WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banque de Luxembourg, SA v. Danny Odonovan

Case No. D2018-2220

1. The Parties

The Complainant is Banque de Luxembourg, SA of Luxembourg, Luxembourg represented by MEYER & Partenaires, France.

The Respondent is Danny Odonovan of Buckinghamshire, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <conventumassetmanagement.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2018. On October 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 2, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 4, 2018.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2018.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 13, 2018. 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

The Complainant, Banque de Luxembourg, SA, has existed since the 1920s and is one of Luxembourg’s leading private banks. The Complainant offers its clients five areas of business expertise. Its specific asset management services are provided by a specialized company, Conventum Asset Management S.A., which runs a subsidiary of the Complainant’s. This company was created in March 1986.

As the parent company, the Complainant is the owner of the intellectual property rights related to its CONVENTUM ASSET MANAGEMENT business identifiers.

The Complainant has proven to be the owner of the CONVENTUM ASSET MANAGEMENT trademarks, which enjoy protection through numerous registrations worldwide.

The Complainant is, inter alia, the owner of:

International trademark CONVENTUM ASSET MANAGEMENT No.1332868, registered on November 10, 2016;

European Union trademark CONVENTUM ASSET MANAGEMENT No. 015436942, registered on November 25, 2016;

In addition, the Complainant operates, among others, the domain name <conventumassetmanagement.lu>.

The disputed domain name <conventumassetmanagement.com> was registered on August 2, 2018.

The website “www.conventumassetmanagement.com” is currently not accessible as it has been shut down by the hosting provider at the Complainant’s request.

However, in accordance with the evidence submitted with the Complaint, it appears that the disputed domain name previously redirected to a website offering financial services under the name “CONVENTUM ASSET MANAGEMENT”. This website had the look and feel of an official company named CONVENTUM ASSET MANAGEMENT and the terms of use of this website, as well as the “contact us” page, provided the location information and legal data relating to the Complainant’s subsidiary.

The Complainant’s trademark registrations predate the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is identical or at the least confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the CONVENTUM ASSET MANAGEMENT trademarks.

The disputed domain name <conventumassetmanagement.com>reproduces the Complainant’s trademarks in their entirety.

The disputed domain name <conventumassetmanagement.com> consists of the CONVENTUM ASSET MANAGEMENT mark, with the sole addition of the generic Top-Level Domain (“gTLD") “.com”.

The addition in the disputed domain name of the gTLD “.com”, being a technical requirement, is not relevant in the assessment process and in any case it is not enough to avoid confusing similarity with the CONVENTUM ASSET MANAGEMENT trademark.

Therefore, the Panel finds the disputed domain name to be identical to the CONVENTUM ASSET MANAGEMENT trademark in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “CONVENTUM ASSET MANAGEMENT” or by any similar name. The Respondent has no connection to or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor does the Respondent appear to make any use in connection with a bona fide offering of goods or services. In fact, it appears, from the documents available, that the disputed domain name, at present unavailable, was used for a certain period to present the Respondent’s website as the website of an official company named CONVENTUM ASSET MANAGEMENT having the same contact details and location data as the Complainant’s Conventum Asset Management S.A. Finally, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name.

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

C. Registered and Used in Bad Faith

The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered in bad faith and that it has been used in bad faith.

Indeed, the Complainant gives several sound bases for his contention that the disputed domain name was registered and has been used in bad faith.

The Panel finds that the Respondent could not have been unaware of the CONVENTUM ASSET MANAGEMENT trademark, nor of the existence of the Complainant’s subsidiary, Conventum Asset Management S.A..

This is particularly obvious given the fact that Respondent has indicated in the agreement and in the contact pages of his website the current postal address of Conventum Asset Management S.A.

It is therefore inconceivable that the Respondent was not aware of the Complainant’s rights in the trademark CONVENTUM ASSET MANAGEMENT when registering the disputed domain name.

Particular relevance then must be attached to the Complainant’s unchallenged assertions (which the Panel accepts) that the Respondent was using the disputed domain name in order to intentionally attempt to attract Internet users to the Respondent’s website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its website; and to the fact that the Respondent was most likely using the disputed domain name to create confusion with the Complainant’s subsidiary and take advantage of that confusion for fraudulent purposes, such as scamming, phishing, or theft of personal data. Indeed, it appears that on the Respondent’s website, “www.conventumassetmanagement.com”, there was a “login page” to access a purportedly secured area, and, on the balance of probability, this login page may well have been placed on this web site to collect personal information and access credentials for fraudulent purposes like scams or phishing.

Further inference of bad faith registration and use is then given by the fact that on the Respondent’s website, “www.conventumassetmanagement.com”, the postal address (falsely indicated as the Respondent’s contact address) in reality belongs to the Complainant’s subsidiary.

Finally, it is also relevant to note that, if the Respondent did have legitimate purposes in registering and using the disputed domain name, he could have responded to the allegations made by the Complainant in this proceeding.

Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.

Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For 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 <conventumassetmanagement.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: November 21, 2018