WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AEW SA v. Whois Data Protection Sp. z o.o. / Royal Europa Sp. z o.o.
Case No. D2020-1097
1. The Parties
The Complainant is AEW SA, France, represented by Inlex IP Expertise, France.
The Respondent is Whois Data Protection Sp. z o.o. Poland, represented by Dubois i Wspólnicy Kancelaria Adwokacko-Radcowska Sp. j., Poland / Royal Europa Sp. z o.o., Poland.
2. The Domain Name and Registrar
The disputed domain name <nami-investment.com> (the “Domain Name”) is registered with NetArt Sp z o.o (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2020. On May 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 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 May 5, 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 7 and May 11, 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 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2020. On May 31, 2020, the Respondent’s representative asked for an extension due to COVID-19 and the Center granted an extension of the response due date until June 9, 2020. The Response was filed with the Center on June 9, 2020.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 16, 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, founded in 1981, is a real estate investment company headquartered in Paris, France and organized as a French stock company. The Complainant is one of the world’s largest real estate asset managers, with EUR 67.6 billion of assets under management at the end of March 2019 and over 700 employees in offices located in Europe, North America, and Asia. The Complainant’s website at “www.aew.com” details the Complainant’s wide range of real estate investment products, and the Complainant explains that it also handles the platform of Natixis Investment Managers (“Natixis”), one of the largest asset managers in the world and one of the Complainant’s principal shareholders, along with La Banque Postale, the French postal bank. Natixis is principally owned by BPCE, the second largest French banking group.
The Complainant relies in this proceeding on two combined marks (letters and design) for NAMI – AEW EUROPE, French Trademark Number 3697981 (filed December 8, 2009) and European Union Trademark Number 008749699 (registered June 22, 2010). The Complainant does not explain how these marks are used but points to a Paris-based real estate affiliate called “Nami Investment” mentioned on a French business website and in search engine query results. There does not appear to be a website for this affiliate, and the Panel does not find that the Complainant currently uses the registered trademarks on the Complainant’s website at “www.aew.com”.
The Panel notes that a July 17, 2017, press release on the Natixis website at “www.natixis.com”, explicitly aimed at institutional investors, describes the rebranding of the Complainant’s retail and institutional businesses and explains that following AEW’s merger with Ciloger in October 2016, the retail fund management business that was “formerly” managed by AEW subsidiary NAMI-Europe will now operate under the “AEW Ciloger brand”.
The Registrar reports that the Domain Name was registered on February 20, 2020, in the name of a domain privacy service, the Respondent Whois Data Protection Sp. Z o.o. (“WDP”). The Registrar explains that WDP “only provide the services of hiding a domain registrant’s data in public” and identifies the “current registrant” as the Respondent Royal Europa Sp. Z o.o. (“Royal Europa”) of Polkowice, Poland. A company by that name operates a plastics extrusion products business in the Legnica Special Economic Zone in Polkowice, Poland, with a website in Polish, English, and French at “www.royaleuropa.com”, but it has not submitted a Response in this proceeding.
The Domain Name resolves to a website (the “Respondent’s website”) constructed with the Polish version of WordPress and headed in English with a title, “North American Money Investment”, which would correspond (with some redundancy) with the initials in the Domain Name string “nami-investment”. The main text on the landing page is in Polish and translates as “Information on planning a merger of Royal Europa Sp. z o.o. and North American Money Investment Sp. z o.o.” (an “Sp. z o.o.” is a spółka z ograniczoną odpowiedzialnością, a limited liability company under Polish law). A site visitor can click a link to download a PDF file of a signed legal document, an October 16, 2019 “Merger Plan” in side-by-side Polish and English versions, which merged ownership of two Polish limited liability companies, Royal Europa and North American Money Investment. The Merger Plan lists the registered address and national court register (KRS) number for each company, as well as the names of the officers signing the document. The Panel notes that North American Money Investment appears as a currently registered company in the online database maintained by the Polish Ministry of Justice, showing the same KRS number and location in Leznowola, Poland. The Respondent’s website does not solicit investment or include any advertising; its sole function appears to be posting the merger document. The website consists of that single page, apart from a contact page where it is possible to send a message to the site administrator. There is no mention of the Complainant on the website or in the PDF downloaded from the website, and the only “investment” discussed is the merger of the two companies.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to the leading textual element of its registered NAMI-AEW EUROPE trademark and that the Respondent has no permission to use the mark or other rights or legitimate interests in the Domain Name.
