Burford Capital LLC v. Domain Administrator / Burford Capital Ltd
Claim Number: FA1702001715698
Complainant is Burford Capital LLC (“Complainant”), represented by Stacy J. Grossman of Law Office of Stacy J. Grossman, New York, USA. Respondent is Domain Administrator / Burford Capital Ltd (“Respondent”), Belize.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <burfordeurope.com>, registered with CSL Computer Service Langenbach GmbH d/b/a joker.com (the “Disputed Domain Name”).
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 2, 2017; the Forum received payment on February 2, 2017.
On February 6, 2017, CSL Computer Service Langenbach GmbH d/b/a joker.com confirmed by e-mail to the Forum that the <burfordeurope.com> domain name is registered with CSL Computer Service Langenbach GmbH d/b/a joker.com and that Respondent is the current registrant of the name. CSL Computer Service Langenbach GmbH d/b/a joker.com has verified that Respondent is bound by the CSL Computer Service Langenbach GmbH d/b/a joker.com 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 February 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2017 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@burfordeurope.com. Also on February 6, 2017, 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.
A timely Response was received and determined to be complete on February 6, 2017.
Complainant’s Additional Submission was received and determined to be in compliance with the Rules on February 10, 2016.
On February 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kendall C. Reed as Panelist.
On March 1, 2017 and pursuant to Rule 12, the Panel requested that the Respondent provide further information as follows:
“Respondent is hereby requested to provide evidence as to the full legal name of its director, Thorn Burford. Examples would include: official government documents, such as a copy of the relevant portion of a passport, a driver’s license, etc. *Note that the passport number and/or driver’s license number may be redacted at Respondent’s discretion, so long as the evidence of the name is not eliminated.
Should Respondent provide this documentation, Complainant is invited to respond within 5 days of Forums’ receipt of Respondent’s submission.”
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a financial and professional services company that was founded in 2009. Among other things, Complainant provides financing to help corporations and law firms manage the legal costs and uncertainty of pursuing commercial litigation.
Complainant obtained a registration for its BURFORD mark from the United States Patent and Trademark Office, registration number 4235491, on or about October 30, 2012, which registration applies to services including business advisory and consulting services in conjunction with financing and market research (“the Complainant’s Mark”). Complainant also owns European and European Union trademark registrations for the Complainant’s Mark.
Respondent registered the Disputed Domain Name on January 11, 2017. It is currently being used to promote a company called “Burford Capital”, which purports to be a “strategic consulting firm delivering expertise in commercial litigation finance, corporate intelligence, analytics, and strategy to help law firms, hedge funds and the alternative investment community”.
The Disputed Domain Name is confusingly similar to Complainant’s Mark because it is comprised of the BURFORD mark in its entirety, with the addition of the word “Europe”. The addition of a geographic term is insufficient to differentiate a disputed domain name from a given mark.
Respondent should be considered as having no rights or legitimate interests in respect to the Disputed Domain Name. The Disputed Domain Name is not affiliated with Respondent, and Complainant has not authorized Respondent to use Complainant’s Mark.
Complainant’s rights in Complainant’s Mark long precede Respondent’s registration of the Disputed Domain Name.
Finally, although the registrant listed on the WHOIS information is Burford Capital Ltd., Respondent was not commonly known by that name prior to the registration of the Disputed Domain Name.
The Disputed Domain Name should be considered as having been registered and having been used in bad faith. Complainant’s Mark is widely known and was so when Respondent registered the Disputed Domain Name for the purpose of offering services identical to those of Complainant.
Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its website.
B Respondent
Complainant is the owner of the trademarks BURFORD, BURFORD CAPITAL, and BURFORD GROUP in the United States and in the European Union in connection with the following trademark classes (NICE) 35, 36, and 45.
However, Complainant is not the owner of these trademarks in any other jurisdiction of the world. More specifically, Complainant is not the owner of the trademark BURFORD EUROPE, and if Complainant considered the domain name <burfordeurope.com> [the Disputed Domain Name] as essential to its activities or as a possible way for prospective clients to reach its services, Complainant could have registered the BURFORD EUROPE trademark, but it did not do so.
Respondent is a Belize-based company with registered offices in Belize. The company is incorporated under the laws of Belize, and is established to carry on any trade or business. This proves that the Disputed Domain Name is being used in connection with a bona fide offering of services and for a legitimate fair use. “Moreover, the target clients of [the Respondent] are law firms, hedge funds, and the alternative investment community.” This target market does not consist of average Internet users looking for retail services, but rather this target market consists of sophisticated users who are well able to differentiate the two companies.
