WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Numis Securities Limited v. Joel McKinze
Case No. D2020-1010
1. The Parties
The Complainant is Numis Securities Limited, United Kingdom, represented by Shepherd and Wedderburn LLP, United Kingdom.
The Respondent is Joel McKinze, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <numisbitbond.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 April 24, 2020. On April 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 May 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2020. The Respondent sent a communication on May 27, 2020, but did not submit a formal response. Accordingly, the Center notified the Parties the Commencement of Panel Appointment on May 29, 2020.
The Center appointed Andrew F. Christie as the sole panelist in this matter on June 4, 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 one of the United Kingdom’s leading institutional stockbrokers and corporate advisors, and a leading provider of capital for United Kingdom-listed companies. It is listed on the United Kingdom’s Alternative Investment Market, and has offices in London and New York.
The Complainant is the owner of European Union Trademark Registration No. 017926202 for the word trademark NUMIS (registered on December 7, 2018). The Complainant has registered many domain names containing their NUMIS trademark, including <numis.com>, <numiscorp.co.uk>, and <numiscorporation.eu>.
The disputed domain name was registered on October 14, 2019. The Complainant has provided undated screenshots of the website to which the disputed domain name at some time resolved. Those screenshots show a home page containing text under various headings including “Welcome to Numis”, “About Numis Bitcoin based Bond Program”, and “Advantages of investing with us”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) it contains the word NUMIS, and the word NUMIS is the distinctive element of the disputed domain name; (ii) it is very likely that the disputed domain name will be widely understood as a reference to the Complainant; (iii) there is a clear likelihood of confusion between the disputed domain name and the Complainant’s trademark; and (iv) it is evident that the Respondent has actively sought to create this likelihood of confusion in order to further a fraudulent criminal enterprise, a matter which the Complainant has reported to the National Crime Agency in the United Kingdom.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent has made no attempt to use the disputed domain name in connection with a legitimate offering of goods or services; (ii) the disputed domain name has been used to fraudulently represent that the Respondent is the Complainant in order to lend legitimacy to criminal activity; and (iii) as the distinctive element of the disputed domain name is identical to the Complainant’s trademark, the Respondent’s conduct amounts to trademark infringement under the United Kingdom’s Trade Mark Act 1994, and is actionable under the United Kingdom common law of passing off and as an instrument of fraud.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) to the Complainant’s knowledge, the Respondent has made no attempt to use the disputed domain name in connection with a legitimate offering of goods or services; (ii) the disputed domain name has hosted a website purporting to offer bitcoin trading services, which also includes a fraudulent association with the Complainant; (iii) the Complainant’s company details were listed on the website to which the disputed domain name resolved, including its United Kingdom Companies House filings, the address of its offices, and the identification of its employees and information about their employment history; (iv) the Complainant reported this matter to both the Financial Conduct Authority, who issued a warning notice advising of a possible fraud, and to the United Kingdom’s National Crime Agency; and (iv) the Respondent has fraudulently associated the disputed domain name with the Complainant and this association may be in order to lend legitimacy to criminal activity.
The Respondent did not file a formal response to the Complainant’s contentions. On May 27, 2020, the Center received a communication from the email address of the Respondent as confirmed by the Registrar in relation to the Complaint, stating “Hello We can give the domain to you, how much will you offer for this domain name. Thanks”
6. Discussion and Findings
A. Identical or Confusingly Similar
Once the generic Top-Level Domain (“gTLD”) “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark NUMIS followed by the word string “bitbond”. The Complainant’s word trademark NUMIS is clearly recognizable within the disputed domain name. The addition of the word string “bitbond”, which relates to the Complainant’s business in the financial services industry, does not avoid the confusing similarity between the disputed domain name and the Complainant’s word 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 its NUMIS 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 evidence provided by the Complainant shows that the disputed domain name is being used to resolve to a website that purports, falsely, to be an offering of the Complainant’s business. 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. 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 approximately 10 months after the Complainant registered its NUMIS trademark. The evidence on the record provided by the Complainant with respect to the use of its NUMIS 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 Complainant’s trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to impersonate the Complainant in an attempt to possibly effect a fraud on the general public. 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 <numisbitbond.com> be transferred to the Complainant.
Andrew F. Christie
Date: June 18, 2020