WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Quilter plc v. WhoisGuard Protected, WhoisGuard, Inc. / John Todorov
Case No. D2020-0199
1. The Parties
The Complainant is Quilter plc, United Kingdom (“United Kingdom” or “UK”), represented by Allen & Overy LLP, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / John Todorov, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <quilterprivate.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 27, 2020. On January 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 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 the Complainant on January 29, 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 30, 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 February 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2020.
The Center appointed Gareth Dickson 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
The Complainant is a provider of advice, investments and wealth management in the UK and internationally. It operates, inter alia, in the private client space and has done under the QUILTER mark, including online via its website “www.quilterpca.co.uk”, following a rebranding that was announced in November 2017.
The Complainant or group companies operating with its permission are owners of a large number of trade mark registrations for QUILTER around the world, including:
- United States trade mark registration number 5816158, registered on July 30, 2019;
- European Union trade mark registration number 017069337, registered on May 4, 2018; and
- European Union trade mark registration number 008461295, registered on January 31, 2010 (the “Mark”).
The disputed domain name was registered on October 23, 2019. It does not currently resolve to an active website but has in the past been used to direct Internet users to the Complainant’s own website, while also being used in email services.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Mark since the most prominent textual element of that disputed domain name is the identical word “Quilter” and the addition of the word “private” in combination with “Quilter” enhances the likelihood of confusion owing to the Complainant’s activities as private client advisors.
The Complainant submits that in light of its recently rebranding customers may perceive any minor modifications to the Mark as connected to the restructuring and rebranding of the business. It argues that the Respondent is taking advantage of the recent re-brand to confuse Internet users.
The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the grounds that the Respondent is not using it in connection with a bona fide offering of goods or services, is not commonly known by the disputed domain name and is not making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
The Complainants states that the Respondent originally set up the disputed domain name to redirect Internet users to an official website run by the Complainant, accessed via the domain name <quilterinvestors.com>, to increase the likelihood that consumers will confuse the disputed domain name for an official offering of the Complainant and with a view to defrauding consumers. The re-direction was halted in December 2019, following the Complainant reporting it to the Registrar. The disputed domain name has not since resolved to any web page and an error message states “DNS error (the host name of the page you are looking for does not exist)”.
The Complainant also alleges that the Respondent knew or ought to have known of the Mark when registering the disputed domain name, in light of the Marks being registered and well known in Europe, where the Respondent lists its address. Furthermore, the fact that the disputed domain name includes the word “private” in addition to “Quilter” indicates that the Respondent is aware of the Complainant’s business.
The Complainant believes that the Respondent registered and is using the disputed domain name in bad faith and contends that the Respondent registered it primarily for the purpose of selling it, to prevent the Complainant from registering the disputed domain name, and/or for use in current and future phishing operations. In particular, the Complainant has submitted evidence of an email sent in November 2019 from the disputed domain name to a member of the public, which represents that it is from a named investment director at Quilter Cheviot Investment Management, a company related to the Complainant. The email asks for the recipient to submit personal information via an attachment, in the form of a bond, in a clear phishing exercise.
The Complainant argues that even if none of the above proves bad faith, passive holding can itself be considered to be bad faith use of a domain name.
Finally, the Complainant notes that itwas unable to verify any of the Respondent’s contact details as provided by the Registrar since the UK postcode provided does not exist and the phone number appears disconnected.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
c) the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is recognisable within it. The addition of “private” in the disputed domain name does not prevent in any way a finding of confusing similarity. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not alter this conclusion.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark is neither generic nor descriptive but is sufficiently distinctive of the Complainant for its goods and services to make a coincidental adoption by the Respondent highly unlikely.
There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it.
Furthermore, the use of a domain name to gather personal data from consumers through deception can never constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.13.1 of the WIPO Overview 3.0 states that: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. Such consideration applies here. It is notable that while the Respondent was using the disputed domain name for email phishing, it was also using that name to direct users to the Complainant’s own website, in case any of them might question the origin of the email seeking their personal information.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel notes that the disputed domain name was registered after the Mark was registered in various jurisdictions and after a press release about the Complainant’s business rebranding to use the QUILTER name, and accepts that the disputed domain name was chosen by reference to the Mark. Moreover, the Panel finds that the addition of “private” in the disputed domain name was intended to refer to the private client business of the Complainant and to be perceived as such by Internet users. As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name. Accordingly, the Panel finds that the Respondent’s registration of the disputed domain name was in bad faith.
The disputed domain name is also very clearly being used in bad faith. Section 3.1.4 of the WIPO Overview 3.0 states: “[…] given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”. The disputed domain name is being used to email consumers and seek disclosure of their personal data by impersonating the Complainant. None of these is an acceptable use of the Complainant’s trade marks.
For completeness, the Panel notes that although the disputed domain name is no longer directing Internet users to the Complainant’s website, the Panel can still find that the disputed domain name is being used in bad faith under the doctrine of passive holding. Section 3.3 of the WIPO Overview 3.0 states that relevant factors to finding bad faith in passive holding include:
“(i) the degree of distinctiveness or reputation of the complainant’s mark;
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;
(iii) the respondent’s concealing its identity […], and
(iv) the implausibility of any good faith use to which the domain name may be put.”
The Panel notes that the Mark is distinctive of the Complainant and further notes that the Respondent has not participated in these proceedings or sought to explain its registration and use of the disputed domain name, and has sought to conceal its identity through a privacy service and the use of false contact details. Furthermore, there is no conceivable use of the disputed domain name by the Respondent that would not be illegitimate.
Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name to send emails which are very intended to, and very likely to, confuse the recipient of such emails as to their origin and to trick them into providing personal information is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using 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 <quilterprivate.com> be transferred to the Complainant.
Date: March 24, 2020