WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Capital Fund Management Société Anonyme v. WhoisGuard Protected, WhoisGuard, Inc. / Daniel Lopez
Case No. D2019-0054
1. The Parties
The Complainant is Capital Fund Management Société Anonyme of Paris, France, represented by Dechert (Paris) LLP, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Daniel Lopez of Come, Benin.
2. The Domain Name and Registrar
The disputed domain name <capitalfund-manag.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2019. On January 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 10, 2019, 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 the Complainant on January 15, 2019, 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 amendment to the Complaint on January 15, 2019.
The Center verified that the Complaint together with the amendment to 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 January 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2019.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 14, 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
The Complainant is a French private company headquartered in Paris. According to the Wikipedia article on the Complainant, it is a global asset management company founded in 1991, which currently has offices in Paris, New York City, London, Tokyo, and Sydney, with some 200 employees managing USD 11 billion in assets for institutional investors and financial advisors. The Complainant operates a website with English and Japanese versions at “www.cfm.fr” (the “Complainant’s website”).
The Complainant holds French trademark registration number 3752040 (registered effective July 6, 2010) for a “semi-figurative” mark with the textual elements CFM and CAPITAL FUND MANAGEMENT.
The Domain Name was registered on May 25, 2018, in the name of the domain privacy service offered by the Registrar. After receiving notice of this dispute, the Registrar identified the registrant as the Respondent Daniel Lopez of Come, Benin. The Registrar and privacy service have expressed no interest in the Domain Name and have not filed a Response. Hence, in this Decision the “Respondent” will hereafter signify Mr. Lopez. The Respondent has not replied to communications from the Complainant or the Center and has not submitted a Response in this proceeding.
The Domain Name resolves to a fully developed website (the “Respondent’s website”) in four language versions, French, English, German, and Romanian. The website features icons for five popular social media platforms, suggesting plans to use those online platforms as well. Headed “CFM”, the Respondent’s website advertises loans for individuals and small businesses, available through online credit applications processed within 24 hours. Under the heading “Who We Are?” the site claims that “CAPITAL-FUND-MANAGEMENT is the leading French company in the field of finance lending for several years …” The “Contact Details” page does not give a postal address or telephone number for the website operator. Instead, it provides a website message form and an email address using the Domain Name as the email domain. It also lists the Complainant’s SIREN number from the official French company registry.
The “Procedure” page of the Respondent’s website explains that after completing a loan application online, the applicant is required to pay “bank charges” that “allow the bank to establish the different contracts to the various ministries, to legalize the necessary documents and to pay the costs of the credit transfer on your account”.
The Complaint reports that individuals who believed they were dealing with the Complainant have contacted the Complainant inquiring about their expected loan proceeds after they paid the requested “administrative fees”. A formal notice from one such individual demanding reimbursement of such charges from the Complainant is attached to the Complaint.
The Complainant has reported the Respondent’s website to the French judicial authorities responsible for investigating cybercrime. Nevertheless, the Respondent’s website remains active at the time of this Decision.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to its registered CAPITAL FUND MANAGEMENT trademark, as the addition of a hyphen and dropping the last few letters of the word “management” are insufficient to avoid confusion.
The Complainant argues that the Respondent cannot be deemed to be using the Domain Name in connection with a bona fide offering of goods and services, as it appears to be operating a fraud scheme using the Complainant’s name and company registration number to deceive Internet users and defraud them of money sent as administrative fees for loans that are not forthcoming. This also must be considered bad faith under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Complainant indisputably holds a registered “semi-figurative” trademark that prominently features the textual element CAPITAL FUND MANAGEMENT. The Domain Name uses these English dictionary words in the same order, inserting a hyphen and abbreviating the final word. The overall impression is quite similar, reinforced by the fact that the Domain Name resolves, as does the Complainant’s domain name, to a financial services website purportedly operated by a French company with an identical English name. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. Id.
Accordingly, the Panel finds the Domain Name confusingly similar to the Complainant’s registered trademark for purposes of the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case by establishing its trademark rights, confusing similarity, and an apparently fraudulent use of the Domain Name impersonating the Complainant’s name and company registration number on the Respondent’s website. This shifts the burden to the Respondent. The Respondent has not come forward to assert any rights or legitimate interest in the Domain Name, and none are evident from a perusal of the Respondent’s website.
The Panel concludes that the Complainant has established the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following cited by the Complainant (in which “you” refers to the registrant of the domain name):
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor …”
This paragraph may be relevant, but it is not clear that the Respondent is genuinely in the financial services business or interested in disrupting the Complainant’s business. It appears more likely on this record that the Respondent uses the Complainant’s name and reputation and false contact details, including the Complainant’s company registration, to attract Internet users and win their confidence, ultimately defrauding some of them by taking fees from them without delivering loans. This more readily fits the pattern of the Policy, paragraph 4(b)(iv):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The examples in paragraph 4(b) are not exclusive, and the Panel finds that the evidence of a probable fraud scheme, combined with the Respondent’s conduct in appropriating the Complainant’s name and registration number on its website and its failure to reply to communications or submit a Response, all support the inference of bad faith in registering and using the Domain Name.
The Panel concludes that the Complainant has established the third element of the Complaint.
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, <capitalfund-manag.com>, be transferred to the Complainant.
W. Scott Blackmer
Date: February 28, 2019