WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Algebris Investments (Luxembourg) S.à r.l. v. WhoisGuard Protected, WhoisGuard, Inc. / kinglemuel mbanugo
Case No. D2020-0112
1. The Parties
The Complainant is Algebris Investments (Luxembourg) S.à r.l., Luxembourg, represented by Barker Brettell LLP, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard Inc., Panama / kinglemuel mbanugo, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <algebris-investment.com> (“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 16, 2020. On January 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 17, 2020, 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 20, 2020 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 amended Complaint on January 20, 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 the Respondent of the Complaint, and the proceedings commenced on January 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2020.
The Center appointed Ellen B. Shankman as the sole panelist in this matter on February 19, 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
The date of the Domain Name registration was confirmed by the Registrar to be December 3, 2019.
The trademark ALGEBRIS serves as a house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions worldwide.
The Complainant provided evidence of multiple trademark registrations for the mark ALGEBRIS including, inter alia, European Union trademark Registration No. 004996096 (registered on September 20, 2007) and ALGEBRIS INVESTMENTS including European Union trademark Registration No. 013316054 (registered on February 11, 2015) both for word marks and logos that predate the date of the Domain Name registration for a variety of financial services.
The Panel also conducted an independent search to determine that the Domain Name resolves to a page with a “404” error message, and the website currently appears to be inactive. According to the Complaint, the Domain Name resolved to a website impersonating the Complainant, and informed the public that the website belonged to the Algebris Group and it was set up for doing business in bitcoin.
5. Parties’ Contentions
The Complainant is part of the Algebris Group, an independent global asset management firm. The Algebris Group maintains offices in London, Boston, Singapore, Tokyo, Milan and Luxembourg. Algebris (UK) Limited is authorised and regulated by the Financial Conduct Authority and operates in Italy through its Milan branch. Algebris Investments (US) Inc. is a SEC registered Investment Adviser. Algebris Investments (Asia) Pte. Ltd is a Licensed Fund Management Company with the MAS. Algebris Investments K.K. is licensed by the Financial Services Agency. Algebris Investments S.à.r.l. is authorised and supervised by the CSSF. This is a highly regulated industry, designed to protect consumers. The Complainant alleges that it has established a substantial reputation and goodwill in its name and in the services offered through its longstanding use of ALGEBRIS and the ALGEBRIS INVESTMENTS Logo, and on its website (“www.algebris.com”).
The Complainant alleges that the Respondent, unlike the Complainant, has no rights or legitimate interests in the Domain Name, which is identical to the Complainant’s trademark and includes the term “investment” which adds to the confusion.
Moreover, the Respondent is using the Domain Name for abusive behaviour intended to result in commercial gain, capitalizing on the Complainant's reputation by misleadingly diverting consumers to its website. The deceptive indications employed by the Respondent alleged in the Complaint and supported by evidence are discussed in the relevant sections below. The Complainant contends that the abusive website hosted on the Domain Name encouraged consumers to invest in bitcoin and to sign up to “affordable plans” suggesting that visitors to the website invest anything from USD 30 to USD 30,000. This has the additional effect of tarnishing the trademark at issue, by associating it with fraudulent activity and a scam. Moreover, the financial services proffered by the Respondent on its website related primarily to bitcoin. The Complainant is not involved in any bitcoin business and, in particular, the CEO of the Complainant has widely publicized his dislike for bitcoin. Consequently, an association with bitcoin now would be damaging to the Complainant given that it would deceive consumers into thinking that the Complainant has changed its business strategy so that it now operates in a sector, which it once denounced as fraudulent.
By using the Domain Name, the Respondent has intentionally attempted to attract, for the purposes of commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source and affiliation of its website. The Complainant provided evidence that the Respondent is explicitly telling consumers that it is part of the Algebris Group and that this new part of the business, specialising in bitcoin, was split off in December which is why there is a new website, and provided additional evidence of the “cloning” of the Complainant’s website.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark ALGEBRIS, in respect of financial goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the descriptive word “investment” to the term “algebris” does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith for fraudulent activity. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests the transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for ALGEBRIS.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the term “investment” to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark”.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name <algebris-investment.com> and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The Complainant contends that before notice to the Respondent of the dispute there has been no evidence of 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. Further, the Respondent has not been commonly known by the Domain Name. It has no trademark registered for the name and it only started using the name when it registered the Domain Name, i.e. on December 3, 2019. As such, it is not possible for the Respondent to have built up any rights or legitimate interests and/or any goodwill.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under the Policy, evidence of registration and use in bad faith may be found that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 of a product or service on its website or location.
The Panel agrees with the Complainant’s contention that by using the Domain Name, the Respondent has intentionally attempted to attract, for the purposes of commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source and affiliation of its website. The support for the finding of actual confusion was provided by the Complainant with evidence that contains a screenshot from a concerned customer asking the Complainant to verify the Respondent’s (false) claims that it is part of the Algebris Group. The Domain Name was registered by the Respondent primarily for this purpose as its illegal activities were started shortly after registering the Domain Name.
The Panel finds that Respondent’s use of the Domain Name takes unfair advantage of the reputation that the Complainant has established in its trademark, and is detrimental to its business, and indeed intended fraudulent activity.
The Panel finds that the Complainant provides clear evidence that the Respondent is trying to deceive the public that it is a part of the Algebris Group, thereby committing passing off and infringement, as well as consumer deception and fraud. Indeed, the Complainant has had to issue a fraud warning to its customers regarding the Respondent’s website and has made formal reports to the criminal and financial authorities to try to protect the same. To this end, the report shows that the Financial Conduct Authority has published (as of January 15, 2020) a formal warning with regard to the Respondent’s website, referring to it as a “clone of authorised firm” i.e. a clone of the Complainant and its group.
The Complainant also provided persuasive evidence that this is a pattern of abusive behaviour by the Respondent. Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark ALGEBRIS and uses it for the purpose of misleading and diverting Internet traffic, as well as seeking to capitalize on this confusion.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant’s trademarks, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) 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 Domain Name <algebris-investment.com> be transferred to the Complainant.
Ellen B Shankman
Date: February 23, 2020