WIO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AMP Capital Investors Limited v. Xavier Dylan

Case No. D2021-0904

1. The Parties

Complainant is AMP Capital Investors Limited, Australia, represented by CSC Digital Brand Services Group AB, Sweden.

Respondent is Xavier Dylan, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <amp-capital.com> (the “Disputed Domain Name”) 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 March 24, 2021. On March 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 26, 2021, 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 Complainant on April 1, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 2, 2021.

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 Respondent of the Complaint, and the proceedings commenced on April 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 30, 2021.

The Center appointed Richard W. Page as the sole panelist in this matter on May 14, 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

Complainant is the owner of numerous trademark registrations across various jurisdictions (the “AMP CAPITAL Marks”), including without limitation the following:

Hong Kong, China Registration No. 300130896 registered on December 19, 2003, AMP CAPITAL, International Classes (“ICs”) 35, 36, 38, 41; and

Hong Kong, China Registration No. 302049589 registered on October 6, 2011 AMP CAPITAL (and device), IC Class 36.

Complainant’s parent group Australian Mutual Provident Society (“AMP”) was founded in 1849. It has evolved over its 170 years of history to become a publicly listed, global wealth manager.

Complainant is active in 19 strategic locations around the world, including offices in Hong Kong, China, Dubai, China, India, Ireland, Japan, the United Kingdom and the United States of America. Complainant operates across all major asset classes with a particular focus on real estate and infrastructure. These assets include shopping centers, airports and trains, managed on behalf of funds and clients, whilst public market operations include investments in equities, fixed income, multi-asset and diversified capabilities. As of December 2020, Complainant had invested AUD 190 billion on behalf of its 400 international institutional clients.

Complainant maintains a strong Internet presence, predominantly communicating with its clients through its primary domain name <ampcapital.com>, which was registered on March 25, 2003. According to Alexa.com, Complainant’s website ranked 353,076th globally and 9,097th in Complainant’s home country, Australia.

The Disputed Domain Name was registered on March 11, 2019 and resolves to a website featuring
pay-per-click links to third-party websites, some of which directly compete with Complainant’s business.

5. Parties’ Contentions

A. Complainant

Complainant contends that its registrations of the AMP CAPITAL Mark show a prima facie threshold requirement of having trademark rights for purposes of this proceeding.

Complainant further contends that the generic Top-Level-Domain (“gTLD) “.com” is not taken into account and that the entirety of the AMP CAPITAL Mark is contained in the Disputed Domain Name. Furthermore, the hyphen added to the Disputed Domain Name is not distinctive. Complainant contends that the Disputed Domain Name is confusingly similar to the AMP CAPITAL Mark.

Complainant avers that Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Respondent is not sponsored by or affiliated with Complainant. Complainant has not given Respondent permission to use Complainant’s AMP CAPITAL Mark, in any matter including domain names.

Complainant further avers that Respondent is not commonly known by the Disputed Domain Name.

Complainant further avers that Respondent is using the Disputed Domain Name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. Presumably, Respondent receives pay-per-click revenue from the linked websites that are listed at the website to which the Disputed Domain Name resolves. Complainant alleges that use of pay-per-click payment schemes are not considered a bona fide or a legitimate use by Respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.9 (pay-per-click is not bona fide or legitimate).

The registration of the Disputed Domain Name on March 11, 2019 was well after Complainant had registered its AMP CAPITAL Mark in 2003 and after the first use in commerce in 2003. Respondent registered the Disputed Domain Name after Complainant first registered its primary website at “www.ampcapital.com”.

Complainant asserts that Respondent has registered and is using the Disputed Domain Name in bad faith. Respondent had actual and constructive knowledge of the AMP CAPITAL Mark and Complainant’s business activities.

Complainant further asserts that Respondent is intentionally attracting Internet users for his/its commercial gain pursuant to paragraph 4(b)(iv) of the Policy.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

The respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview 3.0.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the AMP CAPITAL Mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends and provides evidence that it has numerous registrations of the AMP CAPITAL Mark. Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights.

Respondent has not contested the registrations. Therefore, the Panel finds that Complainant has enforceable trademark rights in the AMP CAPITAL Mark for purposes of this proceeding.

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the AMP CAPITAL Mark pursuant to paragraph 4(a)(i) of the Policy.

Complainant further contends that the gTLD “.com” is usually not taken into account under the first element and that the entirety of the AMP CAPITAL Mark is contained in the Disputed Domain Name. Furthermore, the hyphen added to the Disputed Domain Name is not distinctive. Complainant contends that the Disputed Domain Name is confusingly similar to the AMP CAPITAL Mark.

Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Also section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity – in this case the hyphen. Also section 1.11.1 of the WIPO Overview 3.0 instructs that gTLDs such as “.com” may be disregarded for purposes of assessing confusing similarity.

The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s AMP CAPITAL Mark.

Respondent has not contested Complainant’s allegations of confusing similarity.

Therefore, the Panel finds that Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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 AMP CAPITAL Mark.

Respondent is not sponsored by or affiliated with Complainant. Complainant has not given Respondent permission to use Complainant’s AMP CAPITAL Mark, in any matter including domain names.

Complainant further avers that Respondent is not commonly known by the Disputed Domain Name.

Complainant further avers that Respondent is using the Disputed Domain Name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. Presumably, Respondent receives pay-per-click revenue from the linked websites that are listed at the website to which the Disputed Domain Name resolves. Complainant alleges that use of pay-per-click payment schemes are not considered a bona fide or a legitimate use by Respondent. See WIPO Overview 3.0, section 2.9 (pay-per-click links are not bona fide or legitimate where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users).

The Panel finds that Complainant has shown a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name.

Respondent has not contested these allegations.

The Panel finds that Complainant has shown the requisites of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the AMP CAPITAL Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent Complainant from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with Complainant's AMP CAPITAL Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”). In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

Complainant further asserts that Respondent is intentionally attracting Internet users for his commercial gain pursuant to paragraph 4(b)(iv) of the Policy. Plus, Respondent has actual and constructive knowledge of Complainant’s rights in the AMP CAPITAL Mark.

The Panel finds that Complainant has established the requirements of paragraph 4(b)(iv) and of paragraph 4(a)(iii) 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 <amp-capital.com> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: May 28, 2021