WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

M.M.Warburg & CO (AG & Co.) KGaA v. Registration Private, Domains By Proxy, LLC / corey goldberg

Case No. D2021-1856

1. The Parties

The Complainant is M.M.Warburg & CO (AG & Co.) KGaA, Germany, represented by Harte-Bavendamm, Germany.

The Respondent is Registration Private, Domains By Proxy, LLC United States of America (“United States”) / corey goldberg, United States.

2. The Domain Name and Registrar

The disputed domain name <gmwarburgcommercial.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 June 14, 2021. On June 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 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 the Complainant on June 16, 2021, 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 June 18, 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 the Respondent of the Complaint, and the proceedings commenced on June 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2021. On June 29, 2021 the Center received an email from a Mr. Reed using the email address […@gmwarburgcommercial.com]. On July 9, 2021 the Center received another email from a different person using another email address […@gmwarburgcommercial.com] requesting an extension of time for filing a Response. The Center granted an extension of time until July 24, 2021 accordingly. No formal Response having been submitted by the Respondent or from the above mentioned email addresses, the Center notified the Parties Commencement of Panel Appointment Process on August 2, 2021.

The Center appointed Steven A. Maier as the sole panelist in this matter on August 5, 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 limited partnership with share capital headquartered in Hamburg, Germany. It is an independent private bank engaged in private banking, asset management, investment brokerage and investment banking.

The Complainant is the owner of various trademark registrations comprising or incorporating the names WARBURG and M.M. WARBURG. Those registrations include, for example:

- Germany trademark number 30063466 for the word mark WARBURG, registered on December 11, 2007 in International Classes 35 and 36, for goods and services including financial services and commercial asset related services.

- European Union Trade Mark number 003273174 for the word mark M.M. WARBURG, registered on December 18, 2007 in International Classes 9, 14, 16, 31, 35, 36, 38, 42, 43 and 44 for goods and services including financial affairs, asset advice and investment advice.

The Complainant is also the owner of domain names including <mmwarburg.com> and <mmwarburg.de>, which it uses for the purpose of its official website.

The disputed domain name <gmwarburgcommercial.com> was registered on July 28, 2020.

According to evidence submitted by the Complainant, the disputed domain name has resolved to a website at “www.gmwarburgcommercial.com”. The website is headed by the company “GM Warburg Commercial ” and purports to offer services including “Private Client Services”, “Discretionary Management” and “Capital Management”. The website provides contact details including a business address in Seoul, Republic of Korea and states that “GM Warburg Commercial is among the Asia Pacific Region’s most venerated boutique investment management houses.”

5. Parties’ Contentions

A. Complainant

The Complainant states that it is one of Germany’s leading private banks, founded in 1798. It states that Warburg family is the oldest continuously active banking family in the world and that the family retains a major stake in the company. The Complainant charts its history and use of various business names including the WARBURG and M.M. WARBURG marks and exhibits evidence in support thereof. The Complainant states that its balance sheet amounts to EUR 4.5 billion and that of its group EUR 6.3 billion, with EUR 69.8 billion under management and over 900 employees. The Complainant states that it is an institution of choice for international customers around the world. The Complainant asserts that, by reason of its trademark portfolio and the above matters, it enjoys substantial registered and unregistered trademark rights in the marks WARBURG and M.M. WARBURG.

The Complainant contends that the disputed domain name is confusingly similar to its WARBURG and M.M. WARBURG trademarks. It states that the mark WARBURG is wholly contained within the disputed domain name and that the term “gmwarburg” within the disputed domain name is plainly similar to its mark M.M. WARBURG. The Complainant submits that the additional term “commercial” is purely descriptive and is associated with the fields of commerce, trade, banking and finance in which the Complainant is engaged.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has no relationship with the Respondent and has never authorized it to use its trademarks in connection with any domain name. The Complainant further contends that neither the stated registrant, Registration Private, Domains By Proxy, nor the disclosed underlying registrant, Corey Goldberg, appears to have any connection with the WARBURG or M.M. WARBURG marks. The Complainant asserts, on the basis of information and belief, that the Respondent is in fact part of an established fraudulent enterprise, which has previously chosen names corresponding to well-known financial names, e.g. “Ward Henderson Management” and “GT Merrill Universal” to give a false impression of a reputable business. The Complainant alleges that the Respondent has arbitrarily chosen the disputed domain name for a similar purpose. The Complainant disputes that the laudatory language employed on the Respondent’s website is genuine or that any company corresponding to the name “GM Warburg Commercial” even exists.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith.

The Complainant contends that the Respondent obviously selected the disputed domain name in the knowledge of the Complainant’s well-known trademarks WARBURG and M.M. WARBURG and the Complainant’s reputation within the financial sector, with the intention of targeting customers who were aware of that reputation.

The Complainant states that the Respondent’s activities were drawn to its attention by a member of the public, who received a telephone call followed by an email from the Respondent. The email suggested that the individual had placed an order with “GM Warburg Commercial” and requested personal and financial information and documentation from him, which made him suspicious of a financial scam. The Complainant exhibits a copy of the email and attachments in question.

