PineBridge Investments IP Holdings Limited v. uche victor
Claim Number: FA1403001551301
Complainant is PineBridge Investments IP Holdings Limited (“Complainant”), represented by Claudia W. Stangle of Leydig, Voit & Mayer Ltd., Illinois, USA. Respondent is uche victor (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ceo-pinebridge.com>, registered with 1API GmbH.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2014; the National Arbitration Forum received payment on March 27, 2014.
On March 28, 2014, 1API GmbH confirmed by e-mail to the National Arbitration Forum that the <ceo-pinebridge.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2014 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@ceo-pinebridge.com. Also on March 28, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following contentions:
1. Complainant has rights in the PINEBRIDGE mark in correlation with its finance and investment services.
a. Complainant owns registrations for the PINEBRIDGE mark with the United States Patent and Trademark Office (“USPTO”) as well as with various offices internationally. A few of Complainant’s registrations include:
i. USPTO (Reg. No. 3836169 registered August 17, 2010).
ii. Mexican Institute of Industrial Property (“MIIP”) (Reg. No. 1125640 registered October 13, 2009).
iii. South African Department of Trade and Industry Companies and Intellectual Property Commission (“CIPC”) (Reg. No. 2009/20127 registered October 12, 2009).
b. Respondent’s <ceo-pinebridge.com> domain name is confusingly similar to Complainant’s PINEBRIDGE mark.
i. Respondent adds the generic term “CEO” to the beginning of Complainant’s PINEBRIDGE mark.
2. Respondent has no rights or legitimate interests in the <ceo-pinebridge.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. Respondent is not a licensee of Complainant, and Complainant’s rights in its mark precede Respondent’s registration of the disputed domain name.
ii. Respondent has not obtained authorization from Complainant to use the PINEBRIDGE mark.
iii. The WHOIS information for Respondent’s disputed domain name lists “Uche Victor” who Complainant claims has no connection to Complainant or its PINEBRIDGE mark in any way.
3. Respondent registered and is using the <ceo-pinebridge.com> domain name in bad faith.
a. Respondent uses Complainant’s PINEBRIDGE mark in an attempt to play off the good will associated with Complainant’s mark in order to appear credible amidst Respondent’s fraudulent financial and investment activities.
b. Respondent had actual and constructive knowledge of Complainant and Complainant’s mark when it registered the disputed domain name.
B. Respondent failed to submit a formal response.
1. Respondent’s <ceo-pinebridge.com> domain name is confusingly similar to Complainant’s PINEBRIDGE mark.
2. Respondent does not have any rights or legitimate interests in the <ceo-pinebridge.com> domain name.
3. Respondent registered or used the <ceo-pinebridge.com> domain name 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts that it has rights in the PINEBRIDGE mark in correlation with its finance and investment services under Policy ¶ 4(a)(i). Complainant provides evidence that it owns registrations for the PINEBRIDGE mark with the USPTO as well as with various offices internationally. A few of Complainant’s registrations include registrations for the PINEBRIDGE mark with the USPTO (Reg. No. 3836169 registered August 17, 2010); MIIP (Reg. No. 1125640 registered October 13, 2009); and the CIPC (Reg. No. 2009/20,127 registered October 12, 2009). Panels have frequently found that a complainant has rights in a mark where it provides evidence of a registration with a recognized trademark authority. See Univision Commc’ns Inc. v. Boyiko, FA 1429870 (Nat. Arb. Forum Mar. 22, 2012) (concluding that the complainant’s registration of its mark with the MIIP sufficiently demonstrated the complainant’s rights in the mark); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel notes that it is irrelevant whether a complainant registers a mark in the location of respondent. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). The Panel therefore concludes that Complainant has rights in the PINEBRIDGE mark under Policy ¶ 4(a)(i).
Complainant additionally contends that Respondent’s <ceo-pinebridge.com> domain name is confusingly similar to Complainant’s PINEBRIDGE mark under Policy ¶ 4(a)(i). Complainant asserts that Respondent adds the generic term “CEO” to the beginning of Complainant’s PINEBRIDGE mark. The Panel also notes that Respondent adds a hyphen and the generic top-level domain (“gTLD”) “.com.” Panels have continuously found that adding a generic word, a hyphen and a gTLD are insufficient variations that do not differentiate a disputed domain name from a given mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”). The Panel concludes that Respondent’s <ceo-pinebridge.com> domain name is confusingly similar to Complainant’s PINEBRIDGE mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that the disputed domain name is confusingly similar to the PINEBRIDGE mark under policy ¶ 4(a)(i).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the <ceo-pinebridge.com> domain name. Complainant explains that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) for various reasons. Complainant first contends that Respondent is not a licensee of Complainant, and Complainant’s rights in its mark precede Respondent’s registration of the disputed domain name. Additionally, Complainant states that Respondent has not obtained authorization from Complainant to use the PINEBRIDGE mark. Complainant also notes that the WHOIS information for Respondent’s disputed domain name lists “Uche Victor” who Complainant claims has no connection to Complainant or its PINEBRIDGE mark in any way. The Panel notes that according to prior panels, a respondent has no rights or legitimate interests in a disputed domain name where there is no information in the record that respondent is commonly known by that domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel concludes that Respondent has no rights or legitimate interests in the <pinebridge.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent has no rights or legitimate interests in the<pinebridge.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). Complainant contends that Respondent uses the disputed domain name in connection with the “@ceo-pinebridge.com” e-mail address in order to contact consumers and persuade them to engage in fraudulent financial and investment activities. Complainant states that these e-mails claim to be sent from “Mr. Talal Al Zain, CEO of PineBridge Investments.” Complainant further explains that the email address is used to illicit sensitive information and documents from consumers, including passports and bank account information. Panels have previously found that using a disputed domain name to deceive Internet users into disclosing their personal information is known as a phishing scheme and does not convey rights or legitimate interests in a domain name to a respondent. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use). The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant contends that Respondent registered and is using the <ceo-pinebridge.com> domain name in bad faith. Complainant explains that Respondent uses Complainant’s PINEBRIDGE mark in an attempt to play off the good will associated with Complainant’s mark in order to appear credible amidst Respondent’s fraudulent financial and investment activities. Complainant states that Respondent is trying to confuse Internet users into believing that Respondent is in fact the CEO of Complainant’s business, when it is not. The Panel finds that using a disputed domain name to attract Internet users to a website by confusing them as to the Complainant’s affiliation with Respondent’s disputed domain name indicates bad faith use and registration under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant). The Panel agrees, and concludes that Respondent registered and is using the <ceo-pinebridge.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant further states that Respondent had actual and constructive knowledge of Complainant and Complainant’s mark when it registered the disputed domain name. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ceo-pinebridge.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 6, 2014
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