WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LGT Gruppe Stiftung v. The Vision
Case No. D2020-1203
1. The Parties
The Complainant is LGT Gruppe Stiftung, Liechtenstein, represented by Isler & Pedrazzini AG, Switzerland.
The Respondent is The Vision, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <lgtcapital.com> is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2020. On May 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 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 19, 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 19, 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 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2020.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on June 23, 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 part of the LGT Group a private banking and asset management group owned and operated by the princely House of Liechtenstein. It is the owner of the domain name <lgt.com>, registered on March 3, 1998 as well as of the following, amongst others, trademark registrations (Annexes 5-12 to the Complaint):
- International trademark registration No. 641,907 for the word mark LGT, registered on September 11, 1995, in International class 36;
- United States of America trademark registration No. 2,188,693 for the word mark LGT, registered on July 25, 1995, in International class 36;
- International trademark registration No. 762,619 for the word mark LGT CAPITAL PARTNERS, registered on July 9, 2001, in International classes 35 and 36; and
- United States of America trademark registration No. 2,859,286 for the mark LGT CAPITAL PARTNERS, registered on July 6, 2004, in International class 36.
The disputed domain name <lgtcapital.com> was registered on November 19, 2017 and had been offered for sale for USD 1,450 at the webpage that resolved from it (Annex 16 to the Complaint). Presently, the disputed domain name resolves to a parked page that states that it has been deleted.
5. Parties’ Contentions
The Complainant asserts to be part of the largest family-owned private banking and asset management group in the world, owned and operated by the princely House of Liechtenstein, employing over 3,600 people in over 20 locations in Europe, Asia, the Americas, and the Middle East, having over CHF 227.9 billion worth of assets under its management. It further states to have been using the LGT trademark since 1996, which has acquired a high reputation in the field of private banking and asset management and therefore may be considered a very well-known trademark in the financial industry. Also according to the Complainant, one of the group’s divisions operates under the tradename “LGT Capital Partners”.
Under the Complainant’s view, the disputed domain name combines the distinctive and well-known LGT trademark with the term “capital”, creating a similarity with the Complainant’s LGT and LGT CAPITAL PARTNERS trademarks and domain names.
Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) a global search conducted by the Complainant disclosed no applications or registrations for LGT trademark applications or registrations under the Respondent’s name; and
(ii) there is no affiliation between the Respondent and the Complainant or any other members of the LGT Group, neither having the Complainant or any other member of the LGT Group granted Respondent a license or otherwise consented to the registration and use of the disputed domain name by the Respondent.
Lastly, the Complainant asserts that the bad faith of the Respondent is evident given that the Respondent offered the disputed domain name for sale and has not made a genuine use of the disputed domain name throughout the entire period of its registration, what leads to the conclusion that the Respondent registered it for the sole purpose of selling it to make an unlawful financial profit in view of the high reputation and very substantial goodwill associated with the Complainant’s trademark. In addition to the above, according to the Complainant, the Respondent’s bad faith may also be corroborated by the Respondent’s choice to conceal its identity to shield it from any direct legal by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the registered LGT and LGT CAPITAL PARTNERS trademarks. The Panel finds that the disputed domain name reproduces the Complainant’s mark LGT in its entirety, as well as the dominant features of the LGT CAPITAL PARTNERS mark, and is therefore confusingly similar to them. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7).
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or 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
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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 Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that there is no affiliation between the Respondent and the Complainant or any other members of the LGT Group, neither having the Complainant or any other member of the LGT Group granted the Respondent a license or otherwise consented to the registration and use of the disputed domain name by the Respondent.
Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks registered by the Respondent corresponding to the disputed domain name, corroborates with the indication of the absence of a right or legitimate interest in the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
The second element of the Policy has therefore been established.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances:
(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name.
(ii) the Respondent offered the disputed domain for sale for the amount of USD 1,450 which is an amount in excess of out-of-pocket costs incurred in the registration of the disputed domain name;
(iii) the indication of what it appears to be a false address in the WhoIs data and, consequently, the Center not being able to have communications fully delivered to it;
(iv) considering the well-known status of the Complainant’s trademark, the nature of the disputed domain name (reproducing the relevant parts of the Complainant’s trademark), and the Respondent’s intention of unduly profiting from the value in the Complainant’s trademark, suggests rather a clear indication of the Respondent’s registration and holding of the disputed domain name in bad faith, with implausibility of any good faith use to which the disputed domain name may be put.
For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(b)(i) of the Policy.
The third element of the Policy has therefore been established.
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 <lgtcapital.com>, be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: July 7, 2020