The Complainant argues that “the sign NAMI INVESTMENT is well-known in France” and appears in search engine results associated with the Complainant. Hence, it is likely that the Respondent was aware of it and meant to take advantage of the Complainant’s international reputation. The Complainant finds additional evidence of bad faith in the Respondent’s use of a domain privacy service to obscure its identity and giving false contact information, listing Krakow as the registrant’s city but Dolnoslaskie (Lower Silesia) as the province, whereas Krakow is actually located in the province of Małopolska (Lesser Poland). The Complainant also finds it suspicious that the Respondent’s website is labeled “North American Money Investment”, as it would make the Domain Name <nami-investment> redundant in including an “i” for “investment” in the abbreviation and then spelling out the word.
The Respondent WDP asserts that it is not properly a party to this proceeding: “The Respondent, WDP only provides a domain name holder data protection services and is not a real domain name holder of the disputed domain name.” The Respondent WDP states that it was unaware that the Domain Name was disputed until receiving notice of this proceeding and acknowledges that registrants are obliged by the registration agreement to use the provider’s services for lawful purposes and respect the rights of third parties. The Respondent WDP is evidently affiliated with the Registrar and indicates that, “If the Respondent WDP had known that the disputed domain violated exclusive rights of the Complainant, the Respondent WDP would have tried to explain this case”, as the Registrar has the right to stop service in such instances.
The Respondent WDP argues that it could not be an appropriate party to this proceeding because it is “not a holder of the disputed domain name”.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
6.1 Preliminary Matter: Language of the Proceeding
The Respondent WDP requested that this proceeding be conducted in Polish but submitted a Response in English. The Panel declines to order that the proceeding be conducted in Polish.
Paragraph 11 of the Rules provides that in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of a UDRP administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel (once appointed) to determine otherwise. Here, the Complainant has submitted a copy of the registration agreement in English. It is evidently the English version of the registration agreement found on the Registrar’s website. The Respondent WDP points to the Polish version of the registration agreement found on the Registrar’s website and argues that this is the version that governs the Registrar’s agreement with the beneficial owner of the Domain Name, the Respondent Royal Europa.
The Respondent WDP does not claim an interest in the Domain Name, as discussed below, and appears here only to ask that it be dismissed from the proceeding. The Respondent Royal Europa has not submitted a Response or communicated with the Center concerning the language of the proceeding or any other topic. As both the Complainant and the Respondent WDP are represented by counsel and have already submitted their briefs in English, the Panel finds no prejudice to the parties in proceeding to a decision in English and concludes that requiring the Complainant to refile its Complaint and supporting documentation in Polish would impose substantial burdens on the parties and unnecessarily delay the proceedings. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1.
6.2 Preliminary Matter: Domain Privacy Service as a Respondent
Paragraph 1 of the Rules defines the “respondent” simply as “the holder of a domain name registration”. Recognizing that domain names may be registered through a domain “privacy” or “proxy” registration service (such as the Respondent WDP), paragraph 4(b) of the Rules provides that the respondent’s data may be updated if the privacy service provider reveals the “underlying customer data” within a certain time, or thereafter at the Panel’s discretion. WIPO Overview 3.0, section 4.4.1, notes that the Center’s practice in such cases, endorsed by many panel decisions, is to allow the Complainant to amend the Complaint to reflect the new information, either adding the underlying registrant as a co-respondent or replacing the privacy service as a respondent. Id.. sections 4.4.2, 4.4.3.
“In either event, complainants may also amend or supplement certain substantive aspects of the complaint (notably the second and third elements) in function of any such disclosure.” Id.. section 4.4.3.
In some cases, it may be considered prudent to include the domain privacy service as a respondent, for example “to avoid raising possible decision enforcement questions by the registrar” (id,, section 4.4.1), or where there is uncertain or incomplete disclosure of the underlying registrant (id., sections 4.4.5, 4.4.6), or where there are indications of a deeper relationship between the domain privacy service and the registrant (id., section 4.4.5).