The Complainant further submits that the Respondent’s offering is inherently untrustworthy, including the Respondent’s statement:

“You will need to provide GM Warburg Commercial with a discretionary mandate allowing our portfolio managers to make investment decisions and execute transactions pertaining to your portfolio with needing to refer to you before doing so.”

The Complainant provides evidence that the Austrian Financial Market Authority has issued a warning against entering into business with “GM Warburg Commercial”. It also quotes extensively from a website operated by a German law firm named Resch Rechtsanwälte, which is stated to be a long-established expert in investor protection. That website alleges that “GM Warburg Commercial” is operating investment fraud, speculating on the reputation of Republic of Korea as a secure financial center and the good name of the Complainant’s bank. It states that many investors have lost money invested with this organization and that no reliable information is available about the individuals behind it. The website adds that the activities of the organization include installing software on customers’ computers which enables it to access their online banking and that it is difficult if not impossible to obtain the repayment of funds from the organization.

The Complainant submits on the basis of the above that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and its trademarks as to affiliation with, or endorsement of, that website.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not file a formal Response in the proceeding. However, the Center received an email on June 29, 2021, which was headed with a “GM Warburg Commercial” stylized name and logo, and stated:

“Apparently there is some kind of problem with our domain name and another company named “Warburg” doesn’t like we have a similar name. We do not know this company and are not aware of any violation whatsoever as it is the family name of one of our founding partners Johnathan Warburg.

I would assume that there are many companies around the world called Smith for instance.”

The email purported to come from an individual described as “William Reed – Assistant Manager”.

The further email to the Center, dated July 9, 2021, seeking an extension of time to file a Response, stated:

“… I can personally assure you we are fully within our rights to operate under our current name and have all paperwork to support this.”

The email goes on to say that the matters is under the control of the company’s Head of Legal, who is currently indisposed, hence the request for an extension. This email is signed by “Tan Seung-Ho – Head of Legal Assistant”.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the 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

The Complainant has established that it is the owner of registered trademark rights in the names WARBURG and M.M. WARBURG. The Panel finds that disputed domain name, <gmwarburgcommercial.com>, fully incorporates the WARBURG mark and that the term “gmwarburg” is confusingly similar to the M.M. WARBURG mark. The inclusion of the dictionary term “commercial” does not prevent a finding of confusing similarity and the Panel therefore finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

While the Complainant makes out a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, the Center has received two emails, dated June 29, 2021 and July 9, 2021, purporting to come from the Respondent. However, these emails have no apparent connection with the disclosed registrant of the disputed domain name, who is the named Respondent in this proceeding. The Panel’s further comments on the contents of these emails are made on the assumption, subject to that proviso, that they were indeed submitted on the Respondent’s behalf.

The email of June 29, 2021 implies that the Respondent registered the disputed domain name without knowledge of or reference to the Complainant’s trademarks and in connection with a bona fide offering of goods or services. It therefore falls to the Panel to assess the credibility of the claims. In this regard, the Panel rejects the claims, principally for the following reasons:

(1) The Panel does not find the email of June 29, 2021 to be credible. While that email refers to a “founding partner” named Johnathan Warburg, it provides no evidence in that regard and, based on a simple Google search, the Panel could find no reference to any such individual in connection with the “GM Warburg Commercial” business. That personal name would not in any event explain the adoption of the name “GM Warburg”.

(2) Furthermore, the Panel finds it difficult to accept the claim in that email that the Respondent was wholly unaware of the Complainant, given the long history of the Complainant in the banking sector and the claims to be a “venerated boutique investment house” offering similar services.

(3) The Panel finds the contents of the second email, dated July 9, 2021, to be somewhat inconsistent with the first. The Panel also sees no reason why, having been afforded an extension of time for service of its Response, the Respondent failed to file any formal Response or supporting evidence, in view particularly of the fact that it purports to have a legal department.

(4) No explanation has been offered concerning the disclosed underlying registrant, Corey Goldberg, who provides an address in New York City, United States, and in particular how this individual may be connected with the “GM Warburg Commercial” enterprise (supposedly based in the Republic of Korea) or the disputed domain name.

(5) While accepting that some of the Complainant’s allegations concerning the Respondent’s business practices are based on hearsay, the Panel still finds it remarkable that the Respondent has chosen not to answer, and has not therefore disputed, these very serious claims. The Panel is of the view that the Respondent’s choice not to address these allegations gives rise to serious misgivings concerning its credibility.

In all the circumstances of the case, the Panel finds therefore that the Respondent has provided no credible explanation for its choice of the disputed domain name, and is most likely to have registered that name in the knowledge of the Complainant’s WARBURG and M.M. WARBURG trademarks, with the intention of dishonestly associating its business with the Complainant’s long-established reputation in the banking sector. Such dishonest intent cannot give rise to a bona fide offering of goods or services for the purposes of the Policy and the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Similar considerations inform the questions of registration and use of the disputed domain name in bad faith. The Panel has found that the Respondent most likely registered the disputed domain name in order falsely to imply an association with the Complainant and the Panel finds further that a significant number of Internet users are likely to be misled into believing that the disputed domain name, and therefore the Respondent’s business, is in some manner commercially affiliated with the Complainant. The Panel finds therefore that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) 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, <gmwarburgcommercial.com>, be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: August 11, 2021