Guggenheim Capital, LLC v. Young Group
Claim Number: FA1609001695163
Complainant is Guggenheim Capital, LLC (“Complainant”), represented by John J. Dabney of McDermott Will & Emery LLP, District of Columbia, USA. Respondent is Young Group (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guggeheimpartners.com>, registered with Domain.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2016; the Forum received payment on September 23, 2016.
On September 23, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <guggeheimpartners.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC 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 September 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 2016 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@guggeheimpartners.com. Also on September 26, 2016, 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 October 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Pursuant to UDRP Rule 3(b)(viii), set forth below is the Trademark/Service Mark Information:
[a.] This Complaint is based on Complainant’s well-known and federally registered trademark GUGGENHEIM PARTNERS®. Complainant is a global leader in providing investment and advisory financial services in the fields of insurance, business, banking, asset management and investment. Through its operating subsidiary Guggenheim Partners, LLC, Complainant has offered a wide range of financial services under the GUGGENHEIM PARTNERS® mark since as early as 2000.
[b.] Complainant’s services offered under the GUGGENHEIM PARTNERS® mark are rendered on a global scale. Complainant operates more than 25 offices in eight countries and employs more than 2,500 employees worldwide. Complainant currently manages over $240 billion in assets. Over the years, Complainant has invested many millions of dollars advertising and promoting its services under the GUGGENHEIM PARTNERS® mark throughout the United States and the world. Complainant owns other extensive common law rights around the world to the GUGGENHEIM PARTNERS® mark.
[c.] Complainant owns U.S. Registration No. 3110878 for the mark GUGGENHEIM PARTNERS®, which has been registered in the United States for nearly ten years. Moreover, Complainant’s GUGGENHEIM PARTNERS® mark has achieved “incontestable” status, which means that it is “conclusive evidence” that Complainant is the owner of the mark and has the “exclusive right” to use the mark for the registered services—here, a variety of financial, securities, real estate, and investment services.
[d.] Since 2000, Complainant has owned and continuously used the domain name guggenheimpartners.com to offer and promote its financial, securities, real estate, and investment services for over the past fifteen years.
FACTUAL AND LEGAL GROUNDS
Pursuant to UDRP Rule 3(b)(ix) and UDRP Policy ¶4(a), this Complaint is based on the following factual and legal grounds:
[a.] Identical and/or Confusingly Similar (UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(1))
[i.] Respondent’s Disputed Domain, guggeheimpartners.com, is virtually identical and/or confusingly similar to Complainant’s GUGGENHEIM PARTNERS® mark.
[ii.] First, Respondent’s Disputed Domain, guggeheimpartners.com, is identical to Complainant’s GUGGENHEIM PARTNERS® mark, except for the removal of the "n" in GUGGENHEIM in Respondent's Disputed Domain. Respondent’s Disputed Domain is a form of typosquatting, which “many UDRP panels have found to be confusingly similar” to a complainant’s trademark. VMWare, Inc. v. Above.com Domain Privacy, Case No. D2015-1449 (WIPO Oct. 21, 2015).
[iii.] Second, Respondent’s Disputed Domain, guggeheimpartners.com, is identical to Complainant’s Domain, guggenheimpartners.com, except for the removal of the “n” in GUGGENHEIM in Respondent’s Disputed Domain.
[iv.] The addition of the generic top-level domain “.COM,” does nothing to distinguish Respondent’s Disputed Domain from Complainant’s GUGGENHEIM PARTNERS® mark. See Travelocity.com LP v. Thomas Lefleur c/o n/a, FA0911001296087 (Nat. Arb. Forum January 11, 2010) (“Similarly, the addition of a gTLD does not reduce the likelihood of confusion between the resulting domain name and the mark, because every domain name must contain a top-level domain.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. 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.”).
[v.] Therefore, the Disputed Domain is virtually identical and confusingly similar to Complainant’s GUGGENHEIM PARTNERS® mark.
