WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LO IP SA, Banque Lombard Odier & Cie SA, Lombard Odier Asset Management (USA) Corp., Lombard Odier Asset Management (Europe) Ltd., Lombard Odier Asset Management (Switzerland) SA v. Xavier Dylan

Case No. D2020-2360

1. The Parties

The Complainants are LO IP SA, Banque Lombard Odier & Cie SA, and Lombard Odier Asset Management (Switzerland) SA, Switzerland, Lombard Odier Asset Management (USA) Corp., United States of America, and Lombard Odier Asset Management (Europe) Ltd., United Kingdom, represented by Baker & McKenzie Zurich, Switzerland.

The Respondent is Xavier Dylan, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <lombardodieram.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 September 10, 2020. On September 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 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 September 14, 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 September 16, 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 September 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2020.

The Center appointed Daniel Kraus as the sole panelist in this matter on October 20, 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 LO IP SA is the owner of the following trademarks:

- LOMBARD ODIER & CIE, International Registration No. 627468, in class 36 (financial and monetary affairs), registered on October 13, 1994;

- LOMBARD ODIER & CIE, Switzerland Registration No. 2P-412721, in class 36 (financial and monetary affairs), registered on June 28, 1994.

The Complainants Banque Lombard Oder & Cie SA, LO IP SA, Lombard Odier Asset Management (USA) Coop, Lombard Odier Asset Management (Europe) Ltd, and Lombard Odier Asset Management (Switzerland) SA, are all members of the Lombard Odier group of companies. Lombard Odier is a well-known bank which was founded in Geneva, Switzerland in 1796 and which is among the leading providers of wealth management services worldwide. Lombard Odier has used its trademarks internationally even before their registration in 1994.

Lombard Odier also corresponds to the company name of the Complainants, which has also developed a presence on the Internet through their website under the domain <lombardodier.com>.

The disputed domain name was created on July 3, 2020.

At the date of filing the Complaint, the disputed domain automatically forwarded to the website “www.lombardodier.com”, which belongs to the Complainants. At the date of writing the present decision, the disputed domain name either redirects to the domain name “www.am.lombardodier.com” or to the Complainant’s main website.

5. Parties’ Contentions

A. Complainants

The Complainants claim that they are all part of the same group of companies which have the right to use, and do use, the LOMBARD ODIER & CIE trademarks, with which the disputed domain name is confusingly similar. The disputed domain name comprises the LOMBARD ODIER & CIE mark, simply removing the “& CIE” part, which designates “and company” in French, whilst adding the letters “am”, a widely used abbreviation which stands for “asset management”. Due to the high degree of similarity of the signs as well as the identical nature of the protected services, the Complainants claim that it is inevitable that the relevant public will err and attribute the disputed domain name to the Complainants. This is especially true as they will directly confuse the disputed domain name with the sign LOMBARD ODIER.

The Complainants contend that the Respondent is not related with the Complainants and that they have not authorized or permitted the Respondent to use its LOMBARD ODIER & CIE mark. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain name.

Finally, the Complainants contend that the Respondent has registered and is using the disputed domain name in bad faith. Nobody seems to exist under the name “Xavier Dylan” under which the Respondent has filed the disputed domain name, and certainly not at the physical address provided by the Respondent, which corresponds to the address of the Complainants. Such a registration and use of the disputed domain name, which is confusingly similar to the well-known trademarks and trade names of the Complainants is motivated by a fraudulent intention.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements in respect of each disputed domain name:

(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.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainants have rights in the LOMBARD ODIER & CIE trademark.

The disputed domain name is clearly confusingly similar to the LOMBARD ODIER & CIE mark in which the Complainants have shown that they have extensive earlier rights. The disputed domain name simply comprises of the Complainant’s LOMBARD ODIER & CIE mark distinctive elements in full, whilst the “& CIE” element has been removed and the descriptive element “am” has been added. These modifications are insignificant (and the Internet user would likely attribute the disputed domain name to the Complainants). In the present case (even with those modifications), the disputed domain name is confusingly similar with the trademarks and domains in which the Complainants have rights.

The disputed domain name also includes the generic Top-Level Domain (“gTLD”) “.com”. A gTLD may generally be disregarded in the comparison between a domain name and a trademark for the purposes of the Policy. See LEGO Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights. The Complainants have satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] 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, even if [the respondent has] acquired no 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.

There is no evidence in the record indicating that the Respondent has trademark rights or any other rights to support its adoption of the disputed domain name or that the Respondent has been commonly known by this name. The record shows that the disputed domain name has probably been used to enable the Respondent to attract undue financial profit – namely by redirecting to the Complainant’s own website which creates a real risk that consumers would be confused into thinking they are dealing with the Complainant when they are in fact not, possibly also through phishing activities; this use does not demonstrate any bona fide offering of goods or services by the Respondent.

Besides, the Respondent has not filed any Response asserting any rights or legitimate interests.

In view of the above circumstances, the Panel considers that the Complainants have made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The third circumstance reads as follows: “(iii) you have registered the [disputed] domain name primarily for the purpose of disrupting the business of a competitor;”

The fourth circumstance is as follows: “(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”

The disputed domain name was registered in 2020, years after the Complainant registered its trademarks. The disputed domain name wholly incorporates the Complainant’s LOMBARD ODIER & CIE trademark, whilst only abandoning the “& CIE” part and adding the “am” element. The disputed domain name precisely aims at attracting current or potential clients of the Complainants interested in obtaining asset management services, in order to take undue advantage of the created confusion. This all gives the Panel reason to find that the Respondent registered the disputed domain name in bad faith.

The Complainants have also sufficiently shown that the disputed domain name is also used to attract current or potential clients of the Complainants interested in obtaining asset management services, in order to take undue advantage of the created confusion. These facts fall within the circumstance described in paragraph 4(b)(iii) and (iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainants have satisfied the third element in paragraph 4(a) 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 <lombardodieram.com> be transferred to the Complainants.

Daniel Kraus
Sole Panelist
Date: November 3, 2020