WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Xero Limited v. Privacy service provided by Withheld for Privacy ehf / John David

Case No. D2021-2630

1. The Parties

Complainant is Xero Limited, New Zealand, represented by James & Wells, New Zealand.

Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / John David, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <xerofund.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on the same day, 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 August 16, 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 August 17, 2021. Respondent sent an email communication on August 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 Respondent of the Complaint, and the proceedings commenced on August 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2021. Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the Commencement of Panel Appointment Process on September 15, 2021.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on September 21, 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 a New Zealand company, established in 2006, offering inter alia cloud-based accounting software. It is the proprietor of numerous registrations for its XERO mark, including the following:

- New Zealand Trademark Registration No. 758103 for XERO (word mark), registered on May 2, 2007 for goods and services in classes 9, 16, 35, 36, 38, 41 and 42;
- European Union Trademark No. 005867361 for XERO (word mark), registered on March 12, 2008 for goods and services in classes 9, 36 and 38;
- United States of America Trademark No. 3,850,387 for XERO (word mark), registered on September 21, 2010 for services in classes 9, 36 and 38.

Complainant acquired the domain name <xero.com> in 2006 and operates its primary business website at “www.xero.com”. It is the proprietor of the several other domain names incorporating its XERO mark, including <xeroaccounting.com> and <xero.co.nz>.

The disputed domain name was registered on December 27, 2020. It resolves to a website offering investment management services to consumers by an entity calling itself “Xero Fund.”

The record contains a copy of Complainant’s cease-and-desist letter sent to Respondent on June 17, 2021. The record does not reflect a response thereto.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant states that the disputed domain name incorporates the entirety of its registered XERO mark, together with the dictionary term “fund”. Complainant is a publicly listed company in New Zealand and Australia, and was named by Forbes as the World’s Most Innovative Growth Company in 2014 and 2015. Complainant reported 409.8 million New Zealand dollars in operating revenue for the six-month reporting period preceding the registration of the disputed domain name in 2020. Also in 2020, Complainant recorded 2.45 million paying customers in 180 countries, and operated eight offices, including four in New Zealand. As a result of its extensive trading, marketing and social media activity, Complainant has acquired extensive goodwill in its XERO mark.

Under the second element, Complainant states that it has not licensed nor granted permission to Respondent to use its XERO mark in the disputed domain name. Respondent is not commonly known by the disputed domain name and is not making a bona fide use of it. Respondent’s website contains false information about Respondent, for instance, stating that it is a registered entity in New Zealand when no such New Zealand entity exists. The contact information listed is identical to Complainant’s registered address, and Respondent is not located at this address. Respondent appears to be operating similar sites under other domain names.

Under the third element, Complainant states that the registration of its XERO mark predates the registration of the disputed domain name. Respondent knew of Complainant’s XERO mark and of Complainant’s reputation and goodwill therein, and registered the disputed domain name to attract users to its website. Respondent provided fraudulent contact information when registering the disputed domain name. Complainant is aware of actual instances of confusion regarding whether Respondent is affiliated with Complainant. Complainant submits evidence that Respondent has misinformed consumers that it is affiliated with Complainant, and that consumers allege to have been defrauded by Respondent. Complainant has submitted takedown requests without success, using a fraud alert service.

Complainant requests transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions. The record contains Respondent’s email correspondence with the Center regarding the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

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

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the XERO mark through registrations in New Zealand, the European Union, and other jurisdictions. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1.

In comparing Complainant’s XERO mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark. The disputed domain name comprises Complainant’s mark followed by the dictionary term “fund”. It is the consensus view of UDRP panels that where the relevant trademark is recognizable within the disputed domain name the addition of other terms does not prevent a finding of confusing similarity. See, for example, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, and UDRP cases such as Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd, WIPO Case No. D2001-0110; and Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.

It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The circumstances stated in the Complaint and evidence in support set forth in the annexes thereto indicate that Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by Complainant and has no trademark rights in the XERO mark. Moreover, the disputed domain name contains Complainant’s mark in its entirety together with the term “fund”, thereby suggesting sponsorship or endorsement by the trademark owner. Such use cannot confer rights or legitimate interests. See, for example, WIPO Overview 3.0, section 2.5.1.

Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain names.

Respondent has not proved rights or legitimate interests. There is no evidence that Respondent is commonly known by the disputed domain name, or that there are any circumstances or activities that would establish Respondent’s rights therein. The disputed domain name resolves to a website purporting to offer consumer investment services by an entity holding itself out as a New Zealand company at Complainant’s address. However, the record contains evidence that the legal entities cited appear to be registered, if at all, in entirely different countries. On balance, the Panel finds that the evidence supports a finding that Respondent is engaging in fraudulent activity, which can never confer rights or legitimate interests. See WIPO Overview 3.0, section 2.13, and cases cited thereunder.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a disputed domain name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant’s rights in its XERO mark predate the registration the disputed domain name by more than a decade. The disputed domain name reflects Complainant’s XERO mark in its entirety, together with the dictionary term “fund,” which implies affiliation with Complainant’s accounting-software business. On balance, the Panel finds that Respondent was aware of Complainant when registering the disputed domain name.

The Panel finds that Respondent has demonstrated bad faith use of the disputed domain name. The evidence on record supports a finding that Respondent is attempting to defraud Internet users by inviting them to transfer funds for “investment” by an entity holding itself out as affiliated with Complainant. Respondent appears to be operating similar schemes at other websites with identical content and appearance but under different entity names. Respondent has concealed its identity, provided false contact information, and failed to respond to Respondent’s cease-and-desist letters. Persons acting on behalf of Respondent have stated to consumers that Respondent is affiliated with Complainant when inviting these consumers to “invest” funds with Respondent. All these factors support a holding of bad faith registration and use of the disputed domain name. See WIPO Overview 3.0, section 3.4 and cases cited thereunder.

The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 <xerofund.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: October 5, 2021