Invesco Ltd. v. Donal Leahy / Capital Assets Acquisitions
Claim Number: FA1706001736638
Complainant is Invesco Ltd. (“Complainant”), represented by Mary Grace Gallagher of Alston & Bird, LLP, Georgia, USA. Respondent is Donal Leahy / Capital Assets Acquisitions (“Respondent”), Ireland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <globalinvesco.com>, registered with Everyones Internet, Ltd. dba SoftLayer.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 20, 2017; the Forum received payment on June 20, 2017.
On June 22, 2017, Everyones Internet, Ltd. dba SoftLayer confirmed by e-mail to the Forum that the <globalinvesco.com> domain name is registered with Everyones Internet, Ltd. dba SoftLayer and that Respondent is the current registrant of the name. Everyones Internet, Ltd. dba SoftLayer has verified that Respondent is bound by the Everyones Internet, Ltd. dba SoftLayer 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 June 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 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@globalinvesco.com. Also on June 26, 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 July 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that it is a corporation duly organized and existing under the laws of Bermuda; its headquarters are located in Atlanta, Georgia. Since at least as early as 1979, Complainant and its affiliates have provided a wide range of investment strategies and vehicles to its retail, institutional, and high net worth clients around the world, including in Ireland (where Respondent is purportedly located) and the UK (where the Respondent’s business is purportedly located), under the mark INVESCO. As of March 31, 2017, Complainant had more than $834 billion in assets under its management. Among Complainant’s many global offices are one in Dublin, Ireland and two in London, UK. Complainant has rights in the INVESCO mark based upon registration in the United States in 1994.
Complainant alleges that, though Respondent is purportedly located in Ireland, its business advertised at the disputed domain name lists a Manchester, UK address. The only other address information given is “Business Park” and “Cheadle,” which is not adequate to locate Respondent’s physical location. In fact, Respondent may not have a physical location, as clicking on the “globe” icon on the “Contact Us” page of the website at the disputed domain name takes one to the address 83 Duncie Street, Manchester, UK on GoogleMaps, which is the address of City Address, a mailbox rental business. There are no companies named “Global Invesco” listed on the UK Companies House register nor on the Irish Companies Registration Office register.
Complainant alleges that the disputed domain name is confusingly similar to its mark as it includes the entirety of the INVESCO mark in combination with the generic term “global” and the generic top level domain (“gTLD”) “.com.”
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted Respondent permission or license to use the INVESCO mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is attempting to trade on Complainant’s goodwill and reputation by misleading Internet users into believing that Respondent’s website is associated or affiliated with Complainant.
Further, says Complainant, Respondent has registered and used the disputed domain name in bad faith. Respondent is attempting to disrupt Complainant’s business. Further, Respondent is attempting to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s INVESCO mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Complainant sent two cease and desist letters to Respondent and both went unanswered. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the INVESCO mark at the time it registered and subsequently used the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark INVESCO dating back to 1994.
The disputed domain name was registered in 2014.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name resolves to a web site that displays Complainant’s INVESCO mark and offers products and services similar to those offered by 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.
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.”).
The disputed domain name is confusingly similar to the INVESCO mark as it includes the entirety of the INVESCO mark in combination with the generic term “global”. Inclusion of the generic term “global” in the disputed domain Name does not mitigate the confusing similarity between the domain name and Complainant’s mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains 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); see also Broadcom Corporation v. Global Broadband Communications, LLC, FA 0202000104985 (Forum Mar. 28, 2002) (finding that the addition of the generic term ‘global’ is not enough to create a distinct mark capable of overcoming a claim of confusing similarity). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use the INVESCO mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information of record identifies Respondent as “Donal Leahy / Capital Assets Acquisitions“, which does not provide evidence that Respondent is known by the disputed domain name. Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Respondent is attempting to trade off the fame of Complainant’s goodwill and reputation by misleading Internet users into believing that Respondent’s website is associated or affiliated with Complainant: the resolving web site displays the name INVESCO and offers products and services that are similar to those of Complainant. Using a mark to trade off on the reputation of a complainant is not considered a bona fide offering of goods or services. See Bloomberg L.P v. Bloomberg Realty (India) Private Limited, FA 1204001439263 (Forum May 30, 2012) (“Use of a domain name which intentionally trade on the fame of another cannot constitute a bona fide offering of goods and services”). Accordingly, the Panel finds that Respondent fails to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark in the disputed domain name. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent is using the disputed domain name to pass off as Complainant and to offer products and services that compete directly with those of Complainant. Thus Respondent is creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. This is evidence of bad faith registration and use. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (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).”). Thus the Panel finds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Further, using a confusingly similar domain name to misdirect Internet users disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Micron Consumer Products Group, Inc. v. Omer Faiyaz FA 1710747 (Forum Dec. 28, 2005) (Feb. 9, 2017) (“Panels have found that respondent’s registering a domain name primarily to disrupt its competitor by selling similar goods as those offered by the complainant … evinces bad faith under Policy ¶ 4(b)(iii).”). Consequently, the Panel finds that Respondent is using the disputed domain name in bad faith under Policy ¶ 4(b)(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 <globalinvesco.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 20, 2017
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