[b.] Rights or Legitimate Interests (UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii))
[i.] Respondent does not have any rights or legitimate interests in the Disputed Domain.
[ii.] First, there is no indication that Respondent is commonly known by the Disputed Domain. The record lists the registrant for the Disputed Domain as “Young Group.” Nothing therein suggests that Respondent is commonly known by the name Guggenheim, Guggeheim, Guggenheim Partners, or Guggeheim Partners. It is well established by prior panel decisions that a respondent does not have rights in a disputed domain name when the respondent is not commonly known by that name. See e.g., Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001); Wells Fargo & Co. v. Onlyne Corp. Services, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003); Angela C. Watson v. ZJ, FA 624501 (Nat. Arb. Forum Feb. 24, 2006); Herbalife Int’l of America, Inc. v. Marc Larsen, FA 766735 (Nat. Arb. Forum Sept. 5, 2006); Vin Diesel v. LMN a/k/a L.M. Nordell, FA 804924 (Nat. Arb. Forum Nov. 7, 2006); Science Apps. Int’l Corp. v. Int’l Names Ltd., FA 868891 (Nat. Arb. Forum Jan. 29, 2007).
[iii.] Second, Respondent is using the Disputed Domain for fraudulent purposes by engaging in a phishing scheme. On September 7, 2016, Ms. Natalie Orsborn-Morales, an employee of Complainant and assistant to Ms. Alexandra Court, also an employee of Complainant, received an email purporting to be from Mr. Piergiorgio Lo Greco, asking that Ms. Orsborn-Morales pay an invoice for £38,450. Ms. Orsborn-Morales then emailed Ms. Court at Ms. Court's authentic guggenheimpartners.com email address inquiring about Mr. Greco's invoice. Ms. Orsborn-Morales then received what appeared to be a response from Ms. Court, when in reality it was from an email attempting to impersonate Ms. Court which ended in the Disputed Domain, guggeheimpartners.com. Complainant has also since confirmed that Mr. Greco never sent the initial email to Ms. Orsborn-Morales, but was instead sent by someone who had accessed his email account. Respondent's fraudulent use of the Disputed Domain further demonstrates Respondent lacks rights or legitimate interests in the Disputed Domain. See Infineon Technologies AG v. mustafa mushari, FA1505001619868, 2015 NAFDD LEXIS 737, at *9-10 (Nat. Arb. Forum June 27, 2015) (finding Respondent's fraudulent emails demonstrated no rights or legitimate interest in domain).
[iv.] Third, Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the Disputed Domain. There is currently no content on the page at the Disputed Domain. Failure to make an active use of the name demonstrates that Respondent has no rights to the Dispute Domain. See Infineon Technologies AG v. mustafa mushari, FA1505001619868, 2015 NAFDD LEXIS 737, at *9-10 (Nat. Arb. Forum June 27, 2015) (finding Respondent's failure to actively use website indicative of no rights or legitimate interests in domain).
[v.] Fourth, Complainant has never authorized Respondent to register or use Complainant’s GUGGENHEIM PARTNERS® mark as part of any domain name. There is no affiliation, connection, or association between Respondent and Complainant.
[vi.] Fifth, Respondent cannot claim to have rights or legitimate interests in the Disputed Domain because Respondent registered and is using the domain in bad faith, for the reasons set forth in Section (c) below. See N.C.P. MarketingGroup, Inc. v. Entredomains, Case No. D2000-0387) (WIPO Jul. 5, 2000) (“Bad faith registration and use of domains does not establish rights or legitimate interests in the names.”).
[vii.] For all of the foregoing reasons, Respondent has no rights or legitimate interests in the Disputed Domain.
[c.] Registration and Use in Bad Faith (UDRP Rule 3(b)(ix)(3);UDRP Policy ¶4(a)(iii).
[i.] Respondent registered and is using the Disputed Domain in bad faith.
