WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clarium Capital Management, LLC v. Contact Privacy Inc. Customer 0152053957 / Roelof Botha
Case No. D2019-2696
1. The Parties
The Complainant is Clarium Capital Management, LLC, United States of America (“United States”), represented by Akin, Gump, Strauss, Hauer & Feld, United States.
The Respondent is Contact Privacy Inc. Customer 0152053957 / Roelof Botha, Serbia.
2. The Domain Name and Registrar
The Disputed Domain Name <clarium-capital.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2019. On November 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 5, 2019, 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 November 7, 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 November 8, 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 November 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 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
The Complainant is an American investment company that manages private investment funds.
The Complainant has been using the trademark CLARIUM since 2002, in connection with investment and portfolio management services.
The Complainant is the owner of the following trademarks registrations:
- United States Patent and trademark Office: CLARIUM (word), Registration No. 3711734 on IC class 36, registered on November 17, 2009;
- European Union Intellectual Property Office: CLARIUM (word), Registration No. 8254922 on IC class 36, registered on December 24, 2009;
- Canada Trademark Office: CLARIUM (word), Registration No. TMA772847 on IC class 36, registered on July 23, 2010.
In addition, the Complainant also owns the domain name <clarium.com>, which has been registered since 1999.
The Disputed Domain Name <clarium-capital.com> was registered on July 7, 2018.
The Respondent used the Disputed Domain Name to offer investment services under the name “Clarium Capital”. Moreover, the Complainant states that the Respondent had taken and used information posted on the Complainant’s own website. Moreover, the Complainant declares that the Respondent’s website revert to the Complainant’s website “www.clarium.com”, including the “Log in” section.
At the present, the Respondent’s website has no information or possible interaction. Also, the Respondent’s website does not contain any information or any kind of offer of goods or services.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant claims that the Disputed Domain Name incorporates Complainant’s CLARIUM and CLARIUM CAPITAL trademarks in its entirety.
As a consequence, the Disputed Domain Name is confusingly similar to the Complainant’s trademarks.
Rights or legitimate interests
The Complainant alleges that the Respondent lacks rights and legitimate interests in the Disputed Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its trademark.
The Complainant further states that the Respondent is not making a legitimate or fair use of the Disputed Domain Name. On the contrary, the Respondent behavior shows a clear intent to perpetrate investment fraud and confuse the public into believing that its website is that of the Complainant.
The Complainant claims to have reached this conclusion supported by an Austrian regulator alert found during routine internet searches. On the report, the Austrian regulator alert Austrian citizens that the unknown operator of the domain <clarium-capital.com> was not licensed to provide investment services, and as a result the operator was not permitted to provide commercial investment advice in relation to financial instruments.
Finally, the Complainant states that the website linked to the Disputed Domain Name does not include nor reveal the identity of the website provider, but reflects the information of the Complainant’s own website.
Registration and use in bad faith
The Complainant submits that the Respondent registered the Disputed Domain Name in bad faith. Despite having no rights to use or register the trademark CLARIUM or CLARIUM CAPITAL, the Respondent registered a domain name which incorporates Complainant’s CLARIUM trademark.
In addition, the Complainant further states that the Respondent is using the Disputed Domain Name to try and commit financial fraud. In this sense, the Respondent registered and used the Disputed Domain Name with the intention to attract investors to its website by creating a likelihood of confusion with the Complainant’s trademark.
The Complainant refers to itself as “Clarium” or “Clarium Capital” and is commonly referred to as both “Clarium” and “Clarium Capital” by members of the general public as well as by member of the financial industry and the media. Also, the Complainant alleges that the trademark CLARIUM is inherently distinctive as applied to investment portfolio management products and services. Thus, the registration and use of the Disputed Domain Name constitutes bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(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.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Disputed Domain Name <clarium-capital.com> is confusingly similar to the Complaint’s trademarks, since it incorporates the Complainant’s trademark in its entirety.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) Before any notice to you of the dispute, your use of, 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 (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 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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark. The Complainant has (prior) rights in the trademark which precede the Respondent’s registration of the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but he did not reply to the Complainant’s contention.
In addition, the Panel finds that the similarity of the Disputed Domain Name with the Complainant’s CLARIUM trademarks linked with the website at the Disputed Domain Name carries a risk of association or affiliation with the Complainant’s trademark which is not avoided by the disclaimer.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered in 2018 several years after the Complainant registered its trademarks and own domain name.
The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its trademarks. Neither the Respondent is authorized to offer investment management services on behalf of the Complainant. Consequently, the Respondent’s offer of the service pretending to be the Complainant is conducted in manifest bad faith.
In addition, the Complainant submitted evidence that the Respondent’s website creates the impression as to be the Complainant’s own website, as it contains the Complainant’s information and a portion of the website revert to the Complainant’s actual website “www.clarium.com”. Thus, Internet users might have well been under the impression that it is a website created and operated by the Respondent with the Complainant’s consent.
Moreover, the fact that the Respondent appears to have registered the Disputed Domain Name to try and commit financial fraud clearly constitutes bad faith.
The circumstances in the case indicates that the Respondent was well aware of the Complainant’s trademarks when registering the Disputed Domain Name and it has created a likelihood of confusion with the Complaint’s trademarks and website in order to attract investors for his own gain.
Due to this conduct, it is obvious that the Respondent intentionally created likelihood of confusion with the Complainant’s trademarks and website in order to attract investors for his own gain, in line with paragraph 4(b)(iv) of the Policy.
Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Name 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 Disputed Domain Name <clarium-capital.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: December 30, 2019