Without admitting that Complainant is correct and without waiving the right to use its company name in connection with the Disputed Domain Name, but as a demonstration of good faith, Respondent is now using the brand “Thorn Finance” to advertise it services on its website under the Disputed Domain Name.
It is an abuse of law for one who has registered a generic trademark within the United States and Europe to have complete control over that trademark as used in connection with the Internet, which by its nature extends to all the countries in the world.
Further, if Complainant were to prevail in this action, that would also mean that no one could use a company’s name in connection with a domain name where the purpose was to present criticisms and point out the bad acts of the company or further the interests of a class action against the company. This cannot be the case, and consequently Complainant should not be allowed to prevail in this action.
The name Burford is “a very common name.”
Respondent’s Response is signed by its director, Thorn Burford.
C. Complainant’s Additional Submissions
Respondent has failed to demonstrate that it has any rights or legitimate interest in respect of the Disputed Domain Name or that it registered the Disputed Domain Name in good faith.
Respondents Response evidences a misunderstanding of the law. Under the UDRP, if a complainant has trademark rights, it is entitled to relief against a party who registers a domain name where the complainant is able to demonstrate the required elements.
Respondent has failed to demonstrate that it was commonly known by the name Burford Capital, or that it has any rights or legitimate interests in the Disputed Domain Name. The mere creation of a legal entity is insufficient to demonstrate that a respondent is commonly known by a corresponding domain name.
It is inconceivable that Respondent did not know about Complainant and the Complainant’s Mark prior to or at the time Respondent registered the Disputed Domain Name given Complainant’s prominence in the market in which they both operate. Further, despite Respondent’s assertion that the name “Burford” is common, it is inconceivable that Respondent would have independently created and employed the word “Burford” as a company name and an associated domain name under which to conduct a business competitive to Complainant.
Respondent’s argument that the respective parties’ target clients are sophisticated and might therefore be able to differentiate Respondent from Complainant is not relevant under the UDRP.
Respondent’s “good faith” effort to avoid confusion with respect to its website content by changing its name therein from “Burford Capital” to “Thorn Finance” is not relevant. The Panel must consider the content of the Disputed Domain Name at the time the Complaint was filed, not after. Further, Respondent’s changes only serve to amplify Complainant’s cause for concern. Now, consumers visiting Respondent’s website will wonder whether Complainant has an affiliate called “Thorn Finance.” The highly confusing “disclaimer” page of Respondent’s website now states “Thorn Finance is a corporate brand of Burford Capital Ltd. (“Burford”). Burford is a Belize-based firm.”
Respondent’s argument with respect to the potential use of the Disputed Domain Name to protest against Complainant or criticize the Complainant is not relevant. Respondent has not used its website to make any protest against or criticize Complainant.
D. Respondent’s Reply to the Panel’s Rule 12 Request for Additional Information
Respondent’s Additional Submission reads as follows:
“It’s true the rule 12 of the ICANN Rules provides, with respect to “Further Statements” that “[i]n addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”, and we understand the importance of your request, but unfortunately we would never be able to disclose information about our top management team, since such information is confidential and secret.
Considering the nature of our business, we strive to maintain confidentiality on all fronts, including information about our human resources, since this gives us an opportunity to obtain an advantage over competitors who do not know our resources, as well as security reasons.”
Complainant is a financial and professional services company that was founded in 2009. Among other things, Complainant provides financing to help corporations and law firms manage the legal costs and uncertainty of pursuing commercial litigation.
Complainant obtained a registration for its BURFORD mark from the United States Patent and Trademark Office, registration number 4235491, on or about October 30, 2012, which registration applies to services including business advisory and consulting services in conjunction with financing and market research. Complainant also owns European trademark registrations for the BURFORD mark.
Respondent is not associated with Complainant and Complainant has not authorized Respondent to use Complainant’s Mark.
Respondent registered the Disputed Domain Name on January 11, 2017, and the registrant of the Disputed Domain Name is Burford Capital Ltd.
Burford Capital Ltd., is incorporated under the laws of Belize (on January 12, 2017), and is established to carry on any trade or business. Respondent’s business is to provide strategic consulting services focused on delivering expertise in commercial litigation finance, corporate intelligence, analytics, and strategic to help law firms, hedge funds and the alternative investment community. These services complete with those of Complainant
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.
Complainant has rights under the Policy in the trademark BURFORD by virtue of its United States trademark registration. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man).
