WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Brewin Dolphin Limited v. Global Domain Privacy / Doudou Sow

Case No. D2018-0184

1. The Parties

The Complainant is Brewin Dolphin Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by August & Debouzy, France.

The Respondent is Global Domain Privacy of Paris, France / Doudou Sow of Annonay, Ardeche, France.

2. The Domain Name and Registrar

The <brewindolphinltd.com> (“Disputed Domain Name”) is registered with Register.IT SPA (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2018. On January 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 1, 2018, 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 February 1, 2018 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 February 8, 2018.

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 February 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2018.

On March 2, 2018, the Center sent an email communication to the Respondent in English and in French, notifying the Respondent that it came to the Center’s attention that the language of the registration agreement for the Disputed Domain Name is French. The Center noted that the due date for the submission of a response was March 1, 2018, and requested the Respondent to indicate by March 7, 2018 whether it wished to participate in these proceedings, and/or had any comments on the language of the proceedings. The Respondent did not reply to this communication.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on March 13, 2018. 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, Brewin Dolphin Limited, is a British investment management and financial planning company with 39 offices throughout the United Kingdom and the Channel Islands. The Complainant’s parent company, Brewin Dolphin Holdings PLC, is listed on the London Stock Exchange and manages a total investment fund of over GBP 40 billion.

The Complainant is the holder of the following European Union trade mark registrations which it uses in connection with its investment management and financial planning business.

- BREWIN DOLPHIN, word mark registered with the European Union Intellectual Property Office (“EUIPO”) under No. 006110357 on April 2, 2008 in classes 16, 35 and 36.

-, combination mark registered with the EUIPO under No. 007120249 on February 13, 2009 in classes 16, 35 and 36.

The Disputed Domain Name was registered by the Respondent on September 9, 2017. The Disputed Domain Name <brewindolphinltd.com> currently does not resolve to an active webpage.

The Complainant filed a formal criminal complaint in France for fraud and identity theft in relation to the Disputed Domain Name on January 15, 2018.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent knew, or at least should have known, of the existence of the Complainant’s trademark. The Complainant further claims that the Respondent has used the Disputed Domain Name for identity theft and fraud.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. It appears that all attempts to notify the Respondent of the Complaint or the administrative proceedings, be it by mail or delivery, have failed. This is likely due to the provision of false or inaccurate contact information by the Respondent when registering the Disputed Domain Name.

6. Discussion and Findings

6.1 Language of Proceedings

As the Complaint was not filed in the language of the Registration Agreement and the Parties did not agree on the language of the administrative proceeding, the Panel may decide on the language of the administrative proceeding, having regard to the circumstances of the administrative proceeding. Indeed, paragraph 11(a) of the Rules reads: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

In cases where the use of the English language in the proceedings would not be prejudicial to the interests of the respondent, whereas it would be a disadvantage for the complainant to be forced to translate the complaint, UDRP panels often decide to use the English language in the proceedings (see, e.g., The Dow Chemical Company v. Hwang Yiyi, WIPO Case No. D2008-1276, decision according to which, where a respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even though it is different to the language of the Registration Agreement).

This can, for instance, be the case where a respondent understands English but is not proficient in writing. In such cases and in order to procure for the parties a fair and reasonable opportunity to respond, exercise their rights and to present their arguments, and that both parties be equally treated the administrative proceedings, UDRP panels may agree to receive and consider all documents and written submissions filed in other languages than the language of the proceedings (see Red Nacional de Ferrocarriles Españoles v. Jesús Hidalgo Álvarez, WIPO Case No. D2000-1025).

In the present case, the Respondent did not reply to the Center’s communication in French regarding the language of the proceedings. Attempts to contact the Respondent have failed. The panel finds it is likely that this is due to the provision of inaccurate or false contact information by the Respondent. Accordingly, it would appear that the Respondent has taken active steps to avoid being contacted. Thus, while the Center has sought to ensure the rights of the Respondent to defend itself and the right to equal treatment, the Respondent appears to have taken steps to frustrate such efforts. The Respondent cannot say that it has not been given an opportunity to be heard (see INTS IT IS NOT THE SAME, GmbH (dba DESIGUAL) v. Two B Seller, Estelle Belouzard, WIPO Case No. D2011-1978).

For these reasons, the Panel determines that the language of the proceedings is English.

6.2 Substantive elements of the Policy

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.

Thus for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

(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 Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights. The Complainant’s BREWIN DOLPHIN mark has been registered and used.

The Disputed Domain Name incorporates the Complainant’s BREWIN DOLPHIN trademark in its entirety, merely adding the non-distinctive suffix “ltd”.

The Panel is of the opinion that the mere addition of non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395, where the domain name <karenmillenoutlet-australia.com> was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783, where the domain name <belstaffjacken-outlet.info> was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168, where the domain name <downloadlimewirenow.com> was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software). The term “ltd” does not add to the distinctiveness of the Disputed Domain Name as it is an abbreviation for “limited company”. It may even strengthen the confusing similarity, as the Complainant uses the term as a corporate designation.

Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.

Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Respondent is not making any use of the Disputed Domain Name. The passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (see Red Bull GmbH v. Credit du Léman SA,
Jean-Denis Deletraz, WIPO Case No. D2011-2209; American Home Products Corporation vs. Ben Malgioglio, WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244).

The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a 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 web site or location or of a product or service on the web site or location.

In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant’s distinctive trademark in its entirety with the addition of the corporate designation used by the Complainant. Considering the distinctive character and online presence of the Complainant’s trademark, the Respondent must have had knowledge of the Complainant’s rights at the time of registering the Disputed Domain Name. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith. (See Red Bull GmbH v. Credit du Léman SA,
Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).

The Respondent is not presently using the Disputed Domain Name. The passive holding of the Disputed Domain Name may amount to bad faith when it is difficult to imagine any plausible future active use of the Disputed Domain Name by the Respondent that would be legitimate and not infringing the complainant’s well-known mark (see Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). The fact that a complainant’s trademark has a strong reputation and is widely used and that there is an absence of evidence whatsoever of any actual or contemplated good faith use are further circumstances that may evidence bad faith registration and use in the event of passive use of domain names (Telstra Corporation Limited v. Nuclear Marshmallows, supra).

In the present case, the Panel is of the opinion that the Complainant’s trademark is truly distinctive and widely used, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by the Respondent. Further, although the Complainant fails to substantiate its argument that an actual fraudulent use is made of the Disputed Domain Name, the use of the Disputed Domain Name for future fraudulent activity cannot be excluded. In view of the Complainant’s activity in the wealth and investment management sector, fraudulent use of the Disputed Domain Name poses a real threat to the Complainant and its clients.

Additionally, by using a proxy registration service and by providing incomplete or false contact information, the Respondent has taken active steps to conceal its identity (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct).

Finally, by failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions from this it considers appropriate.

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy.

7. Decision

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 <brewindolphinltd.com> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: March 22, 2018.