M.M. Warburg & Co KGaA v. Claudia Miller, The Nathan M. Warburg Foundation
Case No. D2008-1841
1. The Parties
The Complainant is M.M. Warburg & Co KGaA, of Hamburg, Germany, represented by Latham & Watkins LLP, Germany.
The Respondent is Claudia Miller, The Nathan M. Warburg Foundation of New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <nmwarburg.org> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2008. On December 1, 2008, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On December 1, 2008, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. Register.com provided contact details for the registrant and its administration and technical contacts by way of street addresses in New York and Switzerland and by way of email addresses. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center employed reasonably available means calculated to achieve actual notice to the Respondent of the Complaint. Notice to the Respondent of the Complaint (without attachments) was achieved by email. The courier delivery of the Complaint (with attachments) to the New York street address of the Respondent provided by the Registrar could not be made because, as the courier reported “A correct name or receiver name is needed for delivery”. The copies of the Complaint (with attachments) posted to addresses in Zurich and Bern, Switzerland were returned to the Center, addressee unknown.
The proceedings commenced on December 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 31, 2008.
The Center appointed Alan L. Limbury as the sole panelist in this matter on January 15, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background (uncontested facts)
The Complainant is a famous bank which has been inseparably connected with the Warburg family for over 200 years, when the brothers Moses Marcus and Gerson Warburg founded the bank under the name M.M. Warburg & Co. in the North of Germany in 1798.
It now has numerous branches, subsidiaries and affiliates all over the world, including in Zurich, Jakarta, New York and Luxembourg. The Complainant and its trademarks are well-known not only in Germany but in many other countries of the world.
The Complainant is the registered proprietor of numerous WARBURG and WARBURG formative trademarks including German trademark No. 1165240 M.M. WARBURG filed on June 2, 1989 and registered on October 8, 1990 for services in Classes 35 and 36.
The disputed domain name <nmwarburg.org> was registered on September 13, 2007. It resolves to a website which presents the Nathan M. Warburg Foundation as an organization with its head office in Bern, Herzogstrasse 349, Switzerland and as one of the largest private philanthropic foundations, with assets of over $ 2.4 billion and grants and program-related investments totaling approximately $ 100 million annually. The website describes Nathan M. Warburg as the founder of the Nathan M. Warburg Foundation; as one of the last representatives of a dynasty of bankers founded in the 18th century; and as a famous financier, philanthropist, philosopher and author of a number of books and articles. He is also described as the co-founder and chairman of NM Warburg Holdings, Inc., one of the oldest and most prestigious financial services firms in the world with headquarters in Zurich, offices in 40 nations, primarily in Europe and North America, approximately 20,000 employees and over 10 million customer accounts in more than 100 countries with total assets of nearly $ 70 billion.
5. Parties' Contentions
A. Complainant
The Complainant seeks an order that the disputed domain name <nmwarburg.org> be transferred to the Complainant on the ground that it is virtually identical and confusingly similar to the Complainant's well-known trademark M.M.WARBURG and that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
As to legitimacy, the Complainant says the information provided on the website under the disputed domain name <nmwarburg.org> is false.
The Complainant asserts that there exists no Nathan M. Warburg Foundation. The address mentioned on the website (Herzogstrasse 349, Bern) is wrong as the street numbers on Herzogstrasse, Bern, go up only to the thirties. The telephone number provided to contact the foundation appears to be the fax number of the Historical Museum in Bern. The alleged news and press releases mentioned on the website are not accessible (clicking on such news, Internet users receive the information that the document could not be found).
Further, the Complainant asserts that NM Warburg Holdings, Inc., allegedly headquartered in Zurich, does not exist. According to the Cantonal Commercial Register Database of Zurich, the only existing “Warburg” companies headquartered in Zurich are “M.M. Warburg CO Vermögensverwaltungs-AG”, “M.M. Warburg Bank (Schweiz) AG”, “S.G. Warburg Securities S.A.” and “Warburg Alternative Investments AG”. A Google search for “NM Warburg Holdings, Inc.” provides only 8 search results, none of which leads to information which proves the existence of this company. In view of this, it is more than unlikely that NM Warburg Holdings, Inc. is as alleged on the website under the disputed domain <nmwarburg.org> one of the oldest and most prestigious financial services firms in the world with offices in 40 nations, primarily in Europe and North America, approximately 20,000 employees and over 10 million customer accounts in more than 100 countries with total assets of nearly $ 70 billion. It does exist at all.
