WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Greensill Capital (Pty) Limited and Greensill Capital (UK) Limited v. Lanae Mangini

Case No. D2020-1027

1. The Parties

The Complainants are Greensill Capital (Pty) Limited, Australia and Greensill Capital (UK) Limited, United Kingdom, represented by HGF Limited, United Kingdom.

The Respondent is Lanae Mangini, Canada.

2. The Domain Name and Registrar

The disputed domain name <greensills.com> is registered with Automattic Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2020. On April 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 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 May 8, 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 May 13, 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 May 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2020.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on June 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 Complainants state that Greensill Capital (Pty) Limited, Australia (the first Complainant) is the ultimate parent company of Greensill Capital (UK) Limited (the second Complainant) and that Greensill Capital (Pty) Limited owns all the intellectual property rights of the group of companies in which Greensill Capital (UK) Limited sits. The Complainants further state that these intellectual property rights include several trade mark registrations covering various jurisdictions including, by way of example, the following trade mark registrations:

These are collectively referred to as the “GREENSILL Marks”. The GREENSILL Marks have been extensively advertised and promoted globally and are used globally and significant global goodwill has been established in the business conducted under the GREENSILL Marks.

Greensill Capital (UK) Limited is the principal trading company within the group and has become one of the market leading providers of working capital finance for companies globally. It provides supply chain finance and other financial services to customers across Europe, North America, Latin America, Africa, and Asia and works with a host of banks and institutional investors to provide solid funding streams to underpin the process.

Finally, the Complainants’ main corporate website (of the group of companies of which they form a part) operates from “www.greensill.com” and that the domain name <greensill.com> was first registered on July 31, 2000 and has been operated by Greensill Capital (UK) Limited since 2011.

The Respondent registered the disputed domain name <greensills.com> on November 9, 2019 and currently resolves to a site that sells stamps.

5. Parties’ Contentions

A. Complainant

The Complainants assert their rights in the GREENSILL Marks. The Complainants contend that the disputed domain name is confusingly similar to their GREENSILL Marks, the former simply being a plural of the later.

The Complainants also contend that the Respondent has no legitimate interests in respect of the disputed domain name. In this respect, the Complainants contend that the content of the websites (at different Internet Service Providers (ISPs)) to which the disputed domain name previously resolved were a direct copy of the Complainants’ own website at “www.greensill.com”. The Complainants state that on two occasions Greensill Capital (UK) Limited filed takedown notices against the said websites with their respective ISPs, but the Respondent simply moved the website to a new ISP and restarted the same copy-cat website. However, as at April 17, 2020, the Complainants state that the website to which the disputed domain name resolved appeared to be an Israeli stamps website.

Further, the Complainants contend that the Respondent has no rights in respect of the disputed domain name. In this respect, the Complainant states that attempts to contact the Respondent have all failed and further investigations into the Respondent have failed to find any reference to the named Lanae Mangini.

Finally, the Complainants contend that the disputed domain name was registered and has been used in bad faith and in full knowledge of the Complainants’ rights. The Complainants assert that the Respondent copied their website and therefore contend that the Respondent registered the disputed domain name in order to prevent them from reflecting the GREENSILL Marks in a corresponding domain name. The Complainants further contend that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainants. In support, the Complainants again refer to the fact that the Respondents have engaged in a pattern of conduct of setting up a website which is a direct copy of the Complainants’ own website and then moving it to a new ISP when takedown notices were filed by the Complainants. The Complainants contend that this shows knowledge of the Complainants and their commercial activities on the part of the Respondent.

The Complainants also contend that the Respondent is using the disputed domain name for the purpose of intentionally attempting to attract, for commercial gain, Internet users to its website or other on-line locations, by creating a likelihood of confusion with the Complainants’ GREENSILL Marks as to the source, sponsorship, affiliation or endorsement of its website. The Complainants state that this applies to past copies of the Complainants’ website and to the present redirection.

Finally, the Complainants contend that the long-term goal of the Respondent is to sell, rent, or otherwise transfer the disputed domain name registration to the first Complainant who is the owner of the GREENSILL Marks or to a competitor of the Complainants, for valuable consideration in excess of its documented
out-of-pocket costs directly related to the disputed domain name. In support, the Complainants state that the website to which the disputed domain name currently resolves does not appear to be a bona fide offering of goods or services by the Respondent.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, a Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

That the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; and

That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

That the disputed domain name has been registered and is being used in bad faith.

A. Consolidation of Multiple Complainants

The Complainants have brought a single consolidated Complaint against the Respondent and have requested that consolidation be granted since both have a common and specific grievance against the Respondent and common conduct by the Respondent has impacted the Complainants in the same way.

Paragraph 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) sets out that in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. See also The Proctor & Gamble Company, The Gillette Company LLC v WhoisGuard Protected, WhoisGuard, Inc./Benson Edges / Garry Kent, WIPO Case No. D2019-1976). The burden of showing that consolidation is proper falls on the Complainants.

The Panel considers that the Complainants have provided sufficient evidence to support consolidating them. They share a legal interest and grievance: Greensill Capital (Pty) Limited is the ultimate parent company of Greensill Capital (UK) Limited. The disputed domain name has resolved to a website which was a direct copy of all elements (including the first Complainant’s GREENSILL Mark) of the main corporate website of the group of companies at “www.greensill.com” and therefore, the Respondent has engaged in contact that has affected both the Complainants’ rights in a similar fashion. The Panel therefore finds that consolidation of the Complainants would be equitable and procedurally efficient.

