WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nuveen Investments, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Name Redacted
Case No. D2020-0091
1. The Parties
Complainant is Nuveen Investments, Inc., United States of America (“United States”), represented by Quarles & Brady LLP, United States.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Name Redacted1.
2. The Domain Name and Registrar
The disputed domain name <nuveencapital.com> 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 15, 2020. On January 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2020, 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 Complainant on January 20, 2020 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 January 24, 2020.
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 January 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 17, 2020.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 9, 2020. 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 is the owner of registrations for the word service mark NUVEEN on the Principal Register of the United States Patent and Trademark Office (USPTO), including registration number 2,313,480, registration dated February 1, 2000, in international class (IC) 36, covering “financial, investment and underwriting services in the field of stocks, bonds and securities”, and; registration number 5,557,727, registration dated September 11, 2018, in ICs 35, 36 and 41, covering various financial advisory and management services. Complainant is also the owner of registrations for the word mark NUVEEN in jurisdictions outside the United States.
Complainant is an investment advisory and management service doing business in a substantial number of countries. In addition to providing advisory and asset management services across a range of sectors, including bonds, equities, real estate and commodities, Complainant offers a variety of investment products such as exchange traded funds (ETFs) and collateralized debt obligations (CDOs). Complainant offers and sells its products to retail and institutional investors, primarily through intermediaries such as broker-dealers. Complainant operates a commercial website at <nuveen.com>.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, Respondent registered the disputed domain name on September 13, 2019.
Respondent uses the disputed domain name to direct Internet users to a website that is headed with the term “Nuveencapital”. The website offers prospective investors a Bitcoin investment plan with a high daily rate of return and a minimum deposit of USD 100. It also promotes the opportunity to become an affiliate and representative that will earn a 10 or 20% commission without the need to maintain an active deposit. The website includes links for creating accounts and logging in. There is a link to Nuveencapital’s purported certificate of incorporation that includes several misspellings, including for the name of the country of incorporation (i.e. “England and Wale”).
Respondent’s registration information for the disputed domain name uses the name and city location of an actual employee of Complainant who has no association with Respondent. On its website contact information page, Respondent uses a United Kingdom address where Complainant (and not Respondent) maintains offices.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the trademark NUVEEN and that the disputed domain name is confusingly similar to that trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) use of a domain name for illegal activity such as phishing or impersonation, as in this case, cannot establish rights or legitimate interests, and (2) Respondent’s use of the disputed domain name to impersonate and defraud individuals of money does not establish rights or legitimate interests.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) the fraudulent scheme carried out by Respondent is quintessential evidence of bad faith; (2) Respondent is using the disputed domain name to pass itself off as Complainant to trick individuals into sending Respondent personal information and money; (3) Respondent obtained the disputed domain name primarily for the purpose of disrupting Complainant’s business; (4) Respondent is using the disputed domain name to intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion; (5) Respondent attempted to obfuscate and confuse others by appearing to be Complainant through false contact information, and; (6) Respondent hid behind a privacy service while carrying out its illegitimate activities.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email, fax and physical addresses provided in its record of registration. It appears that express courier physical delivery could not be completed because of false and/or incomplete address information provided by Respondent (although it appears that delivery was successful to one of two privacy service addresses). The fax number provided by Respondent was not operational. There is no indication in the record of this proceeding of difficulties in transmitting email to the addresses provided by Respondent, although there is no express record of receipt. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the service mark NUVEEN, including by registration at the USPTO and use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of rights. The Panel determines that Complainant has established rights in the service mark NUVEEN.
The disputed domain name directly incorporates Complainant’s NUVEEN service mark and appends the term “capital”. The direct incorporation of Complainant’s distinctive service mark suffices in the circumstances here to establish confusing similarity between Complainant’s service mark and the disputed domain name. In any case, addition of the term “capital” that is associated with Complainant’s line of business is not an obstacle to a finding of confusing similarity. The Panel determines that the disputed domain name is confusingly similar to Complainant’s service mark.
The Panel determines that Complainant has established rights in the service mark NUVEEN, and that the disputed domain name is confusingly similar to that service mark.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s use of the disputed domain name in connection with a website headed by Complainant’s distinctive service mark, that offers services in a line of business similar to that conducted by Complainant, along with using Complainant’s physical address in its contact information, suggests a deliberate attempt to mislead Internet users. Such use by Respondent does not constitute a bona fide offering of goods or services within the meaning of the Policy, and it does not establish rights or legitimate interests.
Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include that, “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 respondent’s] website or location or of a product or service on [the respondent’s] website or location”.
Respondent is using the disputed domain name in connection with a website headed by Complainant’s distinctive service mark, offering services in a line of business similar to that conducted by Complainant, and Respondent is using Complainant’s physical address in its contact information. Respondent is requesting that customers establish accounts and deposit money. Under the circumstances this strongly suggests a deliberate attempt by Respondent to mislead and defraud Internet users. Respondent has not attempted to justify its conduct. The Panel determines that Respondent registered and is using the disputed domain name in bad faith by intentionally attempting to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) 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 <nuveencapital.com> be transferred to Complainant.
For purposes of properly executing this order, the Panel also directs the Registrar’s attention to Annex 1 hereto that identifies the individual listed as registrant of the disputed domain name in the formal record of registration, and orders that the disputed domain name, <nuveencapital.com>, be transferred from that individual to Complainant.
The Panel directs the Center that Annex 1 shall not be published along with this decision.
Frederick M. Abbott
Date: March 15, 2020
1 Based on the evidence in the case file it appears to the Panel that an initially-named individual Respondent was not the registrant-in-fact of the disputed domain name. In light of apparent identity theft, the Panel has redacted that individual Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name which includes the name of the registrant listed in the Registrar’s WhoIs database. The Panel authorizes the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See, e.g., ASOS plc. v. Name Redacted, WIPO Case No. D2017-1520.