WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oxford Asset Management Company Limited v. Domain Admin, E-Promote
Case No. D2017-0740
1. The Parties
The Complainant is Oxford Asset Management Company Limited of Oxford, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Blake Morgan LLP, UK.
The Respondent is Domain Admin, E-Promote of Las Vegas, Nevada, United States of America ("US).
2. The Domain Name and Registrar
The disputed domain name <oxfordassetmanagement.com> is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 12, 2017. On April 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 24, 2017.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on June 14, 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 Complainant is part of a group of firms which operates internationally using the brands "Oxford Asset Management", "OxAM" and "OXAM" in connection with the provision of investment advice and fund management services.
It is also the owner, amongst others, of the trademark OXFORD ASSET MANAGEMENT in the European Union under numbers EU005009584 registered on April 26, 2007 and EU006758511 registered on December 11, 2008.
The disputed domain name was originally registered on October 12, 1999 and the website relating to it currently resolves to a webpage displaying links to financial related websites.
5. Parties' Contentions
The Complainant asserts that the disputed domain name was first registered in October 1999 and was owned by the Complainant between 2000 and October 2014. An administrative error led the Complainant to miss its renewal deadline which enabled the Respondent to acquire it on or around October 12, 2014.
The Complainant further states that it used the disputed domain name to redirect Internet users to its main website available at the domain name <oxam.com> and that the disputed domain name is now for sale and parked in a landing page that displays sponsored advertising links to financial service companies unrelated to the Complainant.
According to the Complainant, the Respondent is a notorious cybersquatter, holding over 12,000 domain names and a frequent respondent in a number of UDRP decisions.
Furthermore, the Complainant states that the Respondent has no rights or legitimate interest in respect of the disputed domain name given that:
(i) the Respondent is not associated with the Complainant and has no permission to use its name;
(ii) the Respondent acquired the disputed domain name primarily for the purposes of selling it to the Complainant, or to a competitor of the Complainant and is meanwhile earning revenues from "pay per click" advertising. Such use is misleading Internet users for commercial gain only by profiting from the confusing similarity between the disputed domain name and the Complainant's mark;
(iii) the Respondent has not used the name "Oxford Asset Management" in connection with any bona fide offering of goods and services;
(iv) the Respondent has never been known by the name "Oxford Asset Management" or by the disputed domain name and it has not acquired any intellectual property rights in connection with that name; and
(v) the Respondent is not making any legitimate commercial or noncommercial or fair use of the domain name and such use characterizes taking unfair advantage of the Complainant's mark and is detrimental to it.
As to the bad faith element in the registration and use of the disputed domain name, the Complainant concludes that such can be found in view of the following circumstances:
(i) the Respondent registered the disputed domain name on October 12, 2014, immediately after the Complainant failed to renew it because of an administrative error. Therefore, under the Complainant's view, the Respondent could not have been unaware of the Complainant's rights in the disputed domain name, being the only sustainable explanation for such registration an attempt to gain financial advantage at the Complainant's expense;
(ii) as the Respondent has not used the disputed domain name in connection with any legitimate offering of goods or services and has advertised it for sale, the Complainant concludes that the Respondent's main intention was to sell it to the Complainant or possibly to another commercial entity looking to benefit from some perceived (though incorrect) connection with the Complainant and its established reputation;
(iii) the Respondent has used the disputed domain name to direct Internet users to a parked page displaying advertisements for other asset management firms, taking unjustified advantage of the Complainant's trademark, by redirecting Internet users to unconnected websites, presumably for some financial gain (for itself or others);
(iv) the false statement made on the Respondent's webpage that "www.oxfordassetmanagement.com is no longer in business and has recently been listed for sale" may characterize apparent knowledge of the Complainant's mark and might be attributed to have been made in an attempt to increase the prospects of selling the disputed domain name; and
(v) the Respondent has engaged in a pattern of bad faith conduct as can be shown by number of domain name registrations held by the Respondent and the eight UDRP cases in which it has been named respondent.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the OXFORD ASSET MANAGEMENT trademark which is entirely reproduced in the disputed domain name without any addition, apart from the generic Top-Level Domain ("gTLD") which is not to be taken into account.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent's rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark or service mark rights; 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 or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g., Banco Bradesco S/A v. Bradescoatualizacao.info Private Registrant, A Happy DreamHost Customer, WIPO Case No. D2010-2108). Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that the Respondent is not associated with it and has received no permission to use its name.
Also, the absence of any indication that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, further demonstrate the absence of a right or legitimate interest in the disputed domain name.
Indeed the Respondent is presently using the disputed domain to generate traffic to sites with sponsored links related to the Complainant's services. Such use can indeed mislead Internet users for commercial gain by profiting from the confusing similarity between the disputed domain name and the Complainant's mark. The Panel finds that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of a domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The Complainant argues that the Respondent registered the disputed domain name in October 2014, several years after the registration of the Complainant's claimed trademarks. As the Respondent has not submitted a Response, the Panel can draw its inference from the arguments made by the Complainant. This Panel therefore concludes that the disputed domain name was registered in bad faith, as the Respondent knew or should have known of the Complainant at the time of registration.
In this case, the use of the disputed domain name in connection with a webpage containing sponsored links related to the Complainant's services can indeed mislead Internet users for commercial gain by profiting from the confusing similarity between the disputed domain name and the Complainant's mark.
Also, the fact that the Respondent has been named respondent in at least eight UDRP decisions having faced adverse decisions in all of them clearly constitutes a pattern of bad faith conduct in this Panel's point of view.
For the reasons stated above, the Respondent's conduct has to be considered, in this Panel's view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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, <oxfordassetmanagement.com>, be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: June 27, 2017