Baring Asset Management Limited v. hys / hys hys
Claim Number: FA2205001998090
Complainant is Baring Asset Management Limited (“Complainant”), represented by McGuireWoods LLP, Virginia, USA. Respondent is hys / hys hys (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baringsus.com> (the “disputed domain name”), registered with NameSilo, LLC (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 26, 2022; the Forum received payment on May 26, 2022.
On May 26, 2022, the Registrar confirmed by e-mail to the Forum that the <baringsus.com> disputed domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the NameSilo, 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 May 27, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 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@baringsus.com. Also on May 27, 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 June 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Founded nearly 250 years ago, Complainant has long been well known and well respected as a top leader in the financial industry, particularly in connection with investments in emerging markets equities and multi-asset capabilities. In 2016, Complainant combined with 3 other industry-leading financial services entities to create a limited liability company, making Complainant one of the world’s leading asset management and capital solutions providers.
Complainant owns 6 federal registration for BARINGS with the United States Patent and Trademark Office (“USPTO”). Those registrations include, among others: BARINGS, United States Registration No. 1,744,800, registered on Jan. 5, 1993, in international class 36. Complainant contends that Respondent’s <baringsus.com> disputed domain name is confusingly similar to Complainant’s trademark because it contains the BARINGS Mark in its entirety, merely adding the term “us” and the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
In addition, Complainant registered the domain name <barings.com>, which resolves to Complainant’s official website.
Respondent registered the disputed domain name on May 5, 2022, which impersonates not only Complainant’s BARINGS Mark, but also Complainant’s business operations so that the public is highly likely to mistakenly believe that the disputed domain name is the legitimate domain name for Complainant’s business activities in the United States. The disputed domain name initially resolved to a website that included competing financial services to that of Complainant. Subsequently, the disputed domain name resolved to a firewall containing a landing page with a potential security threat or malware.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant holds valid trademark rights in the BARINGS Mark in the United States with the USPTO. The Panel additionally holds that the disputed domain name is confusingly similar to Complainant’s BARINGS Mark, that Respondent lacks rights or legitimate interests in the use of the disputed domain name and that Respondent registered and is using the disputed 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Panel finds that Complainant has rights in the BARINGS Mark based upon registration with the USPTO (e.g., Registration No. 1,744,800, registered on Jan. 5, 1993, in international class 36). Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”); see also Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
The Panel also finds that Respondent’s disputed domain name is confusingly similar to Complainant’s BARINGS Mark as the disputed domain name incorporates the entirety of the BARINGS Mark, adding the term “us”, an abbreviation for U.S. or United States, followed by the “.com” gTLD. Adding a term -- or an abbreviation thereof -- and a gTLD to a complainant’s mark does not distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent holds no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
Registration and Use in Bad Faith
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's BARINGS Mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Second, the Panel finds that Respondent was using the disputed domain name in bad faith as Respondent distributed malware on the disputed domain name’s resolving page.[ii] Registering a disputed domain name to divert Internet users to a resolving webpage that hosts and distributes malware is evidence of bad faith under Policy ¶ 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that a disputed domain name which resolves to a landing page that distributes malware to Internet users’ computers demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv)). This, in and of itself, is evidence of bad faith. See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (downloading software onto unsuspecting viewers’ computers demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).).
Third, the fame of the BARINGS Mark, which was adopted by Complainant far in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with such a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. Thus, as here, prior knowledge of a complainant’s trademarks before registering a domain name is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baringsus.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: June 24, 2022
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