WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wellington Management Company LLP v. Steve Becker, “Wellington-Management”
Case No. D2020-0579
1. The Parties
The Complainant is Wellington Management Company LLP, United States of America (“United States”), represented by Ropes & Gray LLP, United States.
The Respondent is Steve Becker, “Wellington-Management”, Germany.
2. The Domain Name and Registrar
The disputed domain name <wellington-management.net> is registered with Shinjiru Technology Sdn Bhd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2020. On March 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 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 March 10, 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 March 10, 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 March 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2020.
The Center appointed Andrew F. Christie as the sole panelist in this matter on May 7, 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 was founded in 1928 – and was incorporated in Philadelphia, Pennsylvania, United States, in 1933 – to provide investment advisory and asset management services. The Complainant and its predecessors and affiliates have used the name “Wellington Management” since 1959. The Complainant is one of the largest independent asset management and investment advisors in the world, managing over USD 1.1 trillion in assets and serving over 2,200 institutional clients worldwide. It has affiliated offices which use the name “Wellington” or “Wellington Management” in: China; Hong Kong, China; Canada; the United Kingdom; Germany; Luxembourg; Switzerland; Australia; Japan; and Singapore.
The Complainant is a subsidiary of Wellington Management Group LLP. Wellington Management Group LLP is the parent company of Wellington Group Holdings LLP, which owns multiple trademark registrations throughout the world for the word trademark WELLINGTON MANAGEMENT, including United States Trademark Registration No. 3,671,359 (registered on August 25, 2009), and European Union Trademark Registration No. 008544819 (registered on February 17, 2010). The Complainant has registered over 120 domain names related to its business, including <wellingtonmanagement.com>, <wellingtonmanagement.cn> and <wellingtonmanagement.net>.
The disputed domain name was registered on January 15, 2020. The Complainant has provided a screenshot, which appears to be dated March 2, 2020, showing the website to which the disputed domain name then resolved. This website has the title “Wellington - Management”, and states that it offers “Audit & Assurance, Investment Planning and Real Estate” services and that “Wellington Management conducts portfolio management and research, and supports clients in countries in the UK, Europe, the Middle East, and Africa”. The disputed domain name currently appears to be inactive and does not resolve to a website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights because: (i) the Complainant, by virtue of its affiliate relationship with Wellington Group Holdings LLP, has protectable rights in the WELLINGTON MANAGEMENT trademark registered by Wellington Group Holdings LLP; (ii) the disputed domain name merely adds a hyphen and the generic
Top-Level Domain (“gTLD”) “.net” to the registered WELLINGTON MANAGEMENT trademark; and (iii) the use of the gTLD “.net” is irrelevant to the identical or confusingly similar analysis, and replacing a space with a hyphen is also immaterial to the analysis.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) there is no relationship or affiliation between the Complainant and the Respondent giving rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating the registered WELLINGTON MANAGEMENT trademark; (ii) the website resolving from the disputed domain name is a sham website, which is essentially a WordPress template with no genuine substantive content; (iii) even if the Respondent used the disputed domain name to offer financial services, such use could not amount to a bona fide offering of services because such services would compete with the Complainant and the disputed domain name is identical to the WELLINGTON MANAGEMENT trademark; and (iv) both prior to and subsequent to the date of registration, the Respondent has not used or prepared to use the disputed domain name with any bona fide offering of goods or services, has not been commonly known by the disputed domain name, and has not made any noncommercial or fair use of the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent registered the disputed domain name without the Complainant’s authorization on January 15, 2020, 87 years after the Complainant was founded, and more than 53 years after the WELLINGTON MANAGEMENT trademark was first used in commerce; (ii) it is sufficient evidence of bad faith registration and use that the Respondent, without any relationship to the Complainant, registered the disputed domain name that is confusingly similar to the famous WELLINGTON MANAGEMENT trademark; (iii) by using the WELLINGTON MANAGEMENT trademark to purportedly offer financial services, the Respondent is creating a substantial likelihood of confusion that the Complainant is responsible for, or affiliated with, the disputed domain name; and (iv) the current inactive status of the website resolving from the disputed domain name has no bearing on the bad faith registration and prior use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
As stated in section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a trademark owner’s affiliate, such as a subsidiary of a parent or of a holding company, is considered to have rights in a trademark under the UDRP for the purposes of standing to file a complaint. The Complainant is a subsidiary of the parent company of the owner of the trademark registrations for the word trademark WELLINGTON MANAGEMENT. The Panel is satisfied that the Complainant has rights in the WELLINGTON MANAGEMENT trademark, and that it therefore has standing to file this Complaint.
Once the gTLD “.net” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the registered word trademark WELLINGTON MANAGEMENT, with a hyphen replacing the space between the two words. The trademark, in this slightly modified form, is clearly recognizable within the disputed domain name. The addition of a hyphen between the two words that make up the trademark does not avoid the confusing similarity of the disputed domain name with the trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use the WELLINGTON MANAGEMENT trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The disputed domain name currently appears to be inactive and does not resolve to a website. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website that purported to be “Wellington - Management” offering “Audit & Assurance, Investment Planning and Real Estate” services. Upon a review of the evidence, and in the absence of any refutation from the Respondent, the Panel accepts the Complainant’s assertion that this website was a sham.
According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Although the registrant organization name appears to be “Wellington-Management” as confirmed by the Registrar, there is no evidence in the case file showing that the Respondent is commonly known by the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered many years after the WELLINGTON MANAGEMENT trademark was first registered, and many decades after the Complainant began providing goods and services under the name “Wellington Management”. The evidence on the record provided by the Complainant with respect to the use of the WELLINGTON MANAGEMENT trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the WELLINGTON MANAGEMENT trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used 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 <wellington-management.net> be transferred to the Complainant.
Andrew F. Christie
Date: May 21, 2020