WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Quilter plc v. Toby Price and Magdalena Jennifer
Case No. D2019-3044
1. The Parties
The Complainant is Quilter plc, United Kingdom, represented by Allen & Overy LLP, United Kingdom (“UK”).
The Respondents are Toby Price, Spain, and Magdalena Jennifer, Philippines.
2. The Domain Names and Registrar
The disputed domain names <quilterinvest.com> and <quilterinvestor.com> (the “Domain Names”) are registered with Shinjiru Technology Sdn Bhd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2019. On December 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 11, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 11, 2019, 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 December 17, 2019.
The Center verified that the Complaint, together with the amended 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 December 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2020.
The Center appointed Karen Fong as the sole panelist in this matter on January 15, 2020. 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 is a leading provider of advice, investments and wealth management in the UK and internationally. As at September 30, 2019, it managed GBP 118.7 billion of investments on behalf of over 900,000 customers. The Quilter group of companies operates principally in two main segments: Advice & Wealth Management and Wealth Platforms. Within these two segments there are different business units including Quilter Cheviot and Quilter Investors with these business units running discretionary investment management and multi-asset asset investor management respectively. Quilter Investors managed more than GBP 20 billion for its investors as of June 30, 2019. The Complainant, Quilter plc, is the ultimate beneficial owner of Quilter Cheviot Limited and Quilter Business Services Limited.
Quilter plc is a group company name adopted in March 2018 by Old Mutual Wealth Management Limited. The rebrand was announced in November 2017. The company and its subsidiaries have rebranded and are rebranding the majority of their services to incorporate the name QUILTER.
The Complainant owns over 100 registered trade marks including the word “quilter” in at least 76 countries. These include the following:
1. United States Trade Mark Registration number 1440473 for QUILTER in class 36 applied for on May 3, 2018;
2. Malaysian Trade Mark Registration number 2018060356 for QUILTER in classes 9 and 36 applied for on May 8, 2018; registration date May 18, 2019;
3. European Union (“EU”) Trade Mark Registration number 017069337 for QUILTER 9, 16, 35, 36, 38, and 41 applied for on August 3, 2017;
4. EU Trade Mark Registration number 008461295 for QUILTER in class 36 applied for on July 30, 2009;
(the “Trade Mark”).
The Complainant and its group of companies own and operate various domain names incorporating the Trade Mark. The websites of the Complainant and its group include “www.quiltercheviot.com” and “www.quilterinvestors.com”.
The Domain Names were both registered on October 3, 2019, in the name of two privacy protection companies. The underlying registrant of <quilterinvest.com> is Toby Price (Respondent 1) and that of <quilterinvestor.com> is Magdalena Jennifer (Respondent 2). Both Domain Names resolve to blank index pages.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Names are identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names, both of which it believes are related and under management and control of a single, unknown owner/registrant.
The basis of its belief that the registrants are related and under management and control of a single unknown owner/registrant are as follows:
(1) The Domain Names are both registered to the Registrar.
(2) The Domain Names use the same servers.
(3) The IP address hosting both Domain Names are identical with the location of the IP address for both Domain Names in the exact same place in Kuala Lumpur, Malaysia.
(4) When the Complainant’s representatives attempted to call the phone numbers provided by the Registrar for the Respondents, the person answering the phone in respect of Respondent 1, Toby Price, stated that there was no Toby Price there whilst the number provided for Respondent 2, Jennifer Magdalena, could not be reached, strongly indicating that neither persons exist.
(5) The Domain Name <quilterinvest.com> is the subject of a warning on the website of the Financial Conduct Authority (FCA) as a clone of the Complainant’s website.
(6) Respondent 2, Toby Price is the registrant of the domain name <quiltercheviotim.co.uk>. This domain name has been used in a phishing exercise via email addresses linked to the domain name purporting to be from a director of the Complainant being sent to solicit personal details and financial information from customers.
