The Complainant is Baillie Gifford & Co., United Kingdom, represented by DLA Piper UK LLP, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundación Comercio Electrónico, Panama.
The disputed domain name <balliegifford.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2019. On June 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2019, and on June 11, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Complaint to the Respondent, and the proceedings commenced on June 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2019.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on July 12, 2019. 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.
The Complainant is a British company founded in 1908, which provides investment management and financial services industry. It operates internationally (with offices in Edinburg, London, Dublin, Frankfurt, New York, and Hong Kong), under the trademark BAILLIE GIFFORD, which derives from the family names of the Complainant’s founders (Augustus Baillie and Carlyle Gifford). The trademark BAILLIE GIFFORD has been continuously used since the Complainant’s foundation, being firmly established.
The Complainant holds registered trademark rights in the mark BAILLIE GIFFORD of which the following is sufficiently representative for the present proceeding:
European Union Trademark No. 007079585 BAILLIE GIFFORD, word mark, registered February 16, 2009, in classes 35, 36, and 41.
The Complainant further owns a domain name portfolio comprising its mark BAILLIE GIFFORD, including <bailliegifford.com>, which is linked to its corporate website in connection with its services.
The disputed domain name was registered on January 4, 2019. It resolves to a parked website hosted by Sedo, which offers the selling of the disputed domain name and lists various links to third parties’ websites that change regularly related to different sectors, including financial, credit’s comparison and insurance services.
Key contentions of the Complaint may be summarized as follows:
Through its intensive use and promotion since the Complainant’s foundation in 1908, the trademark BAILLIE GIFFORD has acquired significant reputation and goodwill in the asset management and financial services industry, recognized in the trade press and by numerous awards. This reputation is enforceable through common law and unregistered rights (long established before the disputed domain name registration), as well as through trademark law.
The disputed domain name reproduces the Complainant’s trademark almost identically being a clear case of typosquatting in the form of an obvious misspelling, namely removing the first letter “i”. It reproduces the term “balliegifford” instead of “bailliegifford”. The character of obvious misspelling of the disputed domain name is illustrated by a Google search, which identifies “balliegifford” as a likely misspelling of the mark. Therefore, the disputed domain name is clearly confusingly similar to the Complainant’s mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name as it is not licensees of the Complainant, nor has it been otherwise authorized to register and use the Complainant’s trademark in the disputed domain name. To the Complainant’s knowledge, the Respondent is not commonly known as “Ballie Gifford”. The Complainant is the sole rightful owner of this mark, which was formed with the family names of its founders, being sufficiently unique to consider unlikely the Respondent adopted a materially identical term without knowing about this mark.
Additionally, the disputed domain name resolves to a parked page comprising pay-per-click links, some related to the Complainant’s industry (investments and fund management) but not connected to the Complainant, which suggests an attempt to use a name materially identical to the mark in an effort to divert customers to alternative business for commercial gain. Such conduct cannot create legitimate interests in the disputed domain name or constitute “fair use” pursuant to paragraph 4(c)(iii) of the Policy.
The disputed domain name was registered and is being used in bad faith. The intensive use and notoriety of the mark BAILLIE GIFFORD, and the fact that the disputed domain name is a clear typosquatting case, leads to consider the registration and use in bad faith. It constitutes an attempt to play off the Complainant’s famous trademark in order to mislead users by deceiving them as to the true origin of the website content associated with the disputed domain name. In addition, the Respondent has apparently used the disputed domain name in an attempt to obtain commercial gain by redirecting Internet users seeking the Complainant’s website to sponsored pay-per-click links, which is evidence of bad faith under paragraph 4(b)(iv) of the Policy. Furthermore, before filing the Complaint, the Complainant’s solicitors contacted the Respondent seeking an amicable solution and the transfer of the disputed domain name, but there was no reply despite a further reminder.
It is further remarkable that the Respondent has been subject to multiple findings of domain names bad faith registration in earlier UDRP decisions showing a pattern of conduct, which reveals bad faith pursuant to paragraph 4(b)(ii) of the Policy. At least 38 UDRP cases where the disputed domain name was transferred to the complainant, including at least 13 cases involving demonstrable typosquatting related to other well-known trademarks, using Domain by Proxy privacy service in 24 cases. In the instant case, the Respondent equally used Domain by Proxy privacy service to avoid reveling her identity, which confirms the pattern of conduct of bad faith registration.
The Complainant has cited various previous decisions under the Policy that it considers to be supportive of its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute. The Panel, following the definitions included in the Rules, considers the Respondent to be the holder of the disputed domain name.
Paragraph 15(a) of the Rules provides that “A Panel shall 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”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties.
Regarding the confusing similarity test, it is important to note that in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, a domain name consisting of a common, obvious, or intentional misspelling of a trademark (containing sufficiently recognizable aspects of that mark), is considered confusingly similar to the relevant mark for the purposes of the first element, and employing a misspelling in this way normally signals an intention to confuse users seeking or expecting the complainant. See sections 1.7 and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test, irrespective of its particular ordinary meaning, although said meaning may be relevant to the assessment of the second and third elements. See section 1.11, WIPO Overview 3.0.