Many domain names are registered through domain privacy services such as those provided by the Respondent WDP. Particularly for individuals and smaller organizations, this has advantages such as avoiding exposure to spam email, hacking, and industrial espionage, against which a larger organization may be better equipped to defend itself. As noted in the WIPO Overview 3.0, section 3.6, there are “recognized legitimate uses of privacy and proxy registration services”, but “the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website”, can weigh in the assessment of bad faith in a UDRP proceeding. This is particularly likely in cases where the respondent takes other steps to conceal its identity and fails to respond to trademark and UDRP claims.
As the domain privacy service is the registrant of record, it may be named initially as a respondent in a UDRP proceeding and then identify the “beneficial owner” or “underlying registrant” that contracted for the privacy registration. This is to be expected, because paragraph 220.127.116.11 of the ICANN Registrar Accreditation Agreement (“RAA”) provides that a WhoIs-listed registrant (referred to as the “Registered Name Holder”) “accepts liability for any use of the relevant domain name unless it timely discloses the contact information of any underlying beneficial registrant”. WIPO Overview 3.0, section 4.4.6. Registrars that offer domain privacy services through affiliates or resellers (as appears to be the case in this proceeding) also have communication and disclosure obligations under the “Specification on Privacy and Proxy Registrations” attached to the ICANN RAA. Thus, there is generally no reason for a domain privacy service to submit a response in a UDRP proceeding; the domain privacy service itself normally has no direct interest in the ownership or use of the disputed domain name.
Here, the Respondent WDP identified the beneficial owner when notified of the UDRP proceeding, as usual, but it has taken the additional step of retaining counsel to file a Response and ask to be dismissed from this proceeding because it is “not a holder of the disputed domain name” – despite the fact that the Amended Complaint already substituted the beneficial owner, Royal Europa, as the named Respondent. The Respondent WDP cites Lingaro Sp.z.O.O. przeciwko Sławomirowi Kaczorowi, WIPO Case No. D2020-0461 (Lingaro”), in which the panel mentioned in the decision that WDP was no longer a respondent because it was dropped from the amended complaint and was not the subject of the factual allegations of bad faith.
The Complainant in the current proceeding did, in fact, replace the Respondent WDP with the Respondent Royal Europa in the Amended Complaint, although its arguments on bad faith are not strictly limited to the Respondent Royal Europa: the Complainant’s point about “false contact details” seems to be directed at the WhoIs data record regarding WDP, which is listed in the city of Krakow but apparently mislocated in the province of Dolnoslaskie. Nevertheless, the Complainant here, as in Lingaro, makes its substantive arguments against the beneficial owner or underlying registrant of the Domain Name, Royal Europa, not the domain privacy service WDP. Moreover, WDP has expressly stated that it does not “hold” the Domain Name and claims no interest in it. There is no evidence in the record of collusion or a deeper connection between Royal Europa and WDP.
While it was hardly necessary for WDP to file a Response to achieve this result, the Panel finds that the domain privacy service WDP is not the “holder” of the Domain Name registration for purposes of the Policy and refers to Royal Europa hereafter in this Decision as the “Respondent”.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7.
The only trademarks shown in the Complaint and the relevant Annex to the Complaint are the two combined marks (letters and design) for NAMI – AEW EUROPE, registered in France and the European Union. The Domain Name echoes the initials “nami”, a distinguishing and leading textual element of the mark, and adds the dictionary English word “investment”. The generic Top-Level Domain (“gTLD”) “.com” “is viewed as a standard registration requirement” and as such is disregarded under the first element of the Policy. Id., section 1.11.2.
Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant’s NAMI – AEW EUROPE for Policy purposes and concludes that the first element of the Complaint has been established.
The Complainant refers as well to “the sign NAMI INVESTMENT” but submits no evidence of a corresponding mark. No application or registration for such a mark appears in the WIPO Global Brand Database. “Nami Investment” appears to be the name of an AEW subsidiary company registered in France, although the Complaint does not provide details beyond the company registration and search engine results referring to real estate deals. There is no evidence in the record of a corresponding website, and the Complainant’s website does not display that name or a logo incorporating that name. There is no evidence of advertising or other trademark use of the name. The Panel must, therefore, reject any implication that “Nami Investment” is a mark held by the Complainant on which this UDRP proceeding can be grounded.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, 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; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s mark in the Domain Name. The Respondent itself does not appear to be known by a name corresponding to the Domain Name, but the website associated with the Domain Name includes evidence (an apparently authentic Merger Document) showing that the Respondent combined ownership interests with a Polish company with a corresponding name.