The Complainant asserts that Nathan M. Warburg is not a member of any famous family of bankers. There is a famous family named “Warburg” which started the Complainant's banking business in the middle of the 18th century in Germany and is now active all over the world. Yet there is no famous family member “Nathan M. Warburg” alive. A Google search for the name “Nathan M. Warburg” provides only 10 search results, none of which provide any information which could prove the existence of such person because all of them lead to the website under the disputed domain name <nmwarburg.org>. The information provided on that website according to which “Nathan M. Warburg” is an author of a number of books is not true either: Amazon.com does not offer any book by such author. In light of is, the assertions made on the website that Nathan M. Warburg gave a speech at the United Nations headquarters in New York about his vision of the world in 2008 and that the New York Times published an interview with Nathan M. Warburg in 2007 cannot be accepted.
The Complainant asserts that as a result, there are strong indications that neither the individual Nathan M. Warburg nor the organization Nathan M. Warburg Foundation exist. The list of noteworthy members and institutions related to the Warburg family which is published by the free Encyclopedia Wikipedia does not include such individual or organization either. Even if there were an organization “Nathan M. Warburg Foundation”, it could not derive any rights in the name “Warburg” from the alleged famous financier founding the organization, i.e. Nathan M. Warburg, because this financier does not exist.
Given the information above, the Complainant asserts that there has been no use of the disputed domain name <nmwarburg.org> in connection with a bona fide offering of goods or services; the Respondent has not been commonly known by the disputed domain name; and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because the information provided under the disputed domain name is false and misleading to the public.
As to bad faith, the Complainant says the Respondent must have been aware of the Complainant's well-known trademarks and company name when registering the disputed domain name <nmwarburg.org> and that the Respondent's bad faith is shown by its falsely pretending to be an organization founded by a fictitious Nathan M. Warburg, said to be a Suisse financier and philanthropist and one of the last representatives of a dynasty of bankers.
The Complainant asserts that the choice of the name “Warburg” and of the initials “NM” show that the Respondent intended to refer to the Warburg family of the Complainant and, in particular, to the Complainant's company name and trademarks “M.M.WARBURG”, causing confusion amongst consumers searching for the Complainant's site; disrupting the Complainant's business and tarnishing the reputation and prestige of the Complainant. Given the strong indications that the Nathan M. Warburg Foundation does not exist, it is likely that the contact information provided by the registrant (i.e. the name of the registrant) is false, thus masking the person behind it. Deliberately furnishing false contact information to a domain name registrar also constitutes bad faith registration and use.
The Complainant suggests that, given the false contact information, it is not unlikely that the organization behind the Nathan M Warburg Foundation spies out personal data, confidential information and bank account details by purporting to offer grants in order to misuse them for its own purpose.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,
WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC V. MARK FREEMAN,
WIPO Case No. D2000-1080 and ALTA VISTA COMPANY V. GRANDTOTAL FINANCES LIMITED et al.,
WIPO Case No. D2000-0848. In this case support for the Complainant's contention that the Respondent does not exist is provided by the failure of the courier delivery to the Respondent's New York street address and the return of the postal delivery addressed to the Respondent at Herzogstrasse 349 in Bern, the very address which Complainant says does not exist.
A. Identical or Confusingly Similar
It is well established that “essential” or “virtual” identity is sufficient for the purposes of the Policy: The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; that the test of confusing similarity is confined to a comparison of the disputed domain name and the trademark alone: BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; and that the specific top level of the domain name, in this case “.org”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525.
The disputed domain name <nmwarburg.org> is clearly virtually identical and is confusingly similar to the Complainant's well-known M.M.WARBURG trademark.
The Complainant has established this element of its case.
B. Rights or Legitimate Interests
The Panel is satisfied that the M.M.WARBURG mark is distinctive and well known. The Complainant's assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that disputed domain name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so. Therefore, the Complainant's factual assertions in support of its submission that the Respondent lacks rights or legitimate interests stand uncontradicted.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has established this element of its case.
C. Registered and Used in Bad Faith
The four illustrations of bad faith set forth in the Policy, paragraph 4 (b) are non-exclusive.
In the absence of any Response, the Panel accepts the Complainant's contention that the disputed domain name was registered in the name of a fictitious organization, with knowledge of the reputation in banking circles of the Complainant and its M.M.WARBURG and other marks; that false contact information was deliberately provided to the Registrar; and that the information presented on the website to which the disputed domain name leads is false and designed to mislead consumers into believing that the Respondent is or is intimately associated with the Complainant.
Under these circumstances the Panel finds that the disputed domain name was registered and is being used in bad faith.
The Complainant has established this element of its case.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <nmwarburg.org> be transferred to the Complainant.
Alan L. Limbury Sole Panelist
Dated: January 21, 2009
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