[ii.] First, Complainant’s ownership of a U.S. registration for its GUGGENHEIM PARTNERS® mark charged Respondent with constructive notice of Complainant’s rights in that mark and is evidence of bad faith. Respondent registered its Disputed Domain nearly ten years after Complainant’s GUGGENHEIM PARTNERS® mark was registered and nearly 16 years after Complainant began offering its services on its website, www.guggenheimpartners.com. See 15 U.S.C. § 1072; AARP v. Domains Ventures, No. 514786 (Nat. Arb. Forum August 25, 2005) (ownership of federal registrations charged respondent with constructive notice of complainant’s rights).
[iii.] Second, by registering the Disputed Domain, Respondent engaged in typosquatting as it purposefully registered a misspelling of Complainant’s GUGGENHEIM PARTNERS® mark. Typosquatting constitutes bad faith and a disruption to Complainant’s business. See Sunglass Hut Corporation v. AAANet, Inc.; FA0003000094370 (Nat. Arb. Forum May 11, 2000)
(SUNGLASSHOT.COM vs. SUNGLASSHUT.COM); Playboy Enterprises International Inc. v. SAND WebNames; Case No. D2001-0094 (WIPO April 3, 2001).
[iv.] Third, by using a domain name confusingly similar to Complainant’s GUGGENHEIM PARTNERS® mark, Respondent registered the Disputed Domain primarily to disrupt Complainant’s business. This constitutes bad faith registration and use under UDRP Policy ¶4(b)(iii). See EthnicGrocer.com v. Latin Grocer.com; FA0003000094384 (NAF July 7, 2000) (registration of slight variation of Complainant’s mark suggests Respondent registered names primarily for the purpose of disrupting Complainant’s business).
[v]. Fourth, Respondent used its confusingly similar Disputed Domain to engage in a phishing scheme targeted at Complainant. On September 7, 2016, Ms. Natalie Orsborn-Morales, an employee of Complainant and assistant to Ms. Alexandra Court, also an employee of Complainant, received an email purporting to be from Mr. Piergiorgio Lo Greco, asking that Ms. Orsborn-Morales pay an invoice for £38,450. Ms. Orsborn-Morales then emailed Ms. Court at Ms. Court's authentic guggenheimpartners.com email address inquiring about Mr. Greco's invoice. Ms. Orsborn-Morales then received what appeared to be a response from Ms. Court, when in reality it was from an email attempting to impersonate Ms. Court which ended in the Disputed Domain, guggeheimpartners.com. Id. Complainant has also since confirmed that Mr. Greco never sent the initial email to Ms. Orsborn-Morales, but was instead sent by someone who had accessed his email account. Respondent's use of the Disputed Domain to engage in a phishing attack is an effort to disrupt Complainant's business under UDRP Policy ¶4(b)(iii) and bad faith use of the Disputed Domain under UDRP Policy ¶4(b)(iv). See Textron Innovations, Inc. v. Dennis Brooks, FA1603001667443, 2016 NAFDD LEXIS 378, at *9-10 (Nat. Arb. Forum May 4, 2016) ("[P]hishing, in any form, is adequately disruptive [of a complainant's business] and finds that Respondent uses the [disputed domain] in bad faith under [UDRP Policy] ¶4(b)(iii)."); id. at *11 (finding evidence of phishing also established bad faith under UDRP Policy ¶4(b)(iv)).
[vi.] For all of the foregoing reasons, Registrant registered and used the Disputed Domain in bad faith to deceive consumers and to profit from the tremendous goodwill and value of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order transferring or cancelling a domain name:
(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 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 (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 has rights in the GUGGENHEIM PARTNERS mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,110,878, registered July 4, 2006). Registration of a trademark with a governmental authority (such as the USPTO) adequately demonstrates Complainant’s trademark rights under Policy ¶4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶4(a)(i).”) and Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant has adequately demonstrated its rights in the GUGGENHEIM PARTNERS mark.
