DECISION

 

Warburg Pincus & Co. v. william

Claim Number: FA2404002092467

 

PARTIES

Complainant is Warburg Pincus & Co. ("Complainant"), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is william ("Respondent"), Cambodia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <warburgpincus.club>, registered with Global Domain Group LLC.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 9, 2024; Forum received payment on April 9, 2024.

 

On April 9, 2024, Global Domain Group LLC confirmed by e-mail to Forum that the <warburgpincus.club> domain name is registered with Global Domain Group LLC and that Respondent is the current registrant of the name. Global Domain Group LLC has verified that Respondent is bound by the Global Domain Group 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 April 10, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 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@warburgpincus.club. Also on April 10, 2024, 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 May 1, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant is a source of financial services and has raised 21 private equity and 2 real estate funds, which have invested more than $110 billion in over 1,000 companies in more than 40 countries.

 

Complainant owns trademark registrations for its WARBURG PINCUS marks in connection with financial and related services in various countries around the world, including without limitation, the United States.

 

The at-issue domain name, which incorporates Complainant's WARBURG PINCUS mark in whole, must be deemed virtually identical or confusingly similar to Complainant's registered marks. The addition of the gTLD ".club" and the elimination of spaces also fail to distinguish the disputed domain name from Complainant's WARBURG PINCUS mark.

 

Respondent lacks rights and legitimate interests in respect of the at-issue domain name. Respondent did not engage in any legitimate business or commerce under the WARBURG PINCUS mark or the disputed domain name, and Respondent was not commonly known by <warburgpincus.club>. Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the WARBURG PINCUS mark or the disputed domain name.

 

Resolution of the at-issue domain name on Chrome is blocked by a Cisco fraud warning that the site may have been used in a phishing attempt. Thus, upon information and belief, Respondent has used the disputed domain to impersonate Complainant in an attempt to phish for client information or to provide fake investment opportunities. Respondent has not used the disputed domain name to resolve to an active website. The passive holding of a domain name does not show a legitimate use or bona fide offering of goods or services,

 

Respondent registered and uses the at-issue domain name in bad faith. Respondent was aware of Complainant's WARBURG PINCUS mark when it registered <warburgpincus.club> and chose the domain name because it was confusingly similar to Complainant's well-known mark. Respondent intended to capitalize on the confusion between at-issue domain name and Complainant's trademark. Respondent would be hardpressed to provide any legitimate explanation for registering the <warburgpincus.club> domain name other than to take advantage of the goodwill and brand recognition associated with Complainant and its famous WARBURG PINCUS mark. Respondent's failure to make active use of the domain name is further evidence of bad faith use and registration. Alternatively, Respondent uses the domain name for phishing by passing itself off as Complainant. Respondent also created initial interest confusion.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has trademark rights in the WARBURG PINCUS mark.

 

Respondent registered the at-issue domain name after Complainant acquired rights in WARBURG PINCUS.

 

Complainant's has not authorized Respondent to use Complainant's trademark.

 

Respondent holds the at-issue domain name passively.

 

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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant shows that it has a USPTO registration and other national trademark registrations worldwide for its WARBURG PINCUS trademark. Any of such registrations is sufficient to demonstrate Complainant's rights in the WARBURG PINCUS mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) ("Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world."); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) ("The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.").

 

Respondent's <warburgpincus.club> domain name consists of Complainant's WARBURG PINCUS trademark less its domain name impermissible space, followed the ".club" top-level. The differences between Complainant's trademark and Respondent's domain name are thus insufficient to distinguish WARBURG PINCUS from the <warburgpincus.club> domain name for the purposes of the Policy. Therefore, the Panel finds that Respondent's <warburgpincus.club> domain name is confusingly similar to Complainant's WARBURG PINCUS trademark pursuant to Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) ("When a respondent's domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), ".com", then the Panel may find that the disputed domain name is identical to Complainant's mark.").

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and as discussed below there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and "Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.").

 

The WHOIS information for <warburgpincus.club> indicates that "william" is the domain name's registrant and there is nothing in the record that tends to prove that Respondent is otherwise known by <warburgpincus.club>. As such, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where "the WHOIS of record identifies the Respondent as "Bhawana Chandel," and no information in the record shows that Respondent was authorized to use Complainant's mark in any way").

 

Respondent holds <warburgpincus.club> passively. Respondent's use of the at-issue domain name in such manner is neither indicative of any bona fide offering of goods or services under Policy ¶ 4(c)(i) nor of a non-commercial or fair use under Policy ¶4(c)(iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) ("Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).").

 

Given the forgoing, Complainant demonstrates Respondent's lack of rights and lack of legitimate interests in respect of the at-issue domain name.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, bad faith circumstances are present which lead the Panel to conclude that Respondent acted in bad faith pursuant to the Policy.

 

Browsing to <warburgpincus.club> has returned a network security message stating that "This site is blocked due to a phishing threat."  Respondent also appears to hold the <warburgpincus.club> domain name passively. Passively holding the confusingly similar domain name is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) ("Respondent's domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.").

 

Moreover, Respondent had actual knowledge of Complainant's rights in the WARBURG PINCUS mark when Respondent registered <warburgpincus.club> as a domain name. Respondent's actual knowledge is evident given WARBURG PINCUS's notoriety. See 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 had actual knowledge of Complainant's mark when registering the disputed domain name);

 

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 <warburgpincus.club> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: May 2, 2024