PineBridge Investments IP Holdings Limited c/o Intertrust Corporate Services (Cayman) Limited v. Omuvbie Graphic
Claim Number: FA2202001986020
Complainant is PineBridge Investments IP Holdings Limited c/o Intertrust Corporate Services (Cayman) Limited (“Complainant”), represented by Claudia W. Stangle, Illinois, USA. Respondent is Omuvbie Graphic (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pinebridgefx.com>, registered with Hosting Concepts B.V. d/b/a Registrar.eu.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 25, 2022; the Forum received payment on February 25, 2022.
On March 1, 2022, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to the Forum that the <pinebridgefx.com> domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 2, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pinebridgefx.com. Also on March 2, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, PineBridge Investments IP Holdings Limited c/o Intertrust Corporate Services (Cayman) Limited, utilizes the PINEBRDIGE mark in association with financial and investments services. Complainant maintains registration of the PINEBRIDGE with the United States Patent and Trademark Office (“USPTO”) and with authorities in Canada and the European Union. See Amend. Compl. Ex. B. The <pinebridgefx.com> domain name is identical or confusingly similar to Complainant’s PINEBRIDGE mark because it wholly incorporates Complainant’s mark while adding in the abbreviation “fx”, meaning “foreign exchange”, and the “.com” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have any rights or legitimate interests in the <pinebridgefx.com> domain name because Respondent is not commonly known by the domain name nor is Respondent a licensee of Complainant’s PINEBRIDGE mark. Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent purports to provide competing services.
Respondent registered and uses the <pinebridgefx.com> domain name in bad faith because Respondent’s domain name creates confusion among users as to its affiliation with Complainant where Respondent uses the domain to offer similar services Complainant provides. Respondent further made use of a privacy service to conceal its identity. Respondent acted with actual or constructive knowledge of Complainant’s rights in the PINEBRIDGE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Caymanian company engaged in the provision of financial and investments services.
2. Complainant has established its trademark rights in the PINEBRIDGE mark by the registration of the mark with the United States Patent and Trademark Office (“USPTO”) and with authorities in Canada and the European Union.
3. Respondent registered the disputed domain name on June 6, 2021.
4. Respondent uses the disputed domain name to provide products competing with those of Complainant, showing that Respondent has no rights or legitimate interests in the domain name and that the domain name was registered and is used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the PINEBRDIGE mark through its registration of the mark with multiple trademark authorities. Registration of a mark with multiple authorities is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Complainant provides a representative list showing its registrations of the PINEBRIDGE mark with authorities in Canada, European Union, and with the USPTO (e.g. Reg. No. 3,836,169 – Registered August 17, 2020). See Amend. Compl. Ex. B. Therefore, the Panel finds that Complainant has rights in the PINEBRIDGE mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PINEBRDIGE mark. Complainant argues that the <pinebridgefx.com> domain name is confusingly similar to Complainant’s PINEBRIDGE mark because it wholly incorporates Complainant’s mark while adding the abbreviation “fx”, widely understood to mean “foreign exchange” and the “.com” gTLD to form a domain name. A domain name may be found to be confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), despite the addition of an abbreviation and a gTLD. See Thomson Reuters Global Resources v. Richard Marsh / intach / Steven Szybillo / intach / Michael Wilczynski / intach / Gary Clarke / intach / James Saunders / intach / Paul Randolph/ intach / John Geisler / intach, FA 1516146 (Forum Oct. 2, 2013) (finding that the disputed domain names fully incorporate Complainant’s THOMSON REUTERS mark while merely adding the term “scie,” “ahci,” “sci,” or “ssci.” The Panel stated, “Each of these added terms constitutes an abbreviation of Complainant’s SCIENCE CITATION INDEX EXPANDED, ARTS & HUMANITIES CITATION INDEX, SCIENCE CITATION INDEX, or SOCIAL SCIENCES CITATION INDEX marks,” and held that such abbreviations made the relevant domain name confusing similarity to the trademark under Policy ¶ 4(a)(i).); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that the <pinebridgefx.com> domain name is confusingly similar under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s PINEBRDIGE mark and to use it in its domain name adding only the abbreviation “fx” to the mark;
(b) Respondent registered the disputed domain name on June 6, 2021;
(c) Respondent uses the disputed domain name to provide products competing with those of Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have any rights or legitimate interests in the <pinebridgefx.com> domain name because Respondent is not commonly known by the domain name nor is Respondent a licensee of Complainant’s PINEBRIDGE mark. Where a respondent does not provide evidence to the contrary, evidence may be introduced via identifying WHOIS information unrelated to a domain name and lack of authorization to use a mark to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). Identifying WHOIS information lists “Omuvbie Graphic” as the registrant of the domain name. See Registrar Email Verification. Complainant submits that Respondent is not authorized to use Complainant’s PINEBRIDGE mark nor is Respondent an authorized licensee. Therefore, the Panel finds that Respondent is not commonly known by the <pinebridgefx.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent is not using the <pinebridgefx.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent uses the domain name to offer competing products to those of Complainant. Use of a domain name to offer competing products may be evidence of a domain name not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots of the resolving website showing Respondent purporting to offer financial services. See Amend. Compl. Ex. D. Therefore, the Panel finds that Respondent is not using the <pinebridgefx.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent has registered and used the <pinebridgefx.com> domain name in bad faith because Respondent creates confusion amongst internet users as to its association with Complainant by providing services related to and provided by Complainant. Evidence of bad faith registration and use may be found, under Policy ¶¶ 4(b)(iii) and (iv), where a respondent uses a domain name that confuses users as to its association to offer services that compete with those of a complainant. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”). Complainant provides screenshots of the resolving website which shows Respondent’s purporting to offer related services in finance. See Amend. Compl. Ex. D. Therefore, the Panel finds that Respondent registered and uses the <pinebridgefx.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent registered and uses the <pinebridgefx.com> domain name in bad faith because Respondent made use of a privacy service when it registered the domain name. Use of a privacy service may be evidence of bad faith under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). At the commencement of this dispute, the registrant name read as “REDACTED FOR PRIVACY”. See Amend. Compl. Ex. C. It was not until after Registrar verification that the registrant name was known to be “Omuvbie Graphic”. See Registrar Verification Email. Therefore, the Panel finds that Respondent registered and uses the <pinebridgefx.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues Respondent acted with actual or constructive knowledge of Complainant’s rights in the PINEBRDIGE mark due to Complainant’s multiple registrations in the PINEBRIDGE mark. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pinebridgefx.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: March 29, 2022
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