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DECISION

 

FRANKLIN RESOURCES, INC. DBA FRANKLIN TEMPLETON v. Tammy Bailey / lu limei

Claim Number: FA2401002078869

 

PARTIES

Complainant is FRANKLIN RESOURCES, INC. DBA FRANKLIN TEMPLETON ("Complainant"), represented by CORSEARCH, INC, Texas, USA. Respondent is Tammy Bailey / lu limei ("Respondent"), New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <leggmason.vip>, <leggmasonex.com> and <leggmasons.com>, registered with Gname.com Pte. Ltd.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 11, 2024; Forum received payment on January 11, 2024.

 

On January 12, 2024, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <leggmason.vip>, <leggmasonex.com> and <leggmasons.com> domain names are registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the names. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 January 17, 2024, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of February 6, 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@leggmason.vip, postmaster@leggmasonex.com and postmaster@leggmasons.com. Also on January 17, 2024, the Chinese and English 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 in Chinese and English.

 

On February 7, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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: LANGUAGE OF THE PROCEEDING

The Complaint was submitted in English. Forum sent a formal Deficiency Notice to Complainant stating, inter alia, that:

 

"Pursuant to verification received from the Registrar, the Registration agreement is in Chinese. You have two options: 1. Translate the Complaint and Table of Contents into Chinese, or 2. Modify the complaint to explain why Respondent is capable of understanding English and therefore, the proceedings should be conducted in English."  

 

Complainant elected to provide submissions as to why Respondent is capable of understanding English and why the proceedings should be conducted in English. It stated that all content at the websites resolving from the disputed domain names is in English. That is so. At one level there is barely enough content to draw a reliable inference about facility in English but, on the other, there is some merit to Complainant's assertion that the resolving websites attempt to pass themselves off as sites owned and operated by Complainant. To create that impression, a knowledge of English is required, and on balance, the Panel considers that assembly of the websites required at least some understanding of English.

 

The Panel determines, pursuant to Rule 11(a), that the proceedings should be conducted in English (see for example, Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) holding that proceedings could be conducted in English even though the registration agreement was in Chinese where "the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English").

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

Paragraph 3(c) of 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."  A preliminary procedural issue arises because there are three domain names but the Registrar disclosed the names of two domain name holders.

 

In spite of Rule 3(c) the Panel has a residual discretion to allow one action against the domain names if it can reasonably be inferred that the names are effectively controlled by one person or entity, which is operating under several aliases.

 

Complainant's contention that the three names are all, in fact, aliases of the same underlying owner are that the domain names were all registered with the same Registrar, using a privacy shield, within a relatively narrow period of time, and resolve to webpages which have noticeable commonalities.

 

The Panel finds sufficient evidence that the domain names are controlled and used by a single person or entity having no connection with the real persons named as the holders. In these circumstances the Panel determines under Rule 3 that these proceedings can continue in respect of all disputed domain names (see, for example, Chevron Intellectual Property LLC, FA 1907869 (Forum Sept. 16, 2020), finding joint ownership through aliases due, in part, to the domains utilizing a similar structure, using the same privacy shield). Accordingly, the two owners are herein simply referred to as "Respondent".

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in LEGG MASON and submits that the domain names are confusingly similar to its trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names because it has no trademark rights; is not known by the same names; and the domain names have been used for a nefarious purpose.

 

Complainant alleges that Respondent registered the disputed domain names in bad faith having targeted Complainant's trademark and business.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are:

 

1.       Complainant provides financial services and, in particular, asset management services by reference to the trademark, LEGG MASON;

2.       the disputed domain names were registered in April and May of 2023; and

3.       the disputed domain names resolve to websites using the trademark and showing characteristics of the website owned and maintained by Complainant.

 

DISCUSSION

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.  

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Appended to the Complaint are a number of registrations for LEGG MASON issued by the United States Patent & Trademark Office or other national and pan-national registries. None show Complainant as the current owner. All registrations are in the name of LEGG MASON & CO., LLC. Some of the registrations show historical transmission of ownership information but there is no apparent link between Complainant and LEGG MASON & CO., LLC.

 

There is no proof that Complainant has common law trademark rights and so, at this point, the Panel would be entitled to deny the Complaint for failure to establish paragraph 4(a)(i) of the Policy. However, within the Complaint there are the following statements:

 

 

"[LEGG MASON & CO., LLC.] owns the [LEGG MASON trademark] for which it has obtained extensive federal trademark registrations. 

…

[LEGG MASON & CO., LLC.] is an American investment management and asset management based in Baltimore, was founded in 1899. The company was acquired by Franklin Templeton Investments as of July 2020 …"

 

There remains no evidence of the legal relationship between Franklin Templeton Investments and Complainant. The evidence of trademark rights is poorly marshalled but, absent a challenge from Respondent, the Panel finds that it is more likely than not that Complainant has some beneficial right to the LEGG MASON trademark and to the registrations and would be entitled to enforce them. The Panel narrowly accepts that Complainant has trademark rights in LEGG MASON.

 

For the purposes of comparison, the gTLD, ".com" or ".vip", can be disregarded. The disputed domain names are then either legally identical to the trademark (<leggmason.vip>), or make trivial additions to the trademark by way of pluralisation (<leggmasons.com>) or generic matter (<leggmasonex.com>) which is of no distinguishing value. The Panel finds that the disputed domain names are identical or confusingly similar to Complainant's trademark (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018): "Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."; Morgan Stanley Domestic Holdings, LLC v. Penstandards Trades, FA 2063861 (Forum Oct. 24, 2023) finding <etradeexchangeltd.com> confusingly similar to complainant's E*TRADE).

 

The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The names of the underlying domain name registrants disclosed by the Registrar in consequence of these proceedings does nothing to indicate that Respondent might be commonly known by the domain names (see, for example, Tercent Inc. v. Lee Yi, FA 0139720 (Forum Feb. 10, 2003) stating "nothing in [the respondent's] WHOIS information implies that [the respondent] is 'commonly known by' the disputed domain name" as one factor in determining that Policy ¶ 4(c)(ii) does not apply.").

 

There is no evidence that Respondent has any trademark rights.  Complainant states that there is no association between the parties.  The use of the names could not give rise to any rights or legitimate interests because the names resolved to websites using the trademark and generally mimicking Complainant's own website .

 

The Panel finds that a prima facie case has been made (see, for example, 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).").

 

The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

'(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.'

 

The Panel finds that Respondent's use of the domain names falls squarely under paragraph 4(a)(iv) above. The domain names have already been found to be either identical or confusingly similar to the trademark. The resolving websites exist for commercial gain in one form or another, the exact nature being unimportant. In terms of the Policy, the Panel finds that Respondent intentionally attempted to attract, for commercial gain, internet users to its websites by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of those websites (see, for example, Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (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).").

 

The Panel finds that Complainant has satisfied the third and final element of the Policy.

 

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 <leggmason.vip>, <leggmasonex.com> and <leggmasons.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Debrett G. Lyons, Panelist

Dated:  February 8, 2024