WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Man Group plc v. Vasily Kotov (Василий Котов)

Case No. D2020-1116

1. The Parties

The Complainant is Man Group plc, United Kingdom, represented by Dehns, United Kingdom.

The Respondent is Vasily Kotov (Василий Котов), Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <numeric.fund> 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 May 5, 2020. On May 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2020, 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 Respondent of the Complaint, and the proceedings commenced on May 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2020.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on June 3, 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 an investment management company originally founded in 1783 as a sugar cooperage and brokerage in London, presently managing USD 104.2 billion in funds. In 2014, the Complainant acquired Numeric Holdings LLC, a United States of America (“USA”) company, which had been offering financial services since 1989. The Complainant is the owner, amongst others, of the following trademark registration (Annexes 5 and 6 to the Complaint):

- UK Trade Mark registration No. 0000331870 for M MAN NUMERIC & device registered on September 28, 2018, in class 36.

The disputed domain name <numeric.fund> was registered on April 9, 2020, and has been used in connection with a webpage reproducing the Complainant’s trademarks and official website layout (Annex 7 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant asserts to be a globally renowned active investment management company that provides a range of funds for private and institutional clients, making it one of the world’s largest publicly traded hedge fund companies. The Complainant further asserts to manage USD 26.9 billion in assets for its global clients under the M MAN NUMERIC trademark which has acquired significant goodwill and worldwide reputation in connection with financial and investment services.

The disputed domain name, under the Complainant’s view, is confusingly similar to its trademarks, not being the Top-Level Domain (“TLD”) to be taken into consideration since it is not sufficient to render the disputed domain name dissimilar to the Complainant’s trademark.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that the disputed domain name was used in connection with an almost identical copy of the Complainant’s website presumably used for fraudulent purposes to deceive the Complainant’s clients. In addition to that, the Complainant indicates that there is no evidence that the Respondent has been commonly known by the disputed domain name or that the Respondent has used or intended to use the disputed domain name in connection with a legitimate noncommercial or fair use of the disputed domain name.

The Complainant further contends that the Respondent registered the disputed domain name evidently aware of the Complainant in view of the reproduction of the Complainant’s trademark and layout of the Complainant’s official website, intentionally attempting to attract for commercial gain Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks as to source, sponsorship, affiliation or endorsement of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

(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.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established its rights in the M MAN NUMERIC trademarks duly registered (Annexes 5 and 6 to the Complaint).

The Panel finds that the disputed domain name <numeric.fund> reproduces a relevant part of the Complainant’s mark which is recognizable, being the “.fund” TLD disregarded for the purposes of the analysis of the confusing similarity test under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within 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 further notes that, while not a replacement for the side-by-side comparison, the broader case context also supports a finding of confusing similarity with the Complainant’s trademark (as it appears from the content of the website that the Respondent registered the disputed domain name precisely because it believed that the disputed domain name was confusingly similar to a trademark held by the Complainant).

For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice 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 (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark 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 or to tarnish the trademark or service mark at issue.

As the evidence submitted clearly indicates (Annex 7 to the Complaint), the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name given that the disputed domain name has been used in connection with an unauthorized reproduction of the Complainant’s logo and a website designed to appear as an official website of the Complainant in a potential attempt to obtain sensitive data from the Complainant’s customers. The burden of production has therefore shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.

In that sense, the Complainant indeed states that the Respondent is not known to the Complainant.

Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

This case presents the following circumstances, which indicate bad faith registration and use of the disputed domain name:

i) the disputed domain name was registered on April 9, 2020, which is long after the Complainant was founded and started using its trademark;

ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;

iii) the Respondent evidently was aware of the Complainant and its trademark in view of the contents of the website that resolved from the disputed domain name;

iv) the absence of any reply to the Complaint by the Respondent; and

v) the use of what appears to be a false address, being that the Center was unable to deliver the Written Notice to it.

For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 <numeric.fund> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: June 10, 2020