B. Identical or Confusingly Similar

The Complainants have provided evidence of the first Complainant’s registrations in relation to the GREENSILL Marks in Australia, China, Europe, Singapore, the United Kingdom and the United States, which date back to December 2014 at the earliest. The Complainants have also stated that use of the GREENSILL Marks first began in 2011. Accordingly, it is the Panel’s view that the Complainants have clearly and sufficiently demonstrated their rights in the GREENSILL Marks.

The Panel accepts that the disputed domain name is confusingly similar to the first of the Complainant’s GREENSILL Marks. First, the Panel considers that the term “greensills” is sufficiently recognizable as the plural of the GREENSILL Marks and therefore constitutes an obvious, or intentional misspelling of the GREENSILL Marks.

Secondly, the Panel considers that the Respondent’s registration of the disputed domain name is an example of typo-squatting. The addition of a single “s” in the disputed domain name plainly suggests a connection or association with the Complainants and may be considered indicative of the Respondent having the similarity with the Complainants’ GREENSILL Marks in mind when registering the disputed domain name. See ESH Strategies Branding, LLC v Kumpol Sawaengkarn, WIPO Case No. D2011-0843.

Finally, the Panel notes that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purposes of comparison under the first element.

The Panel therefore finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainants.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements:

That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or

That the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainants.

The Complainants have stated that on two occasions, Greensill Capital (UK) Limited has filed takedown notices against the websites to which the disputed domain name previously resolved and their respective ISPs. In support, the Complainants have referred to the Witness Statement of the Vice Chairman at Greensill Capital (UK) Limited (attached to the Complaint as Annex 4).

The Complainants have also stated that they have been unable to make contact with the Respondent using the details provided against the registration. In support, the Complainants have referred to the Witness Statement of the Chartered Trade Mark Attorney at HGF Limited and representative of the Complainants in this proceeding (attached to the Complaint as part of Annex 10). This suggests that the Respondent has provided false contact details.

The Panel considers that this evidence supports a finding that the Respondent is not sponsored by or affiliated with the Complainants in any way. The Panel also considers that this evidence supports a finding that the Complainants have not authorized the Respondent to use the GREENSILL Marks as “greensills”.

Further, the Complainants have provided as evidence, screenshots of the website to which the disputed domain name previously resolved (Annex 8 of the Complaint). The screenshots show that the Respondent has directly copied the Complainants’ main corporate website at “www.greensill.com”. It is notable that the GREENSILL Mark is clearly displayed on the website to which the disputed domain name resolves without the additional “s”. It is therefore evident from this evidence that the Respondent was, and is, aware of the Complainants and their GREENSILL Marks and does not have any rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainants have satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name (unrebutted by the Respondent) and accordingly finds paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainants.

D. Registered and Used in Bad Faith

The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons:

The Panel is satisfied that the Complainants’ GREENSILL Marks are well-known in the finance industry. As noted above, the Panel is also satisfied that the Respondent was aware of the Complainants and the GREENSILL Marks. This is evidenced by the facts that (a) the disputed domain name is a misspelling of the Complainants’ distinctive GREENSILL Mark, (b) the disputed domain name is almost identical to the Complainants’ own domain name <greensill.com> and differs only by the addition of an “s” to the word “greensill”, and (c) that after registration, the Respondent used the disputed domain name to host a website that was a direct copy of the Complainants’ own main corporate website, and included the Complainants’ GREENSILL Marks (spelled correctly). See also Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 which states that where a disputed domain name is “so obviously connected with such a well-known name and products … its very use by someone with no connection with the products suggests opportunistic bad faith”.

The Respondent has not responded to the Complaint and so has not provided any explanation as to why he or she had any claim to register a domain name containing a simple misspelling of the Complainants’ GREENSILL Marks. As noted above, the Panel considers that the disputed domain name is a typo-squatting registration which is itself evidence of a bad faith registration and is well established (see for example, Wikimedia Foundation Inc v. Domain Admin, Whois Privacy Corp. / Ryan G Foo, PPA Media Services, WIPO Case No. D2015-1705, Moneyweek Limited v he jianyi, WIPO Case No. D2015-1700).

The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons:

The Respondent’s previous use of the disputed domain name (prior to and even after the Complainants requested a website takedown) to redirect to a website which directly copied the Complainants’ main corporate website (including the Complainants’ GREENSILL Marks spelled correctly) is evidence of use in bad faith. Such use would likely result in consumer confusion or deception arising from the confusing similarity of the disputed domain name to the Complainants’ GREENSILL Marks. This confusion or deception would likely have been reinforced by the close similarity of the disputed domain name to the Complainants’ own domain name. Therefore, Internet users would likely have considered the disputed domain name as being in some way endorsed by or connected with the Complainants, particularly taking into account the Complainants’ exclusive rights to the GREENSILL Marks and the substantial goodwill and reputation residing in the GREENSILL Marks.

As at April 17, 2019, the Complainants state that the disputed domain name redirected to what appeared to be an Israeli stamps website. As already noted, the Panel considers that the Complainants’ GREENSILL Marks are distinctive and have a significant reputation and goodwill in the finance industry. Further, the Panel notes that the Respondent failed to provide any response or evidence of actual or contemplated good-faith use. In addition, given the Complainants’ failed attempts to contact the Respondent using the details provided against the registration, it appears that the Respondent has provided false contact details. Finally, the Respondent’s previous use of the disputed domain name to resolve to a website identical to that of the Complainants counters any plausible argument that the Respondent intended to put the disputed domain name to any good faith use.

Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainants.

7. Decision

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 <greensills.com> be transferred to the Complainants.

Andrew Brown Q.C.
Sole Panelist
Date: July 3, 2020