Legg Mason & Co., LLC v. Haiming Wang / Wang Haiming
Claim Number: FA1404001554186
Complainant is Legg Mason & Co., LLC (“Complainant”), represented by Gretchen L. Klebasko of Legg Mason & Co., LLC, Maryland, USA. Respondent is Haiming Wang / Wang Haiming (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lgmason.com>, registered with HiChina Zhicheng Technology Limited.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2014; the National Arbitration Forum received payment on April 16, 2014. The Complaint was submitted in both Chinese and English.
On April 16, 2014, HiChina Zhicheng Technology Limited confirmed by e-mail to the National Arbitration Forum that the <lgmason.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 April 22, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 12, 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@lgmason.com. Also on April 22, 2014, the Chinese language 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 May 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
i. Complainant, Legg Mason & Co., LLC, is a global asset management company serving individual and institutional investors on six continents.
ii. Complainant is the owner of a Community Trademark (“CTM”) for the LEGG MASON mark (Reg. No. 6,283,402, registered March 7, 2008).
iii. Further, Complainant owns the LEGG MASON mark through its trademark registration with the Taiwan Intellectual Property Office (Reg. No. 1,333,811, registered October 16, 2008).
iv. Complainant uses the LEGG MASON mark in connection with promoting and providing financial services.
v. The <lgmason.com> domain name includes the second part of Complainant’s LEGG MASON mark in its entirety prefaced by a deliberate misspelling of the first part of Complainant’s mark.
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent is not commonly known by the disputed domain name.
iii. Respondent is using the disputed domain name to engage in a fraudulent phishing and/or investment scam.
i. The disputed domain name was registered and is being used in bad faith.
ii. Respondent uses the disputed domain name to trick unsuspecting victims into believing they are dealing with Complainant, most likely in an effort to extract personal and financial identifying information from them.
B. Respondent
Respondent failed to submit a Response in this proceeding.
LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
1. Complainant is a United States company engaged in the provision of financial services to individual and institutional investors.
2. Complainant is the owner of a Community Trademark (“CTM”) for the LEGG MASON mark (Reg. No. 6,283,402, registered March 7, 2008). Complainant is also the owner of the LEGG MASON mark through its trademark registration with the Taiwan Intellectual Property Office (Reg. No. 1,333,811, registered October 16, 2008).
3. Respondent registered the <lgmason.com> domain name on March 19, 2014.
4. Respondent is using the disputed domain name to engage in a fraudulent phishing and/or investment scam.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims that it is a global asset management company serving individual and institutional investors on six continents. Complainant submits that it is the owner of a Community Trademark (“CTM”) for the LEGG MASON mark (Reg. No. 6,283,402, registered March 7, 2008) and adduces evidence to the effect. See Complainant’s Annex 4. Further, Complainant claims ownership in the LEGG MASON mark through its trademark registration with the Taiwan Intellectual Property Office (Reg. No. 1,333,811, registered October 16, 2008 and adduces evidence to that effect. Complainant uses the LEGG MASON mark in connection with promoting and providing financial services. The Panel notes that while Respondent resides in China, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant’s trademark registrations of the LEGG MASON demonstrates it has rights in the mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s LEGG MASON mark. Complainant asserts that Respondent’s <lgmason.com> domain name includes the second part of Complainant’s LEGG MASON mark in its entirety prefaced by a deliberate misspelling of the first part of Complainant’s mark. The Panel finds that Respondent’s misspelling of Complainant’s mark by eliminating two letters does not differentiate the domain name from Complainant’s mark according to Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Complainant contends that Respondent’s addition of a generic top-level domain (“gTLD”) is irrelevant to a confusing similarity analysis under Policy ¶ 4(a)(i). The Panel notes that Respondent removes the spacing in Complainant’s LEGG MASON mark. The Panel holds that Respondent’s elimination of spaces and inclusion of a gTLD does not distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Thus, the Panel finds that Respondent’s <lgmason.com> domain name is confusingly similar to Complainant’s LEGG MASON mark 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), 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s LEGG MASON
trademark and to use it in its domain name, making only a minor
spelling alteration;
(b) Respondent has then decided to use the to engage in a fraudulent phishing and/or investment scam;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant alleges that Respondent is not commonly known by the <lgmason.com> domain name. Complainant asserts that Respondent is not affiliated with or related to Complainant and is not licensed by Complainant or otherwise authorized to use Complainant’s LEGG MASON mark. Complainant argues that the WHOIS information identifies Respondent as “Haiming Wang / Wang Haiming.” See Complainant’s Annex 1. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Accordingly, based on the relevant evidence in the record, the Panel determines that Respondent is not commonly known by the <lgmason.com> domain name under Policy ¶ 4(c)(ii);
(e) Complainant contends that Respondent is using the <lgmason.com> domain name to engage in a fraudulent phishing and/or investment scam. Complainant argues that Respondent copied substantial portions of Complainant’s Taiwanese website and is purportedly conducting business as Complainant in an effort to trick unsuspecting consumers into believing that they are working with Complainant. See Complainant’s Annex 6 for screenshots of the website associated with the <lgmason.com> domain name. The Panel notes that Respondent’s website resolving from the disputed domain name has a similar appearance to Complainant’s website and displays the LEGG MASON mark. Prior UDRP panels have held that a respondent’s copying of a complainant’s website in an attempt to phish for personal or financial information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds that Respondent is not using the <lgmason.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
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 has no rights or legitimate interests 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 asserts that Respondent uses the <lgmason.com> domain name to trick unsuspecting victims into believing they are dealing with Complainant, most likely in an effort to extract personal and financial identifying information from them. The Panel notes that Respondent’s website resolving from the disputed domain name mimics Complainant’s Taiwanese website in appearance, which may cause confusion among consumers. See Complainant’s Annex 6. As the Panel agrees that Respondent is using the disputed domain name in an attempt to impersonate Complainant in order to acquire personal and financial information from Internet users, the Panel determines that Respondent has registered and is using the <lgmason.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the LEGG MARK and in view of its conduct since the registration, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
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 <lgmason.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 20, 2014
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