WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Northill Capital (Jersey) L.P. v. Domain Admin, Whois Privacy Corp.
Case No. D2017-1832
1. The Parties
Complainant is Northill Capital (Jersey) L.P. of St. Helier, Bailiwick of Jersey, represented by Dechert, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas.
2. The Domain Names and Registrar
The disputed domain names <northillglobal.com> and <northillglobal.net> (the “Domain Names”) are registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2017. On September 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 22, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2017. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2017.
The Center appointed John C McElwaine as the sole panelist in this matter on November 3, 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.
After the Panel’s appointment and the Panel noted during review of the Case File that the Written Notice informing the Respondent of the commencement of the proceeding was successfully delivered on October 2, 2017. However, the Panel has also noted that, presumably due to an administrative oversight, the Notification of the Complaint sent to the Parties on September 27, 2017 was incomplete.
In light of the above, and in fairness to both Parties, the Panel issued the Procedural Order No. 1 on October 24, 2017, requesting the Center to resend to the Parties the Complaint and Annexes, as well as, the “Notification of Complaint and Commencement of Administrative Proceeding”. The Panel granted Respondent 20 days to submit a Response to the Complaint. Respondent did not submit a response to the Complaint or the Procedural Order No.1.
4. Factual Background
Complainant is a private equity and venture capital investment firm specializing in start-up, seed, early stage, and buyout transactions. Complainant has an Irish subsidiary that operates under the name “Northill Global Fund Managers Limited”.
Complainant is the owner of a United Kingdom trademark registration for NORTHILL in class 36 (Registration Number No. 2590817, registered on November 10, 2011) and a European Union trade mark registration in Class 35 and Class 36 (Registration Number No. 10057198, registered on November 17, 2011).
The Domain Names were registered on April 27, 2017. According to the evidence submitted with the Complaint, the Domain Name <northillglobal.com> resolved before its suspension to a financial services website offering savings accounts, saving bonds and related financial services under the name “Northill Global”. The Domain Name <northillglobal.net> does not currently resolve to any active website.
5. Parties’ Contentions
Ever since its founding in 2010, Complainant has used the mark NORTHILL in connection with financial services, namely, providing equity and seed capital to a small number of high-quality start-ups or early stage asset managers and providing equity capital to replace existing shareholders in larger more established asset management businesses. Complainant claims to have approximately USD 46 billion in assets under management in which the Complainant’s corporate group owns a majority interest. Complainant’s corporate group also includes a wholly owned Irish entity called “Northill Global Fund Managers Limited” (the “Irish Subsidiary”).
Complainant alleges that it has registered the NORTHILL mark in the European Union and in the United Kingdom. Complainant further alleges that through substantial use of the NORTHILL mark for more than seven years, Complainant has established significant goodwill and reputation in the NORTHILL mark worldwide. Complainant contends that the Domain Names are confusingly similar to its NORTHILL mark because they incorporate the distinctive NORTHILL mark in its entirety.
With respect to the second element of the Policy, Complainant alleges that the Domain Name <northillglobal.com> resolved to a website that was offering savings accounts, saving bonds and related financial services under the name “Northill Global”. Complainant further alleges that the website fraudulently listed the name of the Complainant’s Irish Subsidiary’s address and its Financial Conduct Authority (“FCA”) number.
Complainant points out that the website had a disclaimer, which appeared on the bottom of the homepage of the Website and stated, “Northill Global are not connected to Northill Capital in any way”. Complainant asserts, however, that this purported “disclaimer” served only to highlight that the ultimate owner of the Domain Names was aware of the Complainant prior to registering the Domain Names. Complainant claims that the existence of the Domain Name <northillglobal.com> was brought to the Complainant’s attention on September 11, 2017, when one of Complainant’s customers indicating he was interested in a single deposit plan he thought was being offered by the Complainant. Complainant was surprised by the customer’s interest since Complainant does not offer any such product. After investigating this matter, Complainant asserts, it was discovered that Complainant’s client had believed Complainant operated the website at the Domain Names.
As a result of this fraudulent website operated at the Domain Names, the Registrar suspended the Domain Names. Although Complainant does not provide any evidence of the use of the Domain Name <northillglobal.net>, the circumstances of the case (including, inter alia, the fact that the content of the Domain Name was also suspended by the Hosting Company) and an alleged pattern of behavior by Respondent, may infer it resolved to a website identical to the one shown at the Domain Name <northillglobal.com>. Complainant submits that Respondent chose the Domain Names because it knew that they were identical to its well-known NORTHILL mark and as a result would draw traffic to the website. Accordingly, Complainant asserts Respondent’s use and registration of the Domain Names cannot constitute use of or demonstrable preparations to use the Domain Names in connection with a bona fide offering of services and that Respondent will be unable to rely on any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or a legitimate interest in the Domain Names.
