DECISION

 

Warburg Pincus & Co. v. Elmer Wagner

Claim Number: FA2407002107142

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <warburgpincuscapitalcorp.com>, registered with NameCheap, Inc..

 

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 19, 2024; Forum received payment on July 19, 2024.

 

On July 19, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <warburgpincuscapitalcorp.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 July 22, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 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@warburgpincuscapitalcorp.com. Also on July 22, 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 August 13, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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

i) Complainant, Warburg Pincus & Co., provides financial services.  For decades, Complainant has used and continues to use the WARBURG PINCUS name and mark. Complainant has rights in the WARBURG PINCUS mark, among others, through Complainant's registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,378,369, registered August 22, 2000). The disputed domain name is confusingly similar to Complainant's WARBURG PINCUS mark as it incorporates the mark in its entirety, only adding the generic or descriptive terms "capital" and "corp" and the ".com" generic top-level-domain name ("gTLD"). 

 

ii) Respondent does not have rights or legitimate interests in the disputed domain name because Complainant has not licensed or authorized Respondent to use the WARBURG PINCUS mark and Respondent is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to impersonate Complainant.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Complainant's marks are so well-known that Respondent would be hard-pressed to provide any legitimate explanation for registering the disputed domain name. Respondent's use of the domain name for a website displaying the WARBURG PINCUS mark in a manner that impersonates Complainant demonstrates bad faith registration and use. Respondent was aware of or had constructive knowledge of Complainant's WARBURG PINCUS mark when it chose and registered the disputed domain name. By causing initial interest confusion, Respondent's use and registration of the disputed domain name disrupt the business of Complainant.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on July 2, 2024.

 

2. Complainant has established rights in the WARBURG PINCUS mark through Complainant's registration of the mark with the USPTO (e.g., Reg. No. 2,378,369, registered August 22, 2000).

 

3. The website associated with the disputed domain name offers financial services, including alleged investment and private equity advisory services and/or investment and private equity information services, which are identical or closely related to the services provided by Complainant under the name and mark WARBURG PINCUS.

 

4. The website associated with the disputed domain name includes biographical information about Warburg Pincus and its CEO, and uses his photograph from Complainant's official website without permission. 

 

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

Complainant asserts rights in the WARBURG PINCUS mark, among others, through Complainant's registration with the USPTO (e.g., Reg. No. 2,378,369, registered August 22, 2000). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). As Complainant provides evidence of trademark registration, the Panel finds Complainant has established rights in the WARBURG PINCUS mark per Policy ¶ 4(a)(i). 

 

Next, Complainant argues the disputed domain name <warburgpincuscapitalcorp.com> is confusingly similar to Complainant's WARBURG PINCUS mark, as it incorporates the mark in its entirety, only adding the generic or descriptive terms "capital" and "corp" and the ".com" gTLD. The mere addition of a descriptive term and gTLD is not enough to differentiate a disputed domain name from a mark. See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD."); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). The Panel therefore finds the disputed domain name is confusingly similar to Complainant's WARBURG PINCUS mark.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the WARBURG PINCUS mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  The unmasked WHOIS information for the disputed domain name lists the registrant as "Elmer Wagner" and Complainant asserts there is no other evidence to suggest that Respondent was authorized to use the WARBURG PINCUS mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Next, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent passes off as Complainant.  Under Policy ¶¶ 4(c)(i) and (iii), panels have found that respondent's attempts to use a disputed domain name to pass itself off as complainants is not a bona fide offering of goods or services or legitimate noncommercial or fair use.  See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) ("Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.").  Complainant provides screenshots of Respondent's resolving website, which offers financial services, including alleged investment and private equity advisory services and/or investment and private equity information services, which are identical or closely related to the services provided by Complainant under the name and mark WARBURG PINCUS. The Panel also notes that the website associated with the disputed domain name includes biographical information about Warburg Pincus and its CEO, and uses his photograph from Complainant's official website without permission. The Panel therefore finds the use of the disputed domain name to impersonate Complainant fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant contends Respondent registered and uses the disputed domain name in bad faith as Respondent registered it to pass off as Complainant in order to confuse users into thinking that Respondent is Complainant. Registration and use of a domain name in order to confuse users can be evidence of bad faith per Policy ¶ 4(b)(iii).  See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant."); see also Nw. Airlines, Inc. v. Koch, FA 95688 (Forum Oct. 27, 2000) ("[T]he selection of a domain name [<northwest-airlines.com>] which entirely incorporates the name of the world's fourth largest airline could not have been done in good faith"). The Panel recalls Complainant provides screenshots of Respondent's resolving website using the Complainant's WARBURG PINCUS mark to falsely suggest that Respondent is somehow endorsed by or affiliated with Complainant. The Panel finds that such false association and passing off in violation of Complainant's intellectual property rights is evidence of bad faith use and registration per Policy ¶ 4(b)(iii).

 

Complainant further argues Respondent registered the disputed domain name with constructive knowledge of Complainant's rights in the WARBURG PINCUS mark based on Respondent's use of the WARBURG PINCUS mark and name thereby impersonating Complainant and in light of the reputation of Complainant's mark. While constructive knowledge is insufficient for a finding of bad faith, worldwide prominence of a mark can demonstrate actual knowledge of a complainant's rights in a mark at registration and show bad faith under Policy ¶ 4(a)(iii). See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) ("Complainant contends that Respondent's knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant's mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii)."). The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name that Respondent registered the disputed domain name with knowledge of Complainant's rights in its mark, which constitutes bad faith registration per 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 <warburgpincuscapitalcorp.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: August 14, 2024