The Disputed Domain Name is confusingly similar to Complainant’s Mark. The Disputed Domain Name contains the entirety of Complainant’s Mark, with the addition of a geographic term and the “.com” gTLD, which additions are insufficient to create a meaningful distinction pursuant to the Policy. See Chevron Intellectual Property LLC v. Fred Wallace, FA1626022 (Forum July 27, 2015) (“The Panel finds that the <chevron-europe.com> domain name is confusingly similar to the CHEVRON mark under Policy ¶ 4(a)(i).”).
As such, Complainant has established the first element of Policy.
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 (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 (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.”).
Here, Complainant carries its initial burden by making out a prima facie case. Respondent is not associated with Complainant, and Complainant has not authorized Respondent’s use of Complainant’s Mark. Further, Complainant has provided evidence that could support the proposition that Respondent was not “commonly known” by the name Burford for purposes of the Policy and that Respondent has not engaged in conduct relevant to fair use.
Respondent fails to carries its burden.
Respondent argues that under Policy paragraph 4(c)(iii) it is making a fair use of the Disputed Domain Name. However, “fair use” for purposes of the Policy is a concept applicable to non-commercial activities. Respondent’s use of the Disputed Domain Name is commercial, involving the offering of “…strategic consulting services focused on delivering expertise in commercial litigation finance, corporate intelligence, analytics, and strategies to help law firms, hedge funds and the alternative investment community.”
Respondent argues that for purposes of Policy paragraph 4(c)(ii), it is commonly known as “Burford Capital Ltd.,” However, Respondent has failed to provide sufficient evidence to establish this point.
Respondent does provide the Panel with a copy of its Certificate of Incorporation from the Registrar of International Business Companies of Belize City, Belize, and this is dated 12 January 2017, which is one day after the Disputed Domain Name was registered on 11 January 2017. The order of these dates is immaterial and could have everything to do with bureaucratic efficiencies within the involved governmental office. Rather, what is important is that an entity does not ipso facto become “commonly known” by its registered name for purpose of the Policy on the date of its incorporation. Establishing this point requires at least some time and usage, among other possible evidence. The Panel need not and does not define how much time and how much usage may be necessary in any given situation, and presumably the evidence about this would not need to be as strong as is necessary to demonstrate a common-law trademark, but none is insufficient.
It is true that Panels often look to the WHOIS record to determine the name of a registrant and accept this as definitive, but this does not mean that this approach is to be applied to all cases. A Panel must look at the totality of circumstances in each case and make the determination about whether a respondent has been “commonly known” by the involved disputed domain name. In the present matter and under the totality of circumstances, the Panel finds that Respondent has not established that it has been “commonly known” by the name “Burford Capital Ltd.” for purposes of the Policy.
Also, it would invite mischief to hold to a fixed rule with respect to artificial entities and allow a respondent to prove that it has been “commonly known” by a name for purposes of the Policy based solely on its corporate registration that is accomplished at the same time as its registration of a disputed domain name. See Google Inc., v. GOOGLESERVICES, Case No. FA 110500139118 (Forum July 6, 2011)(“This Panel is satisfied that on the balance of probabilities Respondent’s company GOOGLE SERVICES LIMITED never traded and was registered as a sham in an endeavor to give the registration of the two domain names some legitimacy. Based on the evidence before this Panel Complainant had already established a reputation and goodwill in the GOOGLE mark when Respondent registered the disputed domain name and the eponymous United Kingdom registered company.”); see also EXXON Mobil Corporation v. newatlas/ newatlas c/o shalh elsokary / c/o EXXONMOBIL-EMIRATES.NET, Case No. FA 11080011401904 (Forum Aug. 18, 2011)(“Respondent’s [corporate registrations] are insufficient to demonstrate that Respondent is commonly known by the domain name under Paragraph 4(c)(ii), and it appears to the Panel that Respondent adopted its name solely for the purpose of falsely passing itself off as being associated with Complainant.”).
Respondent also argues that its use of the Disputed Domain Name is in connection with a bona fide offering of services pursuant to Policy paragraph 4(c)(i). These services by Respondent are as noted, to provide “…strategic consulting services focused on delivering expertise in commercial litigation finance, corporate intelligence, analytics, and strategic to help law firms, hedge funds and the alternative investment community.” This is indeed a bona fide offering of services in a vernacular sense. However, panels have routinely held that a use of a disputed domain name that is in bad faith under Policy paragraph 4(b) precludes a finding that the use is in connection with a bona fide offering of services under the Policy paragraph 4(c)(i). 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).”). See also Electric Mirror, LLC v. Eric Reao. FA 643238 (Forum Nov. 24, 2015) (“Whereas the sale of mirrors on the internet is a legitimate commercial activity and, in the vernacular sense, is a bona fides activity, Panels have routinely held that for purposes of the Policy [,] a use of a disputed domain name that is in bad faith under Policy paragraph 4(b) precludes a finding in favor of a respondent with respect to rights or legitimate interest in a disputed domain name under Policy paragraph 4(c)(i)”).