(7) The Domain Names are being used or likely to be used as part of a phishing operation which has the potential harm to cause considerable harm to the general public and damage the Complainant’s reputation.
(8) Both registrants are shielding and concealing their identities behind privacy protection services.
(9) The Domain Names incorporate the Trade Mark.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names were registered and being used in bad faith.
B. Preliminary Procedural Issue - Consolidation of Proceedings
The preliminary issue to be determined is whether the Complainant is entitled to bring a consolidated complaint against the two Respondents, or whether it is necessary for the Complainant to bring individual complaints against the individual Respondent.
Paragraph 5(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules, provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
In relation to the position of a complaint being filed against multiple respondents, Section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that in such cases, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
UDRP panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).
The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,
WIPO Case No. D2010-0281, after reviewing the relevant UDRP decisions in relation to consolidation in multiple respondents took the view that the administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, the Complainant submits that the Domain Names are subject to common control as both Domain Names are linked to an illegal phishing operation using the Domain Names as email addresses to solicit personal details and financial information from customers.
The evidence submitted points to the fact that the Domain Names are subject of common control. Each of the Domain Names incorporates the Trade Mark in its entirety. There is strong evidence that one of the Respondents has used another domain name owned by him in relation to phishing activities. The Panel also accepts the rest of the Complainant’s submissions. All of them point to the Complainant being the target of common conduct based on the registration and use of the Domain Names and that such conduct interferes with the Trade Marks. Furthermore, the Complainant’s claims against the Domain Names involve common questions of law and fact.
The Respondents had the opportunity but did not respond to the Complaint. Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all the Parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
In light of the above, the Respondents may be referred to collectively as the Respondent hereafter.
Accordingly the Panel determines that this Complaint consisting of multiple Respondents should, for the reasons discussed above, be permitted to be consolidated into a single Complaint for the purpose of the present proceedings under the Policy. The Respondent has not chosen to file a response and consequently there are no submissions to be taken into account on the procedural issues.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Names contain the Complainant’s distinctive Trade Mark in its entirety and one with the descriptive word “investor” and the other with “invest” as its suffix. The addition of these terms do not negate the confusing similarity. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org,
WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service,
WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic,
WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”), which in this case is “.com”. It is viewed as a standard registration requirement.
The Panel finds that the Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that the Respondent is not commonly known by the Domain Names and is not in any way connected or affiliated with the Complainant. The Respondent has not been authorized by the Complainant to make any use of the Trade Mark. The Respondent cannot assert that it was using or had made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. The use of a third party’s trade mark in a domain name in connection with a phishing or fraud scheme cannot be considered a bona fide offering of goods or services as it is clearly a case where a respondent is seeking to defraud others by relying on the trade mark.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any arguments to rebut the allegations of fraud. The use of a domain name to perpetrate fraud against third parties cannot ever confer rights or legitimate interests under this element. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names. There is documentary evidence that the Respondent has used domain names bearing the Trade Mark to attempt to defraud third parties by purporting that email communications originate from the Complainant. Further both Domain Names include terms describing the Complainant’s main business activity i.e. “invest”, “investor”. It is implausible that it was unaware of the Complainant when it registered the Domain Names.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with the fact that the Domain Names are seemingly being used as an instrument of fraud nor any explanation for the Respondent’s choice of the Domain Names are also significant factors to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Domain Names are also used in bad faith. The Domain Names are used and/or highly likely to be used as email addresses to perpetrate fraud. This amounts to using the Domain Names to intentionally attract for commercial gain, Internet users to an online location by creating a likelihood of confusion with the Complainant as the source, sponsorship, affiliation or endorsement of the website is bad faith in accordance with paragraph 4(b)(iv) of the Policy
From the above, the Panel finds that the Respondent has registered and used the Domain Names in bad faith and the Complainant has succeeded in proving the third element.
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 Domain Names <quilterinvest.com> and <quilterinvestor.com> be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: February 7, 2020
