WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Schroders plc v. Reserved for Customers, MustNeed.com
Case No. D2020-1837
1. The Parties
The Complainant is Schroders plc, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Reserved for Customers, MustNeed.com, China.
2. The Domain Name and Registrar
The disputed domain name <schroder.com> is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2020. On July 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 2020, 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 July 17, 2020 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 July 17, 2020.
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 July 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2020.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 17, 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 provided investment and asset management since 1804 under the Schroders name. As of December 31, 2020, the Complainant has been responsible for GBP 500,200,000,000 of assets on behalf of clients, including managing pension funds, insurance companies, sovereign wealth funds and financial advisers. Operating locations in 34 countries across Europe, the Americas, Asia, the Middle East and Africa, the Complainant has offered a range of asset classes, including equities, fixed income, multi-asset, private assets and alternatives. In 2019, the Complainant earned over GBP 701,000,000 in profits. The Complainant has received numerous industry awards, including Financial News’ Asset Manager of the Year in 2019, Investment Week’s Global Group of the Year and Investment Europe’s Group of the Year.
The Complainant owns many trademark registrations for the SCHRODER and SCHRODERS trademarks, including the following:
International Trademark Registration No. 755860 for SCHRODER registered on December 6, 2000;
United Kingdom Trademark Registration No. UK00002255234 for SCHRODER registered on July 28, 2001;
United States of America Trademark Registration No. 2,495,598 for SCHRODER registered on October 9, 2001;
European Union Trade Mark Registration No. 002007615 for SCHRODER registered on March 4, 2002;
Taiwan Province of China Trademark Registration No. 00128271 for SCHRODERS registered on September 1, 2000;
Taiwan Province of China Trademark Registration No. 00138407 for SCHRODERS registered on February 16, 2001; and
Taiwan Province of China Trademark Registration No. 00185429 for SCHRODER registered on August 16, 2003.
The Complainant owns several domain name registrations, including <schroders.com>. The associated website recorded 270,000 visits in the six-month period between August 2019 and January 2020.
The disputed domain name <schroder.com> was registered on July 30, 2002 and at the time the Complaint was filed the disputed domain name reverted to a website which featured links to third party websites of competitors of the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered trademarks. The Complainant owns many registrations for the SCHRODER and SCHRODERS trademarks. The disputed domain name is identical to the registered trademark SCHRODER and the addition of the Top-Level Domain (“TLD”) designation does not distinguish the disputed domain name from the registered SCHRODER and SCHRODERS trademarks.
The Respondent is not commonly known by the disputed domain name. The Respondent was not authorized, licensed or permitted to use the Complainant’s registered SCHRODER and/or SCHRODERS trademarks. The Complainant submits that the Respondent has not used the disputed domain name in association with a bona fide offering of goods and/or services. The Respondent has used the disputed domain name in association with a website which features links to third party websites which are competitors of the Complainant for purposes of monetary gain. Accordingly, the Respondent does not have rights or legitimate interests in the disputed domain name.
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. The Complainant’s registered trademarks are well-known around the world, including in Taiwan Province of China where the Respondent resides. The Respondent chose to register the confusingly similar disputed domain name and has used the disputed domain name in association with a website that features links to third party websites of competitors of the Complainant for purposes of monetary gain. The Respondent has been named in many UDRP disputes revealing a history and pattern of registering domain names in bad faith. The Respondent did not respond to the Complainant’s cease and desist letter. Therefore the Complainant submits that the Respondent has registered and used the disputed domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(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 Panel finds the Complainant does have registered rights in the trademarks SCHRODER and SCHRODERS.
The Panel finds that the disputed domain name <schroder.com> is identical to the Complainant’s trademark as the disputed domain name incorporates the entire SCHRODER trademark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not serve to prevent a finding of identity between the disputed domain name and the Complainant’s registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As the Complaint states, useful commentary on the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights or legitimate interests. The Complainant clearly owns rights in the SCHRODER and SCHRODERS trademarks as noted in section 4 of this Decision. The Panel acknowledges that the Complainant’s SCHRODER and SCHRODERS trademarks are well-known and accordingly it is unlikely that the Respondent was unaware of the Complainant’s trademark rights when he registered the disputed domain name.
In the circumstances of this case, the composition of the disputed domain name, incorporating the entirety of the Complainant’s trademark, without any further explanation by the Respondent, coupled with its use, reveals