Complainant claims Respondent’s <guggeheimpartners.com> domain name is confusingly similar to its GUGGENHEIM PARTNERS mark. Respondent’s domain name is identical to its mark, but for the removal of a single “N” from GUGGENHEIM, the omission of spaces, and addition of a gTLD. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Ticketmaster Corp. v. Kumar, FA 744436 (Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Lockheed Martin Corp. v. Roberson, FA 323762 (Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). Likewise, the lack of a space is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits spaces. See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Jan. 5, 2014) (holding that the <rackspace.xyz> domain name is identical to the complainant’s RACKSPACE mark, because, “the addition of a generic top-level domain is seen as trivial and non-distinctive for the purposes of this comparison does not lessen in any way the confusing similarity between the disputed domain name and Complainant’s mark.”). Domain names are often confusingly similar to a complainant’s mark where they omit a single letter, which is this Panel’s finding in this case. See Myspace, Inc. v. Kang, FA 672160 (Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity). <guggeheimpartners.com> is confusingly similar to Complainant’s GUGGENHEIM PARTNERS mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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.”).
Complainant claims Respondent has no rights or legitimate interests in the <guggeheimpartners.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its GUGGENHEIM PARTNERS mark in any fashion. The WHOIS information for the domain name in question currently lists “Young Group” as the registrant. The domain name was registered using a privacy service, which means the domain name was listed as being owned by a nominee before this proceeding started. Generally speaking, the panel will find a respondent is not commonly known by a domain name from the WHOIS information and lack of contradicting evidence in the record. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶4(c)(ii)). In this case, there is no obvious similarity between Respondent’s name and the disputed domain name. Respondent is not commonly known by <guggenheimpartners.com> domain name.
Complainant claims Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶4(c)(iii). Complainant claims Respondent is not making any active use of the domain name. This is not true, strictly speaking. Respondent is not making use of the domain name to host a web site. There is no requirement a domain name owner use it to host a web site. Respondent is actually using the domain name to send fraudulent emails. While not a laudable use, it is nevertheless a use. A respondent does not acquire rights or legitimate interests in a domain name when it is used for fraudulent purposes. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Respondent has not used the domain name within the permitted uses of Policy ¶¶4(c)(i) and (iii).
Respondent has not acquired any rights to the domain name by registering it. The registration was made by using a so-called “privacy service.” This means the disclosed owner of the domain name is merely the legal owner and disclaims any beneficial interest in the domain name (or control thereof). The beneficial owner conceals its identity and has done nothing to publicly associate itself with the domain name. Therefore, Respondent has acquired no rights to the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and has been using the <guggeheimpartners.com> domain name in bad faith. Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business by impersonating Complainant. The domain name is so similar to Complainant’s GUGGENHEIM PARTNERS mark that Internet users and Complainant’s customers will be confused about the origin of the forged emails. This violates Policy ¶4(b)(iv). Respondent registered and uses <guggeheimpartners.com> in bad faith.
Respondent had actual knowledge of Complainant's mark and rights (which can easily be inferred because Respondent has impersonated Complainant’s officers and servants). Respondent must generally know about Complainant and Complainant’s business if Respondent is to do a credible job impersonating Complainant. Therefore, Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). Respondent had actual notice of Complainant’s GUGGENHEIM PARTNERS mark when it registered and began using the <guggeheimpartners.com> domain name in bad faith under Policy ¶4(a)(iii).
Respondent used the domain name for fraudulent purposes. While this was not “phishing” (defined as “a practice that is intended to defraud consumers into revealing personal and proprietary information”), it was clearly fraudulent (because recipients were expected to send Respondent money). Respondent used the dispute domain name to send fraudulent emails that caused financial loss to the recipients. This constitutes bad faith registration and use of a domain name. See YMCA of Metropolitan Chicago v. Robert Milideo, FA1609001693986 (10/19/2016) and Actifio, Inc. v. james miller / Not Acceptable, FA1607001683935 (8/17/2016).
Finally, Respondent registered the disputed domain name using a privacy service. In the commercial context, this raises a rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. Therefore, this Panel is comfortable making a finding of bad faith on those grounds alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <guggeheimpartners.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, October 31, 2016
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