The Complainant indisputably has rights in the registered mark BAILLIE GIFFORD. The disputed domain name incorporates the mark BAILLIE GIFFORD almost in its entirety removing the first letter “i” (“balliegifford” instead of “bailliegifford”), which may be considered a common misspelling not avoiding the direct perception of the mark. The Complainant’s mark BAILLIE GIFFORD is recognizable in the disputed domain name, and the gTLD (“.com”) is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within Respondent´s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant has alleged that to the best of its knowledge the Respondent is not commonly known by the disputed domain name. Additionally, the Complainant has asserted that the Respondent is not licensee nor have her been otherwise authorized to use the trademark BAILLIE GIFFORD, being the Complainant the sole rightful owner of this mark, which is quite unique as it was formed with the family names of the Complainant’s founders.
Furthermore, as the Compliant has asserted the disputed domain name resolves to a parked page comprising pay-per-click links belonging to third parties, some related to the Complainant’s sector, which suggests an attempt to use a name materially identical to the mark in an effort to divert customers to alternative businesses for commercial gain.
This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name. However, the Respondent has neither replied to the Complainant’s cease and desist letter nor to the Complaint, not providing any explanation and evidence of rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A core factor in assessing fair use of a domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark almost in its entirety with a sole common misspelling (removing the first letter “i”). The Panel considers that this common misspelling points to an intention to confuse Internet users seeking for or expecting the Complainant, as corroborates the website content linked to the disputed domain name, which includes, among others, pay-per-click links to third parties’ websites in the same Complainant’s financial sector. Therefore, the Panel considers that there is a high risk of implied affiliation and confusion.
The Panel further considers that the use of the disputed domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering of goods or services. Such links are partially referring to the Complainant’s business (asset management and financial services industry) redirecting to competitors’ websites offering competing services, and, therefore, competing with and capitalizing the reputation and goodwill of the Complainant’s mark, as well as potentially misleading Internet users. See section 2.9WIPO Overview 3.0.
The Panel further notes the extensive presence over the Internet of the trademark BAILLIE GIFFORD and its extensive use and notoriety in the asset management and financial services business, which, by its nature, is an international business. The Panel has verified that the Complainant operates in various markets around the globe, including some Central and South America’s countries in the same area where the Respondent is located.
It is further remarkable the Respondent’s deliberately choosing not to reply the Complaint and the Complainant’s communications, not providing any explanation connected to the above-mentioned circumstances (included in paragraph 4(c) of the Policy) or any other that may be considered as a fair use or legitimate interests in the disputed domain name.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all this case cumulative facts and circumstances point to consider that the Respondent lacks of any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
At the time of the disputed domain name’s registration, this Panel considers it unlikely that the Respondent did not know about BAILLIE GIFFORD mark, and did not have it in mind. Several factors in this case lead to this conclusion. Particularly, the nature of the disputed domain as a common misspelling of the mark BAILLIE GIFFORD, and the extensive use and promotion, as well as the extensive presence of this mark over the Internet, which leads to conclude that it is notorious in the asset management and financial services sector internationally.
The Panel further considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name: (i) the disputed domain name incorporates the Complainant’s trademark BAILLIE GIFFORD almost in its entirety, introducing a common misspelling (removing its first letter “i”), which intrinsically creates a likelihood of confusion and affiliation; (ii) the Complainant’s trademark is notorious in its sector, and the Complainant operates internationally, including some Central and South America’s countries in the same area where the Respondent is located; (iii) the disputed domain name has been used to host a parked page comprising pay-per-click links partially belonging to competitors in the same Complainant’s business; (iv) the website linked to the disputed domain name further offers its selling; (v) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name, deliberately choosing not to reply to the Complaint and to the prior Complainant’s communications; (vi) the Respondent used Domain by Proxy privacy service to avoid reveling her identity in the disputed domain name’s registration; and (vii) the Respondent has been subject to multiple findings of domain names bad faith registrations under the Policy (38 cases, including 13 cases involving typosquatting), which shows a bad faith pattern of conduct.
All these circumstances lead the Panel to conclude that the Respondent registered the disputed domain name targeting the Complainant’s notorious trademark with the intention to attract Internet users to its website for a commercial gain or any other sort of benefit derived from the links included in the website associated to the disputed domain name, under a pay-per-click system. It is further possible that the Respondent had a second intention related to the potential transfer of the disputed domain name to the Complainant or to a third party, for a value exceeding the out-of-pocket costs directly related to its registration.
It is important to note that the Respondent cannot deny responsibility for the content that appears on the website linked to the disputed domain name. The fact that such content or any links included in the disputed domain name have been generated by a third party, such as a registrar, or that the Respondent has not directly benefited, is not sufficient to prevent a declaration of bad faith. See section 3.5, WIPO Overview 3.0.
All the above-mentioned leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith, targeting the Complainant’s trademark and creating a likelihood of confusion with the Complainant and its mark to misleadingly attract Internet users, disrupting the Complainant’s business. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of the Policy.
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 <balliegifford.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: July 24, 2019
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