With respect to the third element of the Policy, Complainant asserts that Respondent is using the Domain Names to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website, in accordance with paragraph 4(b)(iv) of the Policy. Complainant also asserts that Respondent must have been aware of the NORTHILL mark when it registered the Domain Names due to the content on the webpages, which as intended to lead consumers to believe that they have reached the Complainant's website and so divert internet traffic from Complainant thereby interfering with its business. It is alleged that these facts are evidence of bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4(a) of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom (see St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established trademark rights in the NORTHILL mark as evidenced by its trademark registrations and its long-standing use of the NORTHILL mark in connection with financial services. Although, Respondent has added the word “global” to the NORTHILL mark, the Domain Names are still confusingly similar to the NORTHILL mark. It is well established that the addition of a descriptive word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the mark is used, does not avoid confusing similarity. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307. In this matter, Respondent added the word “global”, which is a common descriptor added to financial services industry marks, and in fact, is a mark used by Complainant in connection with its Irish Subsidiary.
Based upon the foregoing, the Panel finds that Complainant has met its burden of showing that the Domain Names are confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Names. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Names. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Complainant contends it has not licensed or otherwise provided authorization for Respondent to use or register the Domain Names. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
Under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, 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) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) 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 Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions.
As an initial matter, Respondent cannot satisfy paragraph 4(c)(ii) of the Policy. There is no evidence in the record that Respondent is commonly known by the name “Northill Global”.
Complainant asserts that the Domain Name <northillglobal.com> resolves to a website that imitates Complainant’s website and that this website is being operated to further a possible criminal enterprise. Respondent has not submitted any response to rebut these allegations. The Panel finds that the use of the Domain Name to divert Internet traffic to a scam or a phishing scheme is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. See BJ’s Wholesale Club v. Lisa Katz, Domain Protection LLC / Domain Hostmaster, Customer ID: 64382986619850 Whois Privacy Services Pty, WIPO Case No.D2015-1601; see also CMA CGM v. Diana Smith, WIPO Case No. D2015-1774 (finding that the respondent had no rights or legitimate interests in the disputed domain name holding, “such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name”) Moreover, even if the mark was not being used to perpetrate an overt fraud, but instead being used in a commercial manner, the Panel finds that the website displayed at the Domain Name was deliberately designed to give the false impression that it is affiliated to or sponsored by Complainant, which is not the case. Prior panels deciding under the UDRP have held that such use of a domain name cannot be a “bona fide offering of goods or services” and is not “fair use of the domain name.” See Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548 (“by using a domain name and establishing a website deliberately designed to confuse Internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services.”); see Hulu, LLC v. Helecops, Vinod Madushanka, WIPO Case No. D2016-0365 (finding that an infringing website operating under the name “HuluMovies” does not entail a bona fide offering of services in the sense of paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii), without intent for commercial gain to misleadingly divert consumers or to tarnish the HULU mark). The Panel notes that the contentions by Complainant about the website at the Domain Name <northillglobal.net> have not been rebutted by Respondent in this proceeding.
Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel is entitled to accept that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Names, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Names in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Paragraph 4(b)(iv) of the Policy provides that bad faith may be shown if “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.” As discussed herein, Respondent registered the Domain Names, which are confusingly similar to Complainant’s NORTHILL mark and linked, at least, one of those Domain Names to a website purporting to offer financial services as using the designation NORTHILL GLOBAL, and using the name and contact information of Complainant’s Irish Subsidiary. See Identigene, Inc. v. Genetest Labs., WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
In addition, the Panel finds that Respondent registered the Domain Names consisting of the NORTHILL mark to divert Internet traffic to a website that is perpetrating a scam. Complainant’s NORTHILL mark was intentionally chosen when the Domain Names were registered to pray on the public seeking to find Complainant. In light of the content listing Complainant’s Irish Subsidiary, there could be no other legitimate explanation except that Respondent intentionally registered the Domain Names to draw a connection to Complainant in an effort to mislead, and possibly scam consumers. Such activity also constitutes a disruption of Complainant’s business and also establishes bad faith registration and use pursuant to paragraph 4(b)(iii) of the Policy.
Respondent cannot ameliorate its bad faith by the inclusion of the disclaimer at the bottom of the webpage at “www.northillglobal.com” stating “Northill Global are not connected to Northill Capital in any way. We are completely separate entities.” This disclaimer is printed in a very small font and at the bottom of the webpage. It is not sufficiently prominent to be effective. Moreover, the working of the disclaimer does not clearly enough state that Northill Global is not authorized or related to Complainant. The statement of being a separate entity from Complainant would technically be true for any of Complainant’s subsidiaries. As stated by the WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.7, “where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.” In this case, due to the more prominent use of Complainant’s address and FCA number, the Panel finds that the disclaimer is not effective to cure bad faith.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Names in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <northillglobal.com> and <northillglobal.net> be transferred to Complainant.
John C McElwaine
Date: December 20, 2017