WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coller Capital Limited v. Joseph Reaves / Sara Morales
Case No. D2021-3161
1. The Parties
Complainant is Coller Capital Limited, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Joseph Reaves, United States of America (“United States”) / Sara Morales, United States.
2. The Domain Names and Registrars
The disputed domain names <coller-capital.com> and <coller-capital.info> are registered with Eranet International Limited (the “Registrar”).
3. Procedural History
The Complaint for the Domain Name <coller-capital.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2021. On September 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 4, 2021, Complainant requested to add the Domain Name <coller-capital.com> to the Complaint. On October 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 15, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name <coller-capital.com>, which differed from the named Respondent and contact information in the Complaint. On October 29, 2021, the Registrar disclosed the registrant and contact information for the Domain Name <coller-capital.info>, which also differed from the named Respondent and contact information in the Complaint. On October 29, 2021, the Center sent an email communication to Complainant providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint or to file a separate complaint for each of the Domain Names. Complainant filed an amended Complaint on November 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 November 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 8, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on December 30, 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. Procedural issues: Addition of Domain Name and Consolidation of Respondents
The Complaint was originally submitted regarding the Domain Name <coller-capital.com>. Complainant requested to add the Domain Name <coller-capital.info> to the proceeding (the “Additional Domain Name”). The Domain Name and the Additional Domain Name shall be henceforth referred to as the Domain Names.
The Panel considers it reasonable to accept the consolidation of the Additional Domain Name to the Complaint for the following reasons, taking also into account the following features of the two Domain Names and the arguments submitted by Complainant for the consolidation:
- both Domain Names are identical to Complainant’s COLLER CAPITAL trademark and only include an hyphen in the middle of these two words, thereby having the same structure and composition;
- the Domain Names are identical with each other, varying only in the Top-Level Domain (“TLD”);
- the Domain Names were registered a little over a month apart, namely in August and September 2021;
- the Domain Names were registered through the same Registrar ERANET INTERNATIONAL LIMITED;
- the Domain Names previously redirected to Complainant’s own website;
- currently both Domain Names lead to inactive websites;
- both Domain Names have MX records set up; and
- both Domain Names are hosted on the servers “Cloudflare.com”.
The Panel finds that the consolidation of the Domain Names to the present proceeding is fair and equitable to the Parties, and favours procedural efficiency (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. Ludwig Rhys, WIPO Case No. D2016-2448).
Furthermore, the Panel finds that the consolidation of the Domain Names is fair to the Parties, and Respondents have been given an opportunity to object to consolidation through the submission of pleadings to the Complaint (if indeed there is more than one Respondent for these Domain Names), but have chosen not to rebut the consolidation (see WIPO Overview 3.0, section 4.11.2; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302). Based on the Complaint, the Panel finds that it is more likely than not that the Domain Names are in common control of one entity; hence, the Panel grants the consolidation for the Domain Names (and will refer to these Respondents as “Respondent”).
5. Factual Background
Complainant was founded in 1990 and is one of the world’s leading investors in private equity’s secondary market. Complainant supports its global clients through its headquarters in London and offices in New York and Hong Kong, China. Complainant’s tradename derives from the surname of its founder, Jeremy Coller. In 2021, Complainant closed its eighth secondaries fund, Coller International Partners VIII, with capital commitments of USD 9 billion and participation of approximately 200 of the world’s leading institutional investors. Complainant maintains a strong Internet presence, mainly through its primary website at “www.collercapital.com”. Per Complaint, such website received over 235 million individual visits in the 12- month period between September 2020 and August 2021.
Complainant is the owner of trademark registrations for COLLER CAPITAL worldwide, either in its own name or through its subsidiary, Coller Holdings Limited. These include:
- United States trademark registration no. 2809826 COLLER CAPITAL (word), filed on April 22, 2002 and registered on February 3, 2004 for services in international class 36 and
- European Union Trade Mark registration no. 002718146 COLLER CAPITAL (word), filed on May 31, 2002 and registered on December 16, 2003 for services in international class 36.
Complainant is also the owner of the domain name <collercapital.com>, registered on June 8, 1998.
The Domain Name <coller-capital.com> was registered on August 9, 2021, and the Additional Domain Name <coller-capital.info> was registered on September 30, 2021.
As Complainant demonstrated, Respondent had been using the Domain Names to redirect users to Complainant’s own website at “www.collercapital.com”. Additionally, Respondent had sent fraudulent emails purportedly coming from Complainant. These emails employed Complainant’s company name in the signature panel alongside the Domain Names appearing as the purported website names of the emails’ signatory. Respondent had been sending fraudulent emails with offers of employment where the Additional Domain Name was listed as part of its signature alongside Complainant’s company name and details. Per Complaint, Respondent has also setup active MX records on the Domain Names. Complainant sent cease and desist letters to which Respondent did not reply. The Domain Names currently lead to inactive websites.
6. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements that Complainant must satisfy with respect to the Domain Names:
(i) the Domain Names are 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 Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Domain Names incorporate Complainant’s trademark COLLER CAPITAL in its entirety. This is sufficient to establish confusing similarity (WIPO Overview 3.0, section 1.7).
The addition of the hyphen between the two words “coller” and “capital” in the Domain Names does not prevent a finding of confusing similarity, as the trademark COLLER CAPITAL remains clearly recognizable (WIPO Overview 3.0, section 1.7).
The generic Top-Level Domains (“gTLD”) “.com” and “.info” are disregarded, as gTLDs typically do not form part of the comparison as they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; and Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Names are confusingly similar to the COLLER CAPITAL mark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Names or a trademark corresponding to the Domain Names in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Names used to redirect to Complainant’s own main website. The Respondent’s use of the Complainant’s mark to redirect users to Complainant’s own main website would not support a claim to rights or legitimate interests.
Furthermore, the Domain Names appeared in the text of emails with employment offers purportedly of Complainant in the context of a fraud scheme. Use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent (WIPO Overview 3.0, section 2.13.1).
Lastly, the nature of the Domain Names carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.
Complainant has established Policy, paragraph 4(a)(ii).
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 the Domain Names in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names 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 its documented out-of-pocket costs directly related to the Domain Names; or
(ii) that Respondent has registered the Domain Names 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) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Names, 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 concludes that Respondent has registered and used the Domain Names in bad faith.
Because the COLLER CAPITAL mark had been widely used and registered by Complainant before the Domain Names registrations, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Names (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). This also in view of the fact that COLLER CAPITAL is a made up name, composed of the surname of its founder.
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search (see Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; and Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of COLLER CAPITAL (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
As regards the websites the Domain Names redirected to, Complainant demonstrated that they redirected to Complainant’s own website, while they were also used in the text of fraudulent emails purportedly of Complainant, which also further supports knowledge of Complainant and its field of activity.
As regards bad faith use, the Panel considers the following factors:
(i) the use of the Domain Names in an email fraud scheme which involved impersonating Complainant and sending emails purportedly sent by Complainant, with offers of employment, which included in the signature panel Complainants’ company name next to the Domain Names appearing as the purported website names of the emails’ signatory;
(ii) the failure of Respondent to submit a response;
(iii) the fact that the Domain Names redirected to Complainant’s own website; and
(iv) the fact that active MX records are present on the Domain names.
The Domain Names currently do not resolve to active websites. The non-use of a domain name does not prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3).
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Names in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <coller-capital.com> and <coller-capital.info>, be transferred to the Complainant.
Date: January 13, 2022