DECISION
Warburg Pincus & Co. v. Harry Shah
Claim Number: FA2503002145811
PARTIES
Complainant is Warburg Pincus & Co. ("Complainant"), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Harry Shah ("Respondent"), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <warburg-capital.com>, registered with IONOS SE.
PANEL
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on March 18, 2025. Forum received payment on March 18, 2025.
On March 20, 2025, IONOS SE confirmed by e-mail to Forum that the <warburg-capital.com> domain name is registered with IONOS SE and that Respondent is the current registrant of the name. IONOS SE has verified that Respondent is bound by the IONOS SE 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 24, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2025 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@warburg-capital.com. Also on March 24, 2025, 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 April 15, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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
Founded in 1966, Complainant, Warburg Pincus & Co., provides financial services under the WARBURG PINCUS name and mark, including private equity investment services and management of private equity funds. The firm is headquartered in New York with offices in Amsterdam, Beijing, Berlin, Hong Kong, Houston, London, Luxembourg, Mauritius, Mumbai, San Francisco, São Paulo, Shanghai, and Singapore. The WARBURG PINCUS mark is famous in the private equity industry.
The <warburg-capital.com> domain name is confusingly similar to Complainant's WARBURG PINCUS mark.
Respondent should be considered as having no rights or legitimate interests in respect of the domain name. Upon information and belief, prior to the time Complainant established rights in its WARBURG PINCUS mark, Respondent did not engage in any legitimate business or commerce under the WARBURG PINCUS mark or the <warburg-capital.com> domain name, and was not commonly known by either of those names. 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. Indeed, Respondent has no relationship whatsoever to Complainant. Respondent is not using the domain name in connection with the bona fide offering of goods and services nor for any legitimate business or purpose.
The <warburg-capital.com> domain name is ostensibly being used to impersonate Complainant via the website "warburg-capital.com", which offers purported financial services under the name and mark WARBURG CAPITAL, including private investment and advisory services identical or closely related to services provided by Complainant. Upon information and belief, Respondent is thus using the domain name to impersonate Complainant. Moreover, the financial services offered via Respondent's website are fake.
Complainant's WARBURG PINCUS mark is so well-known that the only plausible inference that can be derived from Respondent's registration of the domain name is that Respondent registered it to take advantage of and intentionally trade on the goodwill associated with Complainant's WARBURG PINCUS mark. Such use also causes "initial interest confusion," which is disruptive to Complainant, its business, and goodwill in the WARBURG PINCUS mark.
Lastly, Respondent does not have any legitimate rights in the domain name given the prior use and registration of the WARBURG PINCUS mark by Complainant, which give Respondent actual or constructive knowledge of such use and registration.
The domain name should be considered as having been registered and used in bad faith. Respondent was aware of Complainant's WARBURG PINCUS mark when registering the domain name; chose it because it was confusingly similar to Complainant's well-known mark; and intended to capitalize on that confusion. This alone constitutes evidence of bad faith use and registration. Complainant's mark is so well-known that Respondent would be hard-pressed to provide any legitimate explanation for registering the domain name other than to take advantage of the goodwill and brand recognition associated with Complainant and its famous WARBURG PINCUS mark. By ostensibly using the domain name to impersonate Complainant, Respondent seeks falsely to suggest that it is somehow endorsed by or affiliated with Complainant. This is further evidence of bad faith use and registration, as is Respondent's offering of likely fake services. Finally, because Complainant's WARBURG PINCUS mark is well-known and registered in many countries throughout the world, Respondent is presumed to have had constructive knowledge of Complainant's WARBURG PINCUS mark at the time he or she registered the confusingly similar domain name, indicating Respondent's bad faith use and registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has established all the elements entitling it to relief.
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 has shown that it has rights in the WARBURG PINCUS mark through numerous registrations, including in the UK, where Respondent is located (e.g., Reg. No. UK 009024326988, registered on January 8, 2008 in Class 36 for "Financial services; mutual fund investment, mutual fund brokerage, mutual fund distribution, financial analysis and consultation by telephone, investment advice, investment consultation and investment of funds for others").
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0 "), section 1.7.
The Panel finds Respondent's <warburg-capital.com> domain name to be confusingly similar to Complainant's WARBURG PINCUS mark, since it incorporates the distinctive WARBURG element of the mark, adding a hyphen and the word "capital", which is insufficient to distinguish the domain name from Complainant's mark and instead evokes Complainant's business. The inconsequential ".com" generic top-level domain ("gTLD") may be ignored under this element. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <warburg-capital.com> domain name was registered on January 1, 2025, many years after the registration of Complainant's well-known mark in the UK. It resolves to a website prominently displaying the distinctive WARBURG element of Complainant's mark and purporting to offer services of the kind provided by Complainant.
These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <warburg-capital.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(a)(iii) of the Policy is expressed in the conjunctive: "the domain name has been registered and is being used in bad faith". Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant and its well-known WARBURG PINCUS mark when Respondent registered the <warburg-capital.com> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website and of the services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <warburg-capital.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: April 17, 2025
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