputed domain name. As mentioned in section 6.A. above, the association of the trade mark FUNDSMITH with the word “equity”, which expressly refers to the Complainant’s activity, necessarily enhances the confusion for users. And while the disputed domain name has apparently never resolved to an active web page, it has nonetheless been used as part of an email address, “[…]@fundsmithequity.com”, in an attempt of conducting advance fee fraud. The Complainant has evidenced the display of this email address in several emails, as an attempt to establish contact with clients and operate the fee fraud. This obviously disrupts the activities of the Complainant. The fact that the misleading email address was not used as such to send messages, but was displayed as a contact reference in the messages themselves, in order to mislead the clients of the Complainant, does amount to “use” in the sense of the provisions of the Policy.
The finding of bad faith registration and use is therefore justified, and is in line with previous similar cases decided under the Policy: La Française des Jeux v. MichaelE Wilkins, WIPO Case No. D2009‑0898; Monarch Airlines Limited v. Richard Nani, WIPO Case No. D2012-2484; and Total S.A. v. Name Redacted, WIPO Case No. D2016-1673.
Accordingly, the third criteria set out in paragraph 4(a) of the Policy is satisfied.
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 <fundsmithequity.com> be transferred to the Complainant.
Date: May, 10, 2017