WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reservoir Capital Group, L.L.C. v. Abdullaahi Abubakar, Project Reserve Center
Case No. D2020-3501
1. The Parties
The Complainant is Reservoir Capital Group, L.L.C., United States of America (“US”), represented by Paul, Weiss, Rifkind, Wharton & Garrison, US.
The Respondent is Abdullaahi Abubakar, Project Reserve Center, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <reservourcapitalcreations.com> is registered with OwnRegistrar, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2020. On December 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 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 December 29, 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 the same day.
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 January 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2021.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on February 16, 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 a privately held investment firm founded in 1998 which, together with its affiliates provides various financial, investment and advisory services. It has 486 investors and USD 2 billion in assets under management. It has a strong history of corporate and financial partnerships as well as a deep industry network and investment experience across a wide range of sectors and market environments. This is evidenced by a declaration signed by its Chief Compliance Officer exhibited at Annex 8 to the Complaint.
The Complainant is the owner of rights in the trade mark RESERVOIR in respect of the provision of inter alia “financial services, namely investment advisory management and administrative services”, in the US. These including registration No. 3195689 for RESERVOIR filed at United States Patent and Trademark Office (“USPTO”) on December 8, 2004 and registered on January 9, 2007. A copy of the USPTO registration records are exhibited as Annex 9 to the Complaint.
As a result of many years continued and widespread use of RESERVOIR in connection with the provision of investment and financial services the Complainant has also built up a considerable goodwill in the mark. There are also a number of affiliates within the Reservoir corporate structure that use the mark including Reservoir Operations L.P., a registered investment adviser.
According to the publically available WhoIs information, the Respondent and confirmed by the Registrar, Abdullaahi Abubakar, is located in Nigeria. Evidence contained in the Annex 4 to the Complaint, the Respondent operated a website accessed at the disputed domain name <reservourcapitalcreations.com> which had a similar look and feel compared to the Complainant’s official website without being associated with the Complainant or any of its affiliates. The disputed domain name <reservourcapitalcreations.com> was registered on July 10, 2020 which is well after the date of the registration of the Complainant’s trade mark RESERVOIR and it does not currently resolve to any active website.
No Response has been filed by the Respondent. The Panel therefore finds the above evidence adduced by the Complainant to be true.
5. Parties’ Contentions
The Complainant submits;
i. The disputed domain name is confusingly similar to the mark RESERVOIR in which it owns registered and unregistered rights.
ii. On the Complainant’s evidence the Respondent has no rights or legitimate interests in respect of the disputed domain name.
iii. On the Complainant’s evidence the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
As set out in section 4 above the Complainant has established that it has registered trade mark rights in the mark RESERVOIR.
The Complainant submits that the disputed domain name incorporates a confusingly similar version of its well-known trade mark RESERVOIR. The addition of the dictionary words “capital creations” does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trade mark.
In the Panel’s view the only difference between the Complainant’s mark RESERVOIR and “reservour” as used as the dominant part of the disputed domain name is the use of the letter “u” rather than the letter “i” which is used in the trade mark. This makes limited difference visually and phonetically. The Panel therefore finds that this “slight difference in spelling” results in “reservour” as used in the disputed domain name being confusingly similar to the Complainant’s mark RESERVOIR.
It is well-established that the fact that the disputed domain name contains the generic Top-Level Domain (“gTLD”) suffix “.com” is immaterial for a finding of confusing similarity.
In summary the Panel finds that the disputed domain name which consists of a confusingly similar version of the mark RESERVOIR coupled only with the dictionary words that comprise the Complainant’s name, and which was used in connection with the purported provision of investment and advisory services is confusingly similar to the Complainant’s trade mark RESERVOIR within paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In summary the Complainant submits;
i. The Complainant has used the mark RESERVOIR for more than 20 years. By contrast the Respondent registered the disputed domain name in July, 2020. This has the effect of establishing that the Complainant has rights in the mark that pre-exist any purported rights of the Respondent to the disputed domain name.
ii. There is no evidence that the Respondent owns or is entitled to use any intellectual property rights in RESERVOIR. It is established by the declaration exhibited at Annex 8 to the Complaint that the Respondent has never authorized the Respondent to use the mark RESERVOIR. The Respondent has no business relationship with the Respondent. The Complainant has not licensed the Respondent to use the mark RESERVOIR.
iii. There is no evidence that the Respondent has ever been known, much less, commonly known, by the disputed domain name.
iv. The evidence of the use of the disputed domain name in connection with a prima facie fraudulent website, using language which according to the evidence set out in the declaration at Annex 8 was copied directly from the Complainant’s own website demonstrates that the use of the disputed domain name is not a bona fide offering of goods and services nor a legitimate noncommercial use of the disputed domain name.
v. The Complainant also relies upon correspondence between the Parties beginning with a cease and desist letter sent to the Respondent on December 11, 2020 and referred to in the Declaration of the Complainant’s authorized representative exhibited at Annex 11 to the Complaint. The Respondent failed to respond at all to the letter which the Complainant made diligent efforts to send to the Respondent by post and electronically. The Complainant submits that the failure to comply with the cease and desist letter requests is further evidence that the Respondent has rights or interests in the disputed domain name.
In the absence of a Response and evidence to the contrary the Panel agrees with the above submissions and finds on the basis of the Complainant’s evidence that the Respondent has no rights or legitimate interests in the disputed domain name within paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant submits that the Respondent, on the evidence, has demonstrated bad faith in its registration and use of the disputed domain name. The Complainant relies upon the evidence set out in the declarations exhibited at Annexes 8 and 11 to the Complaint. In summary the Respondent was falsely passing itself off as the Complainant and “was attempting to trick” the Complainant’s investors into divulging personal information based on a belief that the disputed domain name was affiliated with the Complainant.
It submits that the Respondent’s initial choice to choose and register a confusingly similar variation of RESERVOIR in connection with the purported provision of equivalent financial advisory and investment services is evidence of registration in bad faith within paragraph 4(b)(iv) of the Policy. The evidence supports the inference that the Respondent knew of the Complainant’s rights in RESERVOIR and “sought improperly” to capitalize them by seeking to pass itself off as the Complainant or one of its affiliates. On the Complainant’s evidence the Panel agrees with this submission and finds that the Respondent registered the disputed domain name in bad faith.
The evidence adduced of the Respondent’s website shows that the Respondent must have copied verbatim from the Complainant’s website descriptive references to the Complainant. It reproduces the Complainant’s logo across the pages of its website. The Panel accepts the submission that this must have been done to capitalize upon the Complainant’s goodwill associated with the mark RESERVOIR and persuading Internet users into divulging personal information by convincing them, contrary to the fact, that the disputed domain name was associated with the Complainant.
The Complainant also relies upon the following evidence;
i. That the Respondent’s website to which the disputed domain name resolved contained misleading and false information including a fake office location. The inability of the Complainant, despite its diligent efforts, to serve the cease and desist letter is likely to be due to the fact that the contact information given to the Registrar was false. There is ample authority from previous UDRP panel decisions that the provision of false contact information is a relevant factor in supporting a finding of bad faith.
ii. The fact that the Registrar responded to the letter by suspending the disputed domain name is not a reason for the Panel not to grant relief to the Complainant. The Respondent remains owner of the disputed domain name despite its suspension.
iii. The failure of the Respondent to respond to the cease and desist letter together with the evidence of the use of the disputed domain name as set out above further supports a finding of bad faith registration.
Having considered the evidence adduced by the Complainant and in the absence of a Response the Panel finds that the disputed domain name was registered and used by the Respondent in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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 <reservourcapitalcreations.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: February 25, 2021