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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Baring Asset Management Limited v. Registration Private, Domains By Proxy, LLC / Nahed El Shaweesh

Case No. D2020-1734

1. The Parties

The Complainant is Baring Asset Management Limited, United Kingdom, represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“U.S.”) / Nahed El Shaweesh, Palestine.

2. The Domain Name and Registrar

The disputed domain name <baringsinvestments.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2020. On July 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 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 July 3, 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 July 6, 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 July 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2020. The Center received the Respondent’s informal communication by email on July 6, 2020. The Response was filed with the Center on July 6, 2020.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 11, 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 established as a firm of merchants and merchant bankers in London, England in 1762. It operated as the oldest investment bank in the United Kingdom until 1995. In March, 2005 Barings was acquired by Massachusetts Mutual Life Insurance Company and Barings LLC was formed in 2016 as a result of a merger of four affiliated investment firms, including Baring Asset Management Limited. The Complainant and the Complainant’s predecessors have operated under the BARINGS trademark and trade name for many years in the United Kingdom and internationally.

The Complainant owns many trademarks around the world, including the following:

- United Kingdom Trademark Registration No. 1287566 for BARINGS registered on June 9, 1989;
- U.S. Trademark Registration No. 1744800 for BARINGS registered on January 5, 1993;
- European Union Trade Mark Registration No. 015732498 for BARINGS registered on November 25, 2016; and
- International Trademark Registration No. 869876 for BARINGS registered on October 24, 2005, which designated Australia, Bahrain, China, the European Union, Kazkhastan, Mongolia, Oman, the Republic of Korea, Singapore, Switzerland, Ukraine, the U.S. and Viet Nam.

The disputed domain name <baringsinvestments.com> was registered on September 4, 2017 and at the time the Complaint was filed it reverted to a parking page.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <baringsinvestments.com> is confusingly similar to the Complainant’s registered trademark. The disputed domain name replicates the Complainant’s registered trademark BARINGS in its entirety as the first and dominant element. The descriptive word “investments” does not distinguish the disputed domain name from the Complainant’s registered BARINGS trademark. In fact, the descriptive word “investments” actually refers to the Complainant’s primary areas of commercial activity.

The Respondent has no rights or legitimate interests in the disputed domain name. He is not commonly known by the BARINGS name or trademark. The Respondent is not authorized or licensed to register or use the Complainant’s registered trademark. The Respondent is not using the disputed domain name in association with a bona fide offering of goods or services. The confusingly similar disputed domain name reverts to a parking page that offers the disputed domain name <baringsinvestments.com> for sale for more than the costs of registration.

The Respondent has registered and used the disputed domain name in bad faith. The Respondent has registered a confusingly similar domain name intentionally diverting Internet consumers looking for the Complainant to a parking page, which offers the disputed domain name for sale. The registration of the disputed domain name deliberately targets the Complainant by choosing to use the word “investments”, which refers to the Complainant’s primary area of business activity for purposes of trading on the goodwill of the Complainant for monetary gain.

B. Respondent

The Respondent submitted an informal response on July 6, 2020 stating that the word “baring” is a common word in the English language meaning the removal of a covering. The Respondent claims that he has never used the disputed domain name, and that he did not try to sell the disputed domain name to the Complainant. The Complainant does not own a trademark in Palestine, where the Respondent resides. Accordingly, he asserts a right and legitimate interest in the disputed domain name and did not register the <baringsinvestments.com> disputed domain name in bad faith.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have registered trademark rights in the trademark BARINGS by virtue of the registrations referenced in paragraph 4 of this Decision.

The Panel finds that the disputed domain name <baringsinvestments.com> is confusingly similar to the Complainant’s mark. The disputed domain name incorporates the Complainant’s distinctive trademark in its entirety as the first and dominant element. The addition of the word “investments” does not serve to prevent a finding of confusing similarity between the disputed domain name from the Complainant’s registered trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As the Complaint states, useful commentary on the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights or legitimate interests. The Complainant clearly owns rights in the BARINGS trademark as noted in section 4 of this Decision. The Panel acknowledges that the Complainant’s BARINGS trademark is well-known and unique, and accordingly it is unlikely that the Respondent was unaware of the Complainant’s trademark rights when he registered the disputed domain name. This is supported by the choice of the descriptive word “investments” in the disputed domain name, which actually refers to the Complainant’s primary business activity.

In the circumstances of this case, the composition of the disputed domain name, incorporating the entirety of the Complainant’s trademark and the descriptive word “investments”, reveals an intention to capitalize on the Complainant’s goodwill and reputation. See WIPO Overview 3.0, section 2.5.1.

The Respondent’s use of the disputed domain name in association with an inactive website, which offers the disputed domain name for sale, is not a bona fide use of the disputed domain name under the Policy.

As a result, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent’s informal reply asserts that the word “baring” is a common English word, and suggests that this justifies the registration and use of the disputed domain name. However, the composition of the disputed domain name itself casts doubt on this argument. The Panel notes that the Respondent has adopted the principal element of the BARINGS mark, a form of the name which is in fact distinctive through its spelling. In addition, the Respondent has chosen to attach the suffix “investments” to the BARINGS mark, which points directly to an awareness on the part of the Respondent of the fact that the Complainant is engaged in financial services, particularly investments. In the circumstances, the Respondent appears to have clearly targeted the Complainant’s business and trademark through its choice and composition of the disputed domain name. The Respondent further states that the Complainant does not own a registered trademark in Palestine, where he resides. The controlling fact in this situation is that the Complainant owns an extensive international trademark portfolio for the BARINGS trademark, not only in the United Kingdom, but across a wide range of international jurisdictions. As a result, the Panel finds that the Complainant has strong rights in the BARINGS trademark, which support the conclusion that the Respondent must have been aware of the Complainant’s trademark and trade name when he registered the disputed domain name. As noted above, the addition of the word “investments” is a clear indication that the Complainant’s registered trademark was in fact known to the Respondent.

Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to the evidence, the Respondent registered the disputed domain name, which incorporates the Complainant’s well-known BARINGS trademark in its entirety, in order to divert Internet users seeking the Complainant’s website. The Respondent’s conduct supports a finding that the Respondent targeted the Complainant’s BARINGS trademark and its business, which were well-known long before the registration of the disputed domain name, by using the confusingly similar disputed domain name in association with a parking website that offers the disputed domain name for sale. The Respondent’s informal submissions in these proceedings do not convince the Panel that he was doing anything other than attempting to trade on the goodwill of the Complainant for purposes of monetary gain. Accordingly, the Panel finds there is sufficient evidence of bad faith under the Policy.

The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) of the Policy.

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 <baringsinvestments.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: August 17, 2020

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