Invesco Ltd. v. Singh S
Claim Number: FA1703001721736
Complainant is Invesco Ltd. (“Complainant”), represented by Sam Gunn of Alston & Bird, LLP, Georgia, USA. Respondent is Singh S (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <invescoclub.com>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 15, 2017; the Forum received payment on March 15, 2017.
On March 20, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <invescoclub.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 March 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 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@invescoclub.com. Also on March 21, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq., 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
i) Complainant uses the INVESCO mark in connection with its business of providing investment strategies and vehicles to its retail, institutional, and high net worth clients around the world. Complainant has registered the INVESCO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,825,441, registered Mar. 8, 1994), which establishes rights in the mark. Respondent’s <invescoclub.com> domain name is confusingly similar to the INVESCO mark as it incorporates the mark in its entirety, while adding the generic term “club” and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in <invescoclub.com>. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the INVESCO mark in any manner. Respondent’s registration and use of the disputed domain name is an attempt to trade on the goodwill of the INVESCO mark by confusing Internet users into believing that Respondent’s website and its investment business are associated or affiliated with Complainant. Respondent is using the disputed domain name for commercial gain and diversionary use, both of which are not bona fide offerings of goods or services or legitimate noncommercial or fair uses. Respondent’s imitation of Complainant’s business offering to promote a competing investment service is likely to confuse and mislead the public as to Respondent’s relationship with Complainant. Such competitive use does not give the Respondent rights under Policy ¶¶ 4(c)(i) or (iii).
iii) Respondent has registered and used the domain name <invescoclub.com> in bad faith. An email from Respondent to Complainant, which is viewed shows that Respondent offered to sell the disputed domain name for $500,000. Such exorbitant requests for monetary compensation in the sale of a domain name evince bad faith under Policy ¶ 4(b)(i). Respondent registered the disputed domain name with full knowledge of Complainant’s prior use of, rights in and goodwill associated with the INVESCO mark. Actual knowledge is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a Response. The Panel notes that <invescoclub.com> was registered on December 29, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used 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 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(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 uses the INVESCO mark in connection with its business of providing investment strategies and vehicles to its retail, institutional, and high net worth clients around the world. Complainant has registered the INVESCO mark with the USPTO (e.g., Reg. No. 1,825,441, registered Mar. 8, 1994), which establishes rights in the mark. The general consensus is that USPTO registrations are sufficient in conferring rights in a mark under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Therefore, the Panel deems Complainant’s evidence of a USPTO registration for the INVESCO mark sufficient in establishing rights under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <invescoclub.com> domain name is confusingly similar to the INVESCO mark under Policy ¶ 4(a)(i). Complainant contends that Respondent’s domain only differs from the INVESCO mark by inserting the generic term “club”, which perpetuates a confusing similarity. Panels have agreed that merely adding a generic term to a complainant’s mark can still make the domain name confusingly similar. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where a disputed domain name contains a complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Consequently the Panel agrees that Respondent’s <invescoclub.com> is confusingly similar to the INVESCO mark pursuant to 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 (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 contends Respondent has no rights or legitimate interests in <invescoclub.com>. In support of this assertion, Complainant claims that Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted to use the INVESCO mark in any respect. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Singh S.” In addition, failure to establish authorization approval for a Respondent to use Complainant’s mark can be evidence of a lack of rights or legitimate interests in a confusingly similar domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). The Panel finds that Respondent is not commonly known by the disputed domain name.
Complainant alleges Respondent’s registration and use of the disputed domain name is an attempt to trade on the goodwill of the INVESCO mark by confusing Internet users into believing that Respondent’s website and its investment business are associated or affiliated with Invesco. Panels have found that respondents who divert Internet users to a website of respondent which benefits respondent is not a bona fide offering of goods or services. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant claims that the disputed domain attempts to use the INVESCO mark to offer its own investment services, however, Complainant expresses uncertainty as to whether such services are even offered. Panels have also held that use of a domain for competing purposes does not meet the criteria for a bona fide offering of goods or services. 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).”). If Complainant’s allegations are true, Respondent is offering competing goods or services. Therefore, the Panel finds such actions by Respondent do not rise to the level of a bona fide offering or legitimate noncommercial or fair use.
Complainant claims Respondent has registered and used the domain name <invescoclub.com> in bad faith. Previous Panels have established that when respondents offer a disputed domain for sale at a price which exceeds any out-of-pocket costs, there is evidence of bad faith registration under Policy ¶ 4(b)(i). World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Here Complainant offers evidence of such excess price offer in an email from Respondent to Complainant. The email in question shows that Respondent offered to sell the disputed domain name for $500,000. Such a request for monetary compensation which far exceeds any out-of-pocket cost incurred by Respondent is found by the Panel to evince bad faith under Policy ¶ 4(b)(i).
The Panel pays attention to the fact that Respondent has previously engaged a privacy service, and in doing so withheld identifying information. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service gives rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, as the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, it agrees that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel notes the fame associated with the INVESCO mark evinces actual or constructive knowledge of Complainant’s rights in the mark. Respondent’s registration of the disputed domain name with actual or constructive knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel infers due to the fame of Complainant's mark and the manner of use of the disputed domain name by Respondent that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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"). Panels have also found that actual knowledge can be inferred from the global prominence of a mark. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Complainant identifies itself as a company which has offered worldwide investment services since as early as 1979. The Panel agrees Respondent’s registered the disputed domain name with actual knowledge of Complainant’s rights to the famous BUD LIGHT mark as the services offered by Respondent are purportedly similar to, if not the same as Complainant’s offerings. Therefore, the Panel finds that actual knowledge exists and therefore satisfies the element of bad faith registration and use with regard to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <invescoclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April, 29, 2017
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