WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RoundShield Partners LLP (RoundShield) / Driss Benkirane v. GoDaddy Registry Domain ID 2213674335_DOMAIN _COM-VRSN / Carmine Bonacci
Case No. D2018-2769
1. The Parties
Complainant is RoundShield Partners LLP (RoundShield) / Driss Benkirane of London, United Kingdom, represented internally.
Respondent is GoDaddy Registry Domain ID 2213674335_DOMAIN _COM-VRSN / Carmine Bonacci of Pyla, Cyprus, self-represented.
2. The Domain Name and Registrar
The disputed domain name <roundshieldfund.com> (the “Domain Name”) 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 December 3, 2018. On December 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 5, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 10, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 11, 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 Respondent of the Complaint, and the proceedings commenced on December 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2019. The Response was filed with the Center on December 29, 2018. On January 14, 2019, Complainant submitted a supplemental filing. In its discretion, the Panel has considered this supplemental submission.
The Center appointed Robert A. Badgley as the sole panelist in this matter on January 16, 2019. 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 RoundShield Partners LLP (“Complainant”) is a London-based private equity investment fund founded in 2013 by Complainant Driss Benkirane (“Benkirane”) and two partners. Benkirane owns the United Kingdom registered trademark ROUNDSHIELD (Reg. No. 3026425 registered January 31, 2014), which he licenses to Complainant in connection with financial services.
One of RoundShield’s earliest investments was a EUR 43 million loan in May 2014 to Les Bordes Golf International SAS (“Les Bordes”), a famous golf course in the Loire Valley region of France. According to the Complaint, after two loan extensions, Les Bordes defaulted in or around January 2017, at which time RoundShield was contractually authorized to replace the president of Les Bordes and, it is alleged, the entire management team. Complainant alleges that Respondent was part of the management team, holding at the time the title of Finance Director and Planning Gain Manager. (According to the Complaint, Respondent entered into a consultancy agreement with Les Bordes in March 2008, and under this agreement, Respondent allegedly served as part of Les Bordes’ actual management.)
For most of 2017, Complainant and Les Bordes’ management – which had not been replaced at that point by Complainant under the terms of the loan agreement – discussed a resolution of Les Bordes’ financial problems. On November 5, 2017, the Les Bordes management team, including Respondent, proposed a meeting with Complainant on November 10, 2017. Respondent did not attend the November 10, 2017 meeting. At that meeting, it was decided that Les Bordes’ management team would be replaced and Complainant (through an affiliate) would take a 64% equity stake in Les Bordes.
By March 2018, the management team of Les Bordes, including Respondent, was replaced.
On November 6, 2017, Respondent registered several domain names including “Les Bordes” and “Les Bordes Golf.” On January 16, 2018, Respondent registered the Domain Name, as well as several other domain names including the mark ROUNDSHIELD. The Domain Name resolves to a parking page of no consequence.
On October 13, 2018, Respondent sent an email to Complainant Benkirane, offering to sell the Domain Name and eight other domain names (all of which contained either the mark ROUNDSHIELD or the mark LES BORDES). Respondent asked for GBP 500,000 to sell the package of domain names. Respondent’s email address for this email message used the domain name <roundshieldllp.co.uk>.
Complainant alleges that Respondent “has at no time had any role within or connection to RoundShield.”
5. Parties’ Contentions
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name.
In his Response, Respondent denies many if not most allegations contained in the Complaint, including the allegation that he held an actual management position within Les Bordes (as opposed to being strictly an outside consultant). Respondent argues that trademark infringement disputes belong in courts of law, not in a proceeding under the Policy.
Respondent asserts that he registered the Domain Name (and the other domain names containing the word “roundshield”) in order to develop a commercial website associated with an alleged sexual sub-culture featuring an extreme form of anal sex in which the “roundshield” (described essentially as an aerial view of the anus) is the focus of the activity.
According to Respondent, the Domain Name (which, as a reminder, contains the mark ROUNDSHIELD and the word “fund”) “was envisaged to raise money to assist those whom often go too far in these pursuits and tear their roundshield such that they require medical and other assistance that has to be paid for.”
According to Respondent, he never developed the website and associated business because he found himself “lacking sufficient time.” He then claims that he made an offer in good faith to sell the Domain Name (and the others discussed above) to Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark ROUNDSHIELD through registration and use. The Panel also finds the Domain Name to be confusingly similar to the mark. The dominant portion of the Domain Name is the ROUNDSHIELD mark, and, given the nature of Complainant’s business, the additional word “fund” does nothing to diminish the confusion between the mark and the Domain Name.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. It is undisputed that Complainant never granted permission to Respondent to use its ROUNDSHIELD trademark in any manner. Respondent’s account of why he registered the Domain Name, unsupported by any evidence of actual preparations to launch a web business devoted to extreme anal sex and the funding of its injured enthusiasts, cannot be credited on its own. First, for reasons discussed below, Respondent lacks credibility in general. Second, the Panel finds it too coincidental to accept on its face the notion that someone who is about to lose his job at the hands of a company called RoundShield would also have a separate interest in a peculiar sexual fetish focused on the “roundshield.” Third, as Complainant points out in its supplemental submission, the Urban Dictionary lists no entry for the term “roundshield,” and a Google search yields no evidence that “roundshield” is a term associated with the meaning Respondent suggests. Fourth, Respondent has no explanation why he also registered several domain names containing the LES BORDES mark, which fact reinforces the likelihood that Respondent’s stated reasons for registering the Domain Name is a pretext.
One reason why the Panel concludes that Respondent lacks credibility is his insistence that he was not part of Les Bordes’ management team. This is belied by the terms of the consultancy agreement, which states that Respondent was required to “act as Finance Director.” Complainant also placed into the record an email from Respondent referring to himself as the “Finance Director” of Les Bordes, and Respondent’s business card, which says the same thing.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith.
The Panel first finds it clear that Respondent had Complainant’s ROUNDSHIELD mark in mind when registering the Domain Name. Respondent, given his position with Les Bordes, was doubtless deeply involved in the loan made by Complainant and the efforts over the years to extend and renegotiate it.
Notwithstanding Respondent’s uncorroborated story, which the Panel finds as fanciful as any trademark ever was, the Panel finds that Respondent used the Domain Name in bad faith within the meaning of Policy paragraph 4(b)(i), quoted above.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <roundshieldfund.com> be transferred to Complainant.
Robert A. Badgley
Date: January 28, 2019