WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rathbone Brothers Plc v. Privacy Department, IceNetworks Ltd.
Case No. D2018-0371
1. The Parties
Complainant is Rathbone Brothers Plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by SILKA Law AB, Sweden.
Respondent is Privacy Department, IceNetworks Ltd. of Reykjavik, Iceland.
2. The Domain Name and Registrar
The disputed domain name <rathbonebrothers.com> is 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 February 19, 2018. On February 20, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 2018, the Registrar transmitted by e-mail 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 February 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 21, 2018.
The Center appointed Richard Hill as the sole panelist in this matter on March 26, 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
Complainant owns the mark RATHBONE and uses it in connection with its investment management services.
Complainant’s registration of its mark dates back to March 15, 1996.
The disputed domain name was registered on July 11, 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent used the disputed domain name to send e-mails in which it fraudulently identified itself as Complainant’s Chief Risk Officer and attempted to defraud customers and to obtain sensitive information from them.
5. Parties’ Contentions
Complainant states that it is one of the UK’s leading providers of investment management services for individuals, charities and professional advisers. Complainant’s roots are found in Liverpool, but it has evolved from family business into independent FTSE 250 public company. Throughout its history, it has kept its focus on building relationships and providing a level of service that encourages its clients to recommend it to others. Today Complainant has 15 offices throughout the UK and Jersey. Complainant is the owner of the registered trademark RATHBONE with rights dating back to 1996.
Complainant alleges that the dispute domain name is confusingly similar to its mark because it incorporates the mark in its entirety and merely adds the generic term “brothers” and a generic Top-Level Domain (“gTLD”) “.com”.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name because it used the domain name to impersonate Complainant with the intention of attempting to defraud Complainant’s customers. Specifically, an e-mail was sent from the fake e-mail address “[…]@rathbonebrothers.com” purporting to be from an employee of Complainant. The subject of the e-mail was “Rathbones- Looking Forward Since 1742-Terms & Conditions-Account Opening Form”, indicating that the customer should open an account. A second e-mail had the subject: “Looking Forward Since 1742- Barclays 7.625% 2022 Fixed Income Bond”. Both e-mails lured potential customers into providing sensitive data and Respondent proclaimed that the investments would be a secure revenue generating asset.
Further, says Complainant, Respondent is using the disputed domain name to conduct fraud: the domain name was used to send e-mails purportedly signed in the name of Complainant’s Chief Risk Officer. This is sufficient to establish bad faith use and registration of the disputed domain name. Complainant cites the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and UDRP precedents to support its position.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
As Complainant correctly argues, the addition of the word “brothers” and the addition of the gTLD “.com” do not sufficiently differentiate the disputed domain name from the RATHBONE trademark for the purposes of this element of the Policy. See sections 1.7 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Section 1.7 states “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. See also V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Florida National University, Inc. v. Registration Private, Domains By Proxy, LLC / Toby Schwarzkopf, WIPO Case No. D2017-0138; Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs, WIPO Case No. D2017-0156.
The Panel finds that the disputed domain name is confusingly similar, in the sense of the Policy, to Complainant’s mark.
B. Rights or Legitimate Interests
As Complainant correctly points out, section 2.13.1 of the WIPO Overview 3.0 states: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”
Complainant provides evidence showing that Complainant used the disputed domain name to send e-mails in which it fraudulently identified itself as Complainant’s Chief Risk Officer and attempted to defraud customers and to obtain sensitive information from them. This is an example of the kind of illegal activity mentioned above.
Further, legitimate rights or bona fide use do not exist when there is deliberate illegitimate use of another’s rights, or when the domain name is used in bad faith to divert users through confusion. The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701; AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937. Such is the case here, see below.
Noting further that Respondent has not rebutted or otherwise replied to Complainant’s contentions, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the disputed domain name was used to impersonate Complainant with the intention of attempting to defraud Complainant’s customers. This is sufficient to establish bad faith registration and use. As Complainant correctly points out, section 3.1.4 of the WIPO Overview 3.0 states: “As noted in section 2.13.1, given that the use of a domain name for per se illegitimate activity such as … phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.” See The Swatch Group AG and Swatch AG v. Christopher Biedermann / Marcin Rulnicki, WIPO Case No. D2017-0388; Accenture Global Services Limited v. Heymann Frams Tech, WIPO Case No. D2017-1591; CitiusTech Healthcare Technology Private Limited v. VistaPrint Technologies Ltd., WIPO Case No. D2015-2186.
The Panel finds that Respondent registered and used the disputed domain name in bad faith, in the sense 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 <rathbonebrothers.com> be transferred to Complainant.
Date: March 28, 2018