DECISION

 

Warburg Pincus & Co. v. jesus bosca / jesu / jesu boc

Claim Number: FA2312002075554

PARTIES

Complainant is Warburg Pincus & Co. ("Complainant"), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is jesus bosca / jesu / jesu boc ("Respondent"), USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <warburgplncus.com> and <warburgincus.com>, registered with Squarespace Domains II LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 16, 2023; Forum received payment on December 16, 2023.

 

On December 18, 2023, Squarespace Domains II LLC confirmed by e-mail to Forum that the <warburgplncus.com> and <warburgincus.com> domain names are registered with Squarespace Domains II LLC and that Respondent is the current registrant of the names. Squarespace Domains II LLC has verified that Respondent is bound by the Squarespace Domains II 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 December 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2024 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@warburgplncus.com, postmaster@warburgincus.com. Also on December 19, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On January 9, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

Complainant alleges that the disputed domain name is effectively controlled by the same person and/or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder."  Complainant contends that each of the domain names have near identical Whois information, they were registered within days of each other, and they resolve to similar webpages. The Panel therefore finds that the domain names are commonly owned/controlled by a single entity or person and will refer to the named Respondents as Respondent.

 

PARTIES' CONTENTIONS

A. Complainant

1.       Respondent's <warburgplncus.com> and <warburgincus.com> domain names are confusingly similar to Complainant's WARBURG PINCUS mark.

2.       Respondent does not have any rights or legitimate interests in the <warburgplncus.com> and <warburgincus.com> domain names.

3.       Respondent registered and uses the <warburgplncus.com> and <warburgincus.com> domain names in bad faith.

 

B. Respondent did not file a Response.

 

FINDINGS

Complainant offers financial services and holds a registration for the WARBURG PINCUS mark with the United States Patent and Trademark Office ("USPTO") (Reg. No 2,378,369, registered August 22, 2000).

 

Respondent registered the <warburgplncus.com> and <warburgincus.com> domain names on November 27, 2023, and November 30, 2023, and fails to make an active use of the domain names.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The Panel finds that Complainant has rights in the WARBURG PINCUS mark through registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).")

 

Respondent's <warburgplncus.com> and <warburgincus.com> domain names use slightly misspelled versions of Complainant's WARBURG PINCUS mark and simply add the ".com" gTLD. These changes do not sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) ("Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD '.com.'  This is insufficient to distinguish the disputed domain names from Complainant's trademark.") Therefore, the Panel finds that Respondent's <warburgplncus.com> and <warburgincus.com> domain names are confusingly similar to Complainant's WARBURG PINCUS mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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.")

 

Complainant contends that Respondent has no rights or legitimate interests in the <warburgplncus.com> and <warburgincus.com> domain names, as Respondent is not commonly known by the domain names. Complainant has not given Respondent permission to use its WARBURG PINCUS mark. The WHOIS identifies "jesus bosca / jesu / jesu boc" as the registrant of the disputed domain names.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names and thus has no rights under Policy ¶ 4(c)(ii). 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). 

 

Complainant contends that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use as it does not resolve to an active webpage. Complainant provides evidence showing that the disputed domain names resolve to an inactive page. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) ("Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.")

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and uses the <warburgplncus.com> and <warburgincus.com> domain names in bad faith as Respondent fails to make an active use of the domain names. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) ("Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.") 

 

Complainant contends that Respondent's typosquatting also demonstrates bad faith. Registering a disputed domain name that intentionally introduces a typographical error in a mark evinces bad faith registration and use under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) ("Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name's registrant.") Accordingly, the Panel finds bad faith typosquatting under Policy ¶ 4(a)(iii).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <warburgplncus.com> and <warburgincus.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated: January 10, 2024