As is noted below, Respondent’s use of the Disputed Domain Name is in bad faith, and as such it is not being used in connection with a bona fide offering of services.
As such, Complainant has established the second element of the Policy.
Policy Paragraph 4(b)(iv) reads in pertinent part:
“For purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the resignation and use of a domain name in bad faith: (iv)…by using the domain name, you have attempted to attract, for commercial gain, Internet users to your web site … by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of you website… or of a …service on your web site…”.
The following factors are generally accepted as sufficient to establish evidence of bad faith under Policy paragraph 4(b)(iv): the use of an identical or confusingly similar disputed domain name; commercial competition with the complainant; and the respondent knew about the complainant’s mark. See Yahoo! Inc v. Butler, FA 744444 (Forum Aug. 17, 2006)(finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! Mark at the time of registration); see also, Xylem Inc. and Lylem IP Holdings LLC v. YinSi BaoHu YikaiQi, FA 1504001612750 (Forum May 13, 2015)(“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
In the present matter, Complainant has established that the Disputed Domain Name is confusingly similar to Complainant’s Mark, and Complainant has established that Respondent is using the Disputed Domain Name to offer services that complete with those of Complainant.
With respect to Respondent’s knowledge about Complainant’s Mark, Complainant argues that Respondent had actual knowledge of Complainant and its trademarks at the time of registration of the Disputed Domain Name, because of the identicality between the services offered by both entities, and because of Complainant’s predominance in the market. It is inconceivable that Respondent could have registered the Disputed Domain Name without actual knowledge of Complainants rights in Complainants Mark. Respondent does not address these allegations directly, but argues that the name “Burford” is “very common.”
The Panel notes that the commercial arena in which the parties operate is not a casual one. Those who operate within this arena necessarily have a not insignificant level of knowledge, experience, and presumably training. As such, it is not credible that those who operate within this arena would not know the other prominent players in the industry, even if the associated trademarks are not generally known to the wider public. From this the Panel concludes that Respondent did have actual knowledge of Complainant’s Trademark.
Further, the Panel is not persuaded that the name “Burford” is so common that the explanation for its use by Respondent is a random coincidence.
Respondent argues that Respondent’s target customers are “Law firms, hedge funds, and the alternative investment community,” and these are sophisticated people well able to differentiate Complainant from Respondent, that is, they are very unlikely to be confused. This is not persuasive. In the Panel’s experience, sophistication is little to no protection against the likelihood of confusion when it comes to domain names.
Respondent argues that it has solved any potential problem of customer confusion by changing its website to prominently use the brand “Thorn Finance” in place of “Burford Capital.” Complainant argues that this after the fact change in Respondent’s website is irrelevant, and this change does not solve the problem, but at best only shifts it. Potential customers will now be confused about whether Thorn Finance is related to Complainant in some way, such as potentially being a division, subsidiary, affiliate, or in some other way being authorized by Complainant. Further, Complainant argues that a change to Respondent’s website after the filing of a Complainant is additional evidence of bad faith.
The Panel agrees with Complainant to the extent that this after the fact change is irrelevant and that a change to “Thorn Finance” does not solve the problem, but at best only shifts it.
Respondent makes several arguments based on a misreading of the Policy, to wit: Respondent is entitled to use the Disputed Domain Name because Complainant can’t use the registered trademarks BURFORD, BURFORD CAPITAL, or BUFORD GROUP to block all possible domain names containing the word “burford”; that Complainant is not the owner of the trademark BURFORD EUROPE, and therefore it cannot block Respondent from using the Disputed Domain Name; and if Complainant considered the Disputed Domain Name as essential to its activities, Complainant could have registered it. Whereas the Panel agrees that the naming convention within the Internet environment is generally first come, first served, that does not mean that anyone can register any domain name and use it for any purpose. The Policy stands as a narrowly tailored set of restrictions on how domain names can be used.
As such, Complainant has established the third element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <burfordeurope.com> domain name be TRANSFERRED from Respondent to Complainant.
Kendall C. Reed, Panelist
Dated: March 8, 2017
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