However, the Respondent’s interests in using the Domain Name are not clear, and the Respondent has not come forward to explain them in this proceeding. Hence, the Panel concludes that the Respondent has not met the burden of establishing rights or legitimate interests, and the Complainant accordingly prevails on this element of the Complaint. The questions raised by the Respondent’s website will be addressed below in connection with bad faith, where the burden falls squarely on the Complainant.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”. The Complainant does not cite any of these illustrations of bad faith, because they do not fit the facts of the case, but they are not exclusive.
The Complainant argues simply that its Nami Investment subsidiary is well-known in France and is part of a very large, global AEW group; the Respondent should have been aware of this through search engine queries and realized that if would be infringing the Complainant’s “sign” “Nami Investment”. The Complainant finds it suspicious that the Respondent used a domain privacy service, spelled the Domain Name with a string that includes a redundant “i” repeating the “i” in “investment”, and named the wrong province for WDP’s city of Krakow. The Complainant argues that it is in the “public interest” to avoid having consumers misled by searching for the Complainant and discovering a website with information about the merger of two Polish limited liability companies.
The Complainant has several difficulties in arguing for bad faith.
First, as discussed above in connection with the first element of the Complaint, the Complainant has not established that it has any trademark rights in the company name “Nami Investment”. The only mark at issue in this proceeding is a logo, which is a combined mark including the text NAMI – AEW EUROPE.
Second, the Complainant infers that the Respondent, an apparently legitimate Polish plastics manufacturer, must have been aware of the Complainant’s NAMI – AEW EUROPE mark and sought to exploit it in February 2020 when the Respondent registered the Domain Name. From the available record, it appears that the mark was used formerly in the Complainant’s French real estate business and was discarded after a merger in late 2016, as recited in the Complainant’s 2017 press release about its rebranding of that business. The Complaint does not indicate that the NAMI – AEW EUROPE mark is in current use, and it does not appear on the Complainant’s website. The existing French subsidiary “Nami Investment” does not seem to have a website or a registered mark, and it is not mentioned on the Complainant’s website. It seems unlikely that the Respondent would be aware of the Complainant’s mark or would find it advantageous to target it.
Third, the Respondent seems to have its own reasons for registering and using the Domain Name, to provide information about its merger with a Polish company with corresponding initials, North American Money Investment. The Merger Document available on the Respondent’s website appears to be authentic, and both companies actually exist, as evidenced by the online database of the Polish Ministry of Justice. The Respondent’s website does not mention the Complainant or its “Nami Investment” subsidiary and does not include advertising. It does not even advertise the services of North American Money Investment, which does not appear to have its own website.
Fourth, without a Response from Royal Europa it is simply not known why the parties created a website to post the Merger Document, or why the Domain Name includes the initials of North American Money Investment followed by the word “investment”. The Panel does not consider the seemingly redundant letter “i” to be dispositive evidence of bad faith in an attempt to exploit the Complainant’s NAMI – AEW EUROPE mark. “NAMI” is the abbreviation of the company, and “investment” was evidently one object of the merger.
Fifth, similarly, it remains a mystery why the privacy domain service WDP lists its own city Krakow in the WhoIs record but shows the province as Dolnoslaskie. The Panel notes, however, that Dolnoslaskie is the province of Polkowice, where the beneficial owner Royal Europa is located. The Panel does not find this “false contact” information material with respect to either Royal Europa or WDP. WDP is not hiding but has identified Royal Europa as the beneficial owner of the Domain Name. Royal Europa did not file a Response, but it does not fit the profile of a self-concealing cybersquatter: it operates a website with its own name, and the website associated with the Domain Name includes a document with Royal Europa’s officially registered name, number, address, and company officers.
The Complainant has the burden of establishing under the balance of probabilities the bad faith in the registration and use of the Domain Name, and the Panel finds that it has not met that burden on this record. The Panel concludes that the Complainant fails on the third element of the Complaint.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: June 23, 2020