WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

HedgeServ Holding L.P. v. Alicia Slaney

Case No. D2020-1688

1. The Parties

The Complainant is HedgeServ Holding L.P., United States of America (“United States”), represented by Latham & Watkins LLP, United States.

The Respondent is Alicia Slaney, Ecuador.

2. The Domain Name and Registrar

The disputed domain name <hedgesevr.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2020. On June 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 29, 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 July 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2020.

The Center appointed Jeremy Speres as the sole panelist in this matter on August 26, 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 has since 2008 offered financial services, including risk analytics, fund accounting, and regulatory and tax advice, to clients around the globe under its HEDGESERV trade mark (“the trade mark”). The Complainant has a sizeable clientele, servicing more than USD 350 billion in assets and has offices in the United States, Ireland, Australia, Luxembourg, Cayman Islands, Bulgaria, and Poland.

The Complainant owns United States trade mark reg. no. 3951193 HEDGESERV (word), registered on April 26, 2011, and European Union Trade Mark reg. no. 008212359 HEDGESERV (word and device), registered on January 28, 2010, in classes 35, 36, and 42. The Complainant’s primary domain name for its corporate website is <hedgeserv.com>, and it owns numerous other domain names incorporating, or highly similar to, the trade mark in various Top-Level Domains (“TLDs”).

The Domain Name was registered on June 12, 2020, and as at the drafting of this Decision, did not resolve.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows. The Domain Name minus the TLD is confusingly similar to the trade mark given that it wholly consists of the trade mark with its final two letters transposed.

The Respondent has no rights or legitimate interests in the Domain Name because: the trade mark is distinctive and can only identify the Complainant; the Complainant did not authorise the Domain Name which redirected users to the Complainant’s website, falsely suggesting an affiliation with the Complainant.

The Domain Name has been used and registered in bad faith because: the Domain Name constitutes typosquatting; there is no justification for the Domain Name that can only refer to the Complainant; the Respondent had actual knowledge of the trade mark given the aforementioned redirection, which also creates the impression of an association between the Parties; the Respondent simultaneously registered two further typosquatting domain names; and the Respondent has taken steps necessary to send and receive email using the Domain Name with the intention of running a phishing campaign impersonating the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Domain Name minus the TLD, “hedgesevr”, is confusingly similar to the Complainant’s registered trade mark, HEDGESERV. It is well established that transposing two letters in a trade mark is typosquatting for which UDRP panels readily find confusing similarity. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of proof shifts to the respondent (see section 2.1 of the WIPO Overview 3.0). Here, the Complainant has made out a prima facie case which the Respondent has failed to rebut. There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy pertain.

The only evidence of use of the Domain Name, a typo of the Complainant’s mark, is that of redirection to the Complainant’s website, which does not in the circumstances of this case – notably the fact that the parties are not related in any way, and potential use for fraud – confer rights or legitimate interests on the Respondent (MySpace, Inc. v. Mari Gomez, WIPO Case No. D2007-1231; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533).

UDRP panels may undertake limited factual research into matters of public record (WIPO Overview 3.0 at section 4.8). The Internet Archive (for example) contains no evidence of use of the Domain Name that might otherwise confer rights or legitimate interests upon the Respondent.

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

C. Registered and Used in Bad Faith

The Domain Name wholly consists of an obvious misspelling of the Complainant’s registered and known trade mark. The redirection of the Domain Name to the Complainant’s website establishes actual knowledge and targeting of the Complainant and an intention to create a likelihood of confusion (PayPal Inc. v. Jon Shanks, WIPO Case No. D2014-0888). See also WIPO Overview 3.0, section 3.1.4: Panels have based a finding of bad faith use on “(v) redirecting the domain name to the complainant’s […] website”.

This speaks to bad faith use, and the totality of facts makes it clear that the Respondent targeted the Complainant upon registration. The evidence confirms the redirection as at June 17, 2020, a mere five days after registration. The Respondent listed an improbable address of the Canadian Embassy in Ecuador. The Respondent has not replied in circumstances where an explanation is certainly called for.

Most telling is the evidence of the Respondent having registered two other domain names impersonating other financial services firms. The Panel has independently detected a third, <kps-fund.com>, using a publicly accessible reverse WhoIs facility. The very same registrant details are used for ostensibly impersonating another financial services firm. The only explanation for this pattern is intentional targeting of trade marks to take advantage of user confusion.

The potential for fraud is self-evident, and the Complainant has presented evidence that the Domain Name has been configured with MX DNS records enabling use for email and possibly email phishing (W.W. Grainger, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Daniel Thomas, WIPO Case No. D2020-1740).

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 Domain Name, <hedgesevr.com>, be transferred to the Complainant.

Jeremy Speres
Sole Panelist
Date: September 10, 2020