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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Golding Capital Partners GmbH v. James Smith

Case No. D2020-3194

1. The Parties

The Complainant is Golding Capital Partners GmbH, Germany, represented by Ampersand Partnerschaft von Rechtsanwälten mbB, Germany.

The Respondent is James Smith, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <golding-capital.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2020. On November 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 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 November 30, 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 amendment to the Complaint on December 7, 2020.

The Center verified that the Complaint, together with the amendment to the 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 December 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2020.

The Center appointed Alistair Payne as the sole panelist in this matter on January 6, 2021. 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 an independent asset manager for private equity, private debt, and infrastructure in Europe. It was established in 2000 and has its headquarter located in Munich, Germany, and offices in London, United Kingdom (“UK”), Luxembourg, New York, United States, and Tokyo, Japan. It trades as “Golding Capital Partners”. The Complainant owns registered European Union trademark number 018249729 for GOLDING, which was filed on June 5, 2020, and registered on October 30, 2020.

The disputed domain name was registered on October 1, 2020. It does not appear to resolve to any website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights as set out above. It says that the disputed domain name is identical with the first part of the Complainant’s corporate and trading name. It contends further that when comparing the disputed domain name with its registered trade mark that the only difference is the word “capital” which is a descriptive element.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name because he does not own any trade marks or have any other rights relating to “golding-capital.com” or the designation “Golding-Capital” which would entitle him to own the disputed domain name.

In relation to bad faith, the Complainant says that the disputed domain name has been used by the Respondent for fraudulent purposes and has been used in a misleading information brochure in which the Respondent appears to masquerade as if it is representing the Complainant and which even lists the address of the Complainant’s London subsidiary.

The Complainant submits that the Respondent has sought to create the fraudulent impression of being employees of its investment business in order to get money and data from his “customers”. The Complainant has submitted in evidence an example copy of correspondence between the Respondent and a “customer” which was provided to it by the customer. The Complainant notes that in this correspondence the Respondent included in his email signature the true company name of the Complainant’s London subsidiary and also indicated the Complainant’s correct website address. However, says the Complainant, the emails are sent in the names of various persons listed as “Investment Managers” in their respective emails. The Complainant explains that the Respondent appears to have telephoned his “customers” to get in touch with them regarding a potential investment and subsequently forwarded emails to the “customers” and provided them with the relevant links to UK’s Financial Conduct Authority (FCA) and Companies House.

The Complainant notes that the FCA subsequently issued a notice warning the public that fraudsters were using the details of the Complainant to try and persuade them to invest with the Respondent and the Complainant has provided a copy of this notice by way of evidence. It says that the fact that the disputed domain name does not resolve to a website with content only reinforces the Respondent’s bad faith. The Complainant submits therefore that the Respondent has both registered and used the disputed domain in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered European Union trademark number 018249729 for GOLDING, which was filed on June 5, 2020, and registered on October 30, 2020. The disputed domain name wholly incorporates the Complainant’s GOLDING mark and apart from the Top-Level Domain element, only differs from it by the inclusion of a hyphen and the word “capital”. The wholesale incorporation of the Complainant’s GOLDING trade mark in the disputed domain name suffices to render it confusingly similar to the disputed domain name and the inclusion of a hyphen and the descriptive common English term “capital” in the disputed domain name does not detract from this finding.

As a result, the Panel finds that the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent has no rights or legitimate interests in respect of the disputed domain name because he does not own any trade marks, or have any other rights relating to the disputed domain name or the designation “Golding-Capital” which would entitle him to claim rights or legitimate interests in the disputed domain name under this element of the Policy. In addition and as further outlined below under “Part C” below, it is apparent that the disputed domain name is being used by the Respondent for fraudulent purposes which use is inconsistent with the Respondent having any rights or legitimate interests in the disputed domain name. Further, the Panel notes that the disputed domain name does not resolve to a website with content and there is no evidence to suggest that the Respondent is using the disputed domain name in relation to a bona fide offering of goods or services.

Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and in circumstances that this case has not been rebutted by the Respondent, the Complaint succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered on October 1, 2020, some months after the Complainant had filed its application for a European Trade Mark for GOLDING and many years after the Complainant first commenced in business under the “Golding Capital Partners” name. It is apparent, based on the evidence submitted by the Complainant, that the Respondent, as described below, has fraudulently masqueraded as the Complainant in attempting to attract investors. In doing so, the Panel infers that the Respondent must have been aware of the Complainant’s business and name when it registered the disputed domain name and that it is more likely than not that it did so in bad faith specifically for the purposes of this fraudulent activity.

Based on the Complainant’s submissions and the evidence on the record, it appears to the Panel that the Respondent has sought to create the fraudulent impression that it was an employee of the Complainant’s investment business. There is evidence to the effect that the Respondent telephoned customers and followed up by email in order to solicit investment business. In the customer email, the Respondent set out in his email signature the true company name of the Complainant’s London subsidiary and also indicated the Complainant’s correct website address. However, the Respondent masqueraded in the email as employees of the Complainant and used a contact email address based on the disputed domain name rather than a genuine email address authorised by the Complainant. It is also notable that the Respondent set out in his email relevant links to the UK’s FCA and to the Companies House entry of register details for the Complainant. Further, the Respondent used the disputed domain name fraudulently in a misleading information brochure styled as if it came from the Complainant and which referenced the London office of the Complainant’s UK subsidiary but included an email address based on the disputed domain name. All of this was obviously intended to give potential customer investors comfort that they were dealing with the Complainant.

The Complainant submitted in evidence a notice issued by the UK’s FCA on November 12, 2020, that warns the public that fraudsters are using the details of the Complainant to try and persuade them to make investments with a “clone firm” under the name of Golding Capital Partners (UK) Limited with an email address at “[...]@golding-capital.com”. This notice, together with the fact that the disputed domain name does not resolve to a website with bona fide content, or any content at all in relation to an offering of genuine goods and services, further reinforces the Panel’s view of the Respondent’s use of the disputed domain name in bad faith.

Therefore, the Panel finds that the Respondent has both registered and used the disputed domain in bad faith and that the Complaint also succeeds under this element 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 <golding-capital.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: January 8, 2021

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