EQT AB v. james jones
Claim Number: FA2103001937495
Complainant is EQT AB (“Complainant”), represented by Peter G. Byrne of Morgan, Lewis & Bockius LLP, California, USA. Respondent is james jones (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eqtfundmanagement.com>, registered with NameCheap, Inc.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 22, 2021; the Forum received payment on March 22, 2021.
On March 23, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <eqtfundmanagement.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2021 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@eqtfundmanagement.com. Also on March 25, 2021, 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 19, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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
Complainant claims rights in the EQT and EQT FOUNDATION service marks acquired through its ownership of its portfolio of service mark registrations described below and its extensive international use of the marks in financial services since it was established in 1994.
As of December of 2020, Complainant had raised more than EUR 84 billion in capital and had approximately EUR 52 billion in assets under management across 17 active funds, employing more than 700 people across 17 countries in Europe, APAC, and North America, with total sales of more than EUR 27 billion.
Complainant submits that the disputed domain name <eqtfundmanagement.com> is confusingly similar to its EQT mark as it contains the mark in its entirety, with only the addition of the generic (or descriptive) terms, “fund management” and the affixation of the generic top-level domain “.com.”
Complainant argues that its registered trademark is the first, and most prominent, term in the disputed domain name, and adds that the addition of the generic elements, whether considered either alone or in combination, fail to distinguish the disputed domain name from its EQT mark. Citing Allianz SE v. Todd Hylton, FA 1277634 (Forum Sept. 15, 2009) (addition of .com and descriptive term “insurance” insufficient to distinguish respondent’s domain name from complainant’s mark);
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that there is no evidence that Respondent is or was ever commonly known by the disputed domain name <eqtfundmanagement.com> or as EQT Fund Management Limited name prior to the registration of the disputed domain name on January 24, 2021. Citing Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (respondent was not commonly known by disputed domain name where the WHOIS information and other information in the record did not indicate the respondent was commonly known by the disputed domain names and complainant did not authorize the respondent to register the domain name).
Complainant asserts that it has never had any business relationship or any other affiliation or association with Respondent that would give Respondent the right to use the EQT mark in the disputed domain name; and adds that the services offered on the website to which the disputed domain name resolves, are not authorized or approved by Complainant. Yet, the EQT formative domain name necessarily suggests that such an affiliation or association exists.
Referring to a screen-capture of the website to which the disputed domain name resolves which has been provided in an annex to the Complaint, Complainant further argues that Respondent uses the disputed domain name without authorization by Complainant, to advertise investment services that, on their face, are directly competitive with services offered by Complainant under its EQT mark.
Complainant submits that it is clear from the evidence that Respondent seeks to profit from his use of Complainant’s EQT mark in the disputed domain name by causing initial confusion leading consumers into mistakenly believing that the services offered on the website to which the disputed domain name resolves are authorized or approved by Complainant.
Complainant contends that Respondent is therefore wrongfully using the disputed domain name, based on Complainant’s EQT mark, to falsely convey an affiliation or association with Complainant when there is none.
Complainant adds that such uses cannot be construed as legitimate noncommercial or fair use of the domain name. See Kohler Co. v. Redfire Internet Marketing, FA 1339819 (Forum Sept. 23, 2010) (finding no legitimate noncommercial or fair use of domain name where Respondent offered toilets and other products that competed with Complainant on the website kohlertoilets.org).
Complainant submits that a prima facie case has been met that Complainant has no rights or legitimate interests in the disputed domain name.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that the registrant of the disputed domain name was aware of Complainant and its rights in the EQT name and mark when the disputed domain name was registered. Complainant submits that the disputed domain name was registered long after Complainant had established its rights and reputation in the EQT mark for financial services.
Complainant adds that the disputed domain name is being used to purport to offer financial services and thus create the impression that there is an affiliation between the disputed domain name, Respondent and the services that it purports to offer on the website to which the disputed domain name resolves and Complainant.
Referring to screen captures annexed to the Complaint, Complainant submits that the disputed domain name is confusingly similar to its EQT mark is being used by Respondent as the address of a the website to which the disputed domain name resolves in order to mislead Internet users and to create initial interest confusion for services that are purportedly directly competitive with Complainant’s offers of services under its EQT mark, namely, investment services. On its website, Respondent describes its services as follows: “EQT Fund Management is an international asset investment management firm offering a variety of investment options. We focus on opportunities where our strong capital position combined with our sector and market expertise, can create material value for our investors. “
Complainant argues that this improperly and misleadingly suggests that Respondent’s website is offering authentic EQT investment services or has some type of relationship with Complainant, when no such relationship exists.
In particular Complainant argues that a slew of fraudulent content appears on Respondent’s website with the apparent aim of tricking consumers into believing that the site is affiliated with or authorized by Complainant.
For example, the footer of Respondent’s website presents the Financial Conduct Authority (FCA) number (705592) as belonging to Respondent, whereas it belongs to Complainant’s affiliate, EQT Fund Management S.A.R.L. Complainant submits that this is an egregious fraud that demonstrates Respondent’s bad faith intent to deceive customers into believing it is a legitimate business that is associated or affiliated with Complainant.
In addition, Respondent lists two physical addresses on its website, neither of which are legitimate business locations of Respondent. One of the listed addresses—26A Boulevard Royal, Luxembourg—is the location of EQT AB’s Luxembourg office.
Complainant adds that Respondent’s bad faith intent is further demonstrated by its use on the website to which the disputed domain name resolves, of photographs apparently taken from other financial firms on the “Our Team” page.
Complainant alleges that Respondent has apparently stolen several photographs of individuals associated with other investment firms and changed the names and titles of the individuals photographed. Complainant provides examples to support this allegation.
In conclusion Complainant contends that the fraudulent content posted on the Complainant’s website, taken into account Respondent’s copying of Complainant’s EQT mark and the nature of Complainant’s business, clearly demonstrates Respondent’s bad faith intent to capitalize on EQT AB’s reputation and trick unsuspecting consumers into parting with their money under the guise of a legitimate investment. Citing Capital One Financial Corporation and Capital One Bank v. Austin Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith where respondent used complainant’s mark to fraudulently induce transfer of credit and personal identification information).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of financial services including financial management and fund and capital investment services, and is the owner of a portfolio of trademark registrations for the EQT and EQT FOUNDATION marks in numerous jurisdictions including:
· United States service mark EQT, registration number 4,354,208, registered on the Principal Register on 18 June 2013 for services in international classes 35 and 36; and
· Australian trade mark, registration number 1618172, filed on 30 April 2014, for services in class 36.
The disputed domain name was registered on January 24, 2021 and resolves to a website that purports of offer financial services and the content of which contains a number of false assertions including providing false postal addresses for its claimed office locations in Luxembourg and London; and falsely presents a Financial Conduct Authority (FCA) number (705592) that belongs to an affiliate of Complainant, as being Respondent’s own FCA number.
There is no information available about Complainant except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar to the Forum in response to the request for verification of the registration detail of the disputed domain name in the course of this proceeding. Respondent availed of a privacy service to conceal its identity on the published WhoIs and the Registrar disclosed that Respondent is the registrant.
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 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”).
Complainant has provided clear, convincing and uncontested evidence of its rights in the EQT and EQT FOUNDATION service marks acquired through its ownership of its portfolio of service mark registrations described above and its extensive international use of the marks in financial services since it was established in 1994 having approximately EUR 52 billion in assets under management across 17 active funds, employing more than 700 people across 17 countries.
The disputed domain name <eqtfundmanagement.com> consists of Complainant’s EQT mark in combination with the generic terms “fund” and “management” and the generic Top-Level Domain extension <.com>.
As Complainant holds service mark registrations for its EQT mark this Panel must find that the mark has a distinctive character.
The generic terms “fund” and “management” whether viewed alone or in combination add no distinguishing character to the disputed domain name and in the circumstances of this Complaint Internet users would view the gTLD <.com> extension as a necessary technical requirement that may be ignored for the purposes of comparison applying the test in Policy ¶ 4(a)(i).
This Panel finds therefore that the disputed domain name is confusingly similar to the EQT mark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i). In making this finding this Panel is conscious that it is well established that Policy ¶ 4(a)(i), sets a low bar for a complainant.
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that:
· there is no evidence that Respondent is or was ever commonly known by the disputed domain name or as EQT Fund Management Limited prior to the registration of the disputed domain name on January 24, 2021;
· no business relationship or any other affiliation or association exists between Complainant and Respondent that would give Respondent the right to use the EQT mark in its domain name;
· the disputed name incorporating Complainant’s EQT mark, necessarily suggests that such an affiliation or association exists:
· the services offered on the website to which the disputed domain name resolves, are competitive with Complainant’s services and have not been authorized or approved by Complainant;
· the screen capture of the website to which the disputed domain name resolves which has been provided in an annex to the Complaint, shows that Respondent uses the disputed domain name to advertise investment services that, on their face, are directly competitive with services offered by Complainant under its EQT mark;
· it is clear from the evidence that Respondent seeks to profit from its use of Complainant’s EQT mark in the disputed domain name by causing initial confusion leading consumers into mistakenly believing that the services offered on the website to which the disputed domain name resolves are authorized or approved by Complainant; and
· such uses cannot be construed as legitimate noncommercial or fair use of the domain name.
It is well established that the onus rests on Complainant to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name whereupon the burden of production shifts to Respondent to prove such rights or interests.
Respondent has failed to respond to this Complaint and therefore has failed to discharge the burden.
This Panel must therefore find that Respondent has no rights or legitimate interests in the disputed domain name and therefore Complainant has succeeded in the second element of the test in Policy ¶ 4(a)(ii).
When the disputed domain name was registered on January 24, 2021, Complainant had established a very substantial business in financial services and its trademark rights and in the EQT mark.
Very soon after the disputed domain name was registered Respondent established a website purporting to offer financial services. A number of factors indicate that the registrant was the aware of Complainant and its mark and goodwill when the disputed domain name was registered.
In particular the disputed domain name contains the letters identical to Complainant’s service mark “EQT” as the initial and prominent element; and the other elements reference financial services, which is Complainant’s field of activity.
Respondent provides false postal addresses for its claimed office locations in Luxembourg and London; one of the listed addresses—26A Boulevard Royal, Luxembourg—is the location of Complainant’s Luxembourg office.
Additionally the Financial Conduct Authority (FCA) number (705592) presented on the website as being that of Respondent, in fact belongs to an affiliate of Complainant.
Furthermore Respondent has not denied Complainant’s assertion that he has taken photographs of individuals who are associated with other enterprises and presented them as being part of his team his website without permission.
This Panel furthermore takes the view that by making the statement on its website: “EQT Fund Management is an international asset investment management firm offering a variety of investment options. We focus on opportunities where our strong capital position combined with our sector and market expertise, can create material value for our investors“, Respondent is purporting to impersonate Complainant.
Taking these factors together this Panel finds that the uncontested evidence proves on the balance of probabilities that the disputed domain name was registered in bad faith with knowledge of Complainant and intending to take predatory advantage of Complainant and it goodwill and reputation in the EQT mark.
This Panel further finds that the evidence shows that the disputed domain name is being used in bad faith by Respondent as the address of the website to attract and lure Internet traffic interested in Complainant and its services, and mislead Internet users by creating an initial interest confusion with Complainants EQT mark.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eqtfundmanagement.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: April 20, 2021
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