WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mercer Limited, Mercer Alternatives (Luxembourg) S.a.r.l. v. WhoisGuard Protected, WhoisGuard, Inc. / Scott Warren
Case No. D2020-2083
1. The Parties
The Complainants are Mercer Limited, United Kingdom, and Mercer Alternatives (Luxembourg) S.a.r.l., Luxembourg, represented by Stephenson Harwood LLP, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Scott Warren, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <merceralternatives.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 August 5, 2020. On August 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 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 August 7, 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 August 7, 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 August 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2020.
The Center appointed Antony Gold as the sole panelist in this matter on September 15, 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 Complainant1 is part of the Mercer group of companies, a financial services provider, which operates in 130 countries. The Mercer group has been trading in relation to financial and investment services under the MERCER brand for approximately 75 years.
The Complainant has registered trade marks in a number of jurisdictions to protect its trading style. These include, by way of example only, European Union Trade Mark, registration No. 004803251, registered on October 9, 2006, for MERCER in classes 9, 35, 36, 38, 41, 42 and 44. The global website of the Complainant’s corporate group is at “www.mercer.com”.
The disputed domain name was registered on May 7, 2020. As at July 29, 2020, the disputed domain name resolved to a website with a small heading at the top comprising “Mercer Alternatives”, followed by a tagline in larger font: “Choose Mercer Alternatives”. Beneath that is a claim that: “Mercer Alternatives offers proven wealth management solutions for high net worth clients and institutions. All our strategies are backed by detailed research and industry-leading market insight”. Services are offered in the fields of banking, mutual funds and private client asset management. Internet users visiting the Respondent’s website are invited to open an account.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. The Complainant refers to its registered trade marks for MERCER, full details of one of these marks having been set out above, and says it also trades under the MERCER ALTERNATIVES sub-brand and is the owner of valuable goodwill in this brand. The disputed domain name includes the Complainant’s MERCER trade mark in full. The word “alternatives” is simply descriptive of the nature of certain services offered by the Complainant, namely financial and investment services relating to alternative assets. Further, or in the alternative, the disputed domain name is identical to the Complainant’s unregistered trade mark, MERCER ALTERNATIVES.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is representing by the disputed domain name that it is part of the Complainant’s corporate group and is thus leveraging the reputation of the Complainant in conducting its fraudulent, criminal and bad faith activities. The Complainant has not authorized the Respondent to use the disputed domain name. Furthermore, the Respondent does not appear to have any company name or trade mark for “mercer alternatives”.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. Within a short time following registration of the disputed domain name on May 7, 2020, the Respondent had established its fraudulent website and it is therefore apparent that the Respondent acquired the disputed domain name for that purpose. The Respondent is using the disputed domain name fraudulently in order to represent that the website to which it resolves is connected with the Complainant. The Respondent is purporting to offer the same or similar services as the Complainant, namely that it is a “global financial services company” offering “tailored investment services”. It claims to operate out of the same Luxembourg address as one company within the Complainant’s group of companies and to have the same registration number as that allocated to another company within the group by its financial regulator. It is accordingly clear that the Respondent is aware of the Complainant and is passing itself off to members of the public as being the Complainant or part of its corporate group.
Moreover, the disputed domain name is being used to conduct fraudulent activity by reference to the Complainant’s name, trade mark, and reputation. In particular, the Respondent’s website invites prospective investors to provide personal information, including specific bank account details and copies of their identification documents, in order to misappropriate such personal information for unlawful and improper purposes. Furthermore, on July 24, 2020, the First Complainant was contacted by a third party who sought confirmation that it had been dealing with the Complainant’s “Mercer Alternatives”. In fact, they had been approached by a representative of the Respondent who had attempted to sell them non-existent bonds. A similar issue arose with another person the following month, who transacted with the Respondent believing it to be the Complainant. Whilst regulators in the financial services industry have now issued warning notices to the public about the Respondent’s fraudulent website, the Respondent may be approaching other potential investors who do not appreciate the true position and are thereby defrauded.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to either Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
A. Identical or Confusingly Similar
The information provided by the Complainant in relation to its trade mark registrations for MERCER, full details of one of these marks having been set out above, establish that it has rights in this trade mark. The Complainant asserts that it also has unregistered trade mark rights in MERCER ALTERNATIVES. In support of this contention it has produced a page from its principal website that refers to “The Role of Alternative Investments”. This page includes some text under a heading of “Related alternative investments” which states that “Mercer alternative investments provide a solid means to achieving better returns”.
Section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that: “To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services”. The section outlines the nature of the evidence that should typically be provided by a complainant to support an assertion of unregistered trade mark rights and comments that “conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning”. Having regard to the standard expected under the Policy and in the light of the very limited information provided by the Complainant in support of its contention, the Panel has insufficient information to conclude that it has rights in “MERCER ALTERNATIVES” for the purpose of the first element of the Policy.
When determining whether the disputed domain name is identical or confusingly similar to the Complainant’s MERCER trade mark, the generic Top-Level-Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. The disputed domain name comprises the Complainant’s MERCER trade mark in full, coupled with the word “alternatives”. This additional word does not impact on an assessment of whether the disputed domain name is confusingly similar to the Complainant’s trade mark. As explained at section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
The Complainant’s MERCER trade mark is clearly recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation, examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods or services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
The Complainant has produced clear evidence that the Respondent’s website is intended to confuse Internet users into believing that it is operated by the Complainant or an entity within the Complainant’s group of companies. Notwithstanding the Panel’s finding in respect of MERCER ALTERNATIVES, the Complainant has established that its mark MERCER is distinctive in relation to the provision of financial services and related activities and the use by the Respondent of the Complainant’s address and reference number allocated by its regulator shows a clear intention to pass off its website as operated by a company within the Complainant’s group of companies. Moreover, the Complainant’s evidence concerning third parties contacted by a representative of the Respondent, seeking to induce them to place investments with it, establishes that the Respondent has been using both its website and emails sent using the address of the disputed domain name in furtherance of a fraud. As explained at section 2.13.1 of the WIPO Overview 3.0; “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. It is accordingly clear, that Respondent is not using its website in connection with a bona fide offering of goods and services.
The second and third circumstances are inapplicable; there is no evidence that the Respondent has been commonly known by the disputed domain name and the use which it is making of the disputed domain name is plainly commercial in character. In addition, as explained at section 2.5.1 of the WIPO Overview 3.0; “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”.
The Complainant has established a prima facie case that the second element of the Policy is satisfied and the burden of production accordingly shifts to the Respondent. The Respondent having failed to respond to the Complaint, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Dealing first with bad faith registration, the website to which the disputed domain resolves has been active since at least July 24, 2020 which is relatively soon after the disputed domain name was registered, points to an awareness by the Respondent of the Complainant as at the date of registration of the disputed domain name and an intention to use the disputed domain name for the purpose of establishing its fraudulent website. As explained by the UDRP panel in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765: “the registration of a domain name with the knowledge of the complainant’s trade mark registration amounts to bad faith”. The Panel therefore finds the registration of the disputed domain name to have been in bad faith.
Turning to bad faith use, 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out at paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The use to which the Respondent has put the disputed domain name falls within these circumstances in that the form and content of the Respondent’s website, will lead many Internet users to believe that it is operated by, or with the authorization of, the Complainant. The belief of Internet users that they had found the Complainant’s website, or a website associated with it, will be reinforced because of the confusing similarity between the disputed domain name and the Complainant’s MERCER trade mark. Moreover, the use of the disputed domain name in order to send fraudulent emails does, in itself, constitute bad faith; see section 3.4 of the WIPO Overview 3.0: “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution.”
The circumstances point clearly to bad faith use on the part of the Respondent and the Panel therefore finds that the disputed domain name was both 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 <merceralternatives.com> be transferred to the Complainant.
Date: September 29, 2020
1 The Complaint has been filed by two companies within the Mercer group of companies because one entity is the proprietor of the relevant trade marks and the other is a licensee of those marks. For the purpose of these proceedings, there is no need to draw any distinction between these parties and, for ease of reference, they are collectively referred to in this decision as “the Complainant”.