WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk
Case No. D2020-2773
1. The Parties
The Complainant is Regal Funds Management Pty Limited, Australia, represented by King & Wood Mallesons, Australia.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / John Clerk, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <regalfundsinvestment.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2020. On October 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 22, 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 October 23, 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 October 26, 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 October 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2020.
The Center appointed Nick J. Gardner as the sole panelist in this matter on November 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 is incorporated in Australia. It is a prominent and successful investment manager. The Complainant has been operating since 2004, and has been concerned with the development of the hedge fund and alternatives investment industry in Australia over the last 16 years. The Complainant employs 35 staff, including 19 investment professionals across offices in Sydney and Singapore. The Complainant manages a number of alternative investment strategies and performs investment management and investment advisory services to a wide range of institutional investors, family offices, and high net worth individuals. The Complainant manages over AUD 2 billion for a broad number of institutions, wealth families, charities, individuals, and their advisers across Australia, the Americas, Europe, and Asia.
The Complainant is the trustee and manager of 10 wholesale unit trusts, the investment adviser to three Cayman Funds, the investment manager to one registered managed investment scheme, and the investment manager to a listed investment trust. The Complainant’s funds under management include:
The Regal Investment Fund, which has a market capitalisation of approximately AUD 417.03 million; and Regal Long Short Australian Equity Fund; Regal Atlantic Absolute Return Fund; Regal Tasman Market Neutral Fund; Regal Australian Long Short Equity Fund; Regal Australian Small Companies Fund; and Regal Emerging Companies Fund, Regal Emerging Companies Fund II, Regal Emerging Companies Fund III, and Regal Emerging Companies Opportunities Fund (which, together, have a current net asset value of AUD 599M).
The Complainant has received various awards, including:
- Best Alternative Investment Manager of the Year (2019, Hedge Funds Rock Awards);
- Management Firm of the Year (2018, AsiaHedge Awards);
- Australian Hedge Fund of the Year (2014, The Australian Hedge Fund Awards);
- Australian Hedge Fund of the Year & Best Long Short Fund (2016, Hedge Funds Rock & the Australian Hedge Fund Awards); and
- Australian Hedge Fund of the Year (2011, The Australian Hedge Fund Awards).
In addition, a number of the Complainant’s strategies have also received industry recognition for their performance, including the following:
- The Regal Atlantic Absolute Return Fund, which was launched in March 2004, has twice been named the Australian Hedge Fund of the Year.
- The Regal Tasman Market Neutral Fund won best market neutral fund at the Australian Hedge Fund Awards in 2010, 2011, and 2014. The Regal Tasman Market Neutral Fund also won the best market neutral fund at the HFM Awards Asia in 2014.
- The Regal Australian Long Short Equity Fund won the best long short fund at the Australian Fund Manager awards in 2011 and 2018 and the best long short fund in Australian equities at the Money Management, Lonsec Awards 2012.
- The Regal Australian Small Companies Fund won the golden calf award at the Australian Fund Manager Awards in 2016, the best single country fund at the 9 AsiaHedge awards in 2018 and the best Australian fund at the HFM AsiaHedge Fund Performance Awards 2019.
The Complainant also extensively advertises its products and services and promotes its activities widely. It has received widespread publicity, the following being examples:
- The Australian Financial Review described the Complainant as a “thriving funds management business”, “the largest hedge fund in Australia” and “Australia’s best known hedge fund” in articles on October 17, 2019, and November 8, 2018 respectively.
- The Sydney Morning Herald referred to the Complainant as “one of Australia’s most prominent investment outfits” and a “top hedge fund” in articles on April 20, 2020, and March 13, 2020 respectively.
- The Australian Financial Review referred to the Complainant as “Australia’s best known long/short investor” in an article on August 3, 2020. The same article noted that the Complainant had been “swamped for demand” for its new small caps fund, and that the Complainant had been “humbled by the significant support and early interest”.
The Complainant does not own any registered trademarks.
The Disputed Domain Name was registered on September 29, 2020. The filed evidence shows it has been linked to a website (the “Respondent’s Website”) which purports to be that of the Complainant and which uses text, images, and videos copied from the Complainant’s own website and from other third party websites.
5. Parties’ Contentions
The Complainant’s contentions are set out in some detail and quote numerous previous UDRP decisions. The Complainant’s case can be summarized as follows.
The Disputed Domain Name is confusingly similar to the term “Regal Funds” in which it has common law trademark rights.
The Respondent has no rights or legitimate interests in the term “Regal Funds”.
The Disputed Domain Name was registered and is being used in bad faith. The Complainant says the deceptive nature of the Respondent’s Website is clear evidence of bad faith. It infers the Respondent’s motive was financial gain. It says the Respondent was likely either seeking to divert investment intended for the Complainant or was effectively phishing for personal information by impersonating the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
The Panel also notes this is a case where one Respondent (“WhoisGuard Protected, WhoisGuard, Inc.”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case, the Panel considers the substantive Respondent to be John Clerk and references to the Respondent are to that person.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a 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 Complainant has not relied upon any registered trademarks. The Panel however finds that the Complainant has rights in the unregistered trademark “Regal Funds” for the purpose of this proceeding. It is clear that “Regal Funds” was adopted as the substantive part of the Complainant’s name with effect from 2004 (see above) and has been used on that basis ever since by the Complainant. The evidence also establishes the Complainant trades under that name and has developed a substantial business and a reputation for its services (see above).
“What does a complainant need to show to successfully assert unregistered or common law trademark rights?
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.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning”.
The Panel is satisfied on the evidence as filed that the Complainant has shown it has unregistered trademark rights in that term. It is referred to below as the “Regal Funds trademark”.
The Panel finds the Disputed Domain Name is confusingly similar to the Regal Funds trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000‑0662). It is established in WIPO Overview 3.0 at section 1.7 that, where a domain name incorporates the entirety of a mark, or where at least a dominant feature of a mark is recognizable in a disputed domain name, the disputed domain name is considered to be confusingly similar to the mark.
It is also established that the addition of a term (such as here “investment”) to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006‑0189).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the Regal Funds trademark. The Complainant has prior rights in the Regal Funds trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances the fact that the Disputed Domain Name was linked to the Respondent’s Website which impersonates the Complainant lead the Panel to conclude the registration and use were in bad faith.
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
In the present circumstances, the Panel agrees with the Complainant that factor (iv) applies, as the Respondent’s Website appears to be some form of “phishing” and/or fraudulent scheme which is manifestly evidence of bad faith – see Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031, and the cases therein referred to, for further analysis of why “phishing” activities amount to use in bad faith. See also Grupo Financiero Inbursa S.A. de CV v ibuirisa, WIPO Case No. D2006-0614 to similar effect. The Panel also notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <regalfundsinvestment.com> be transferred to the Complainant.
Nick J. Gardner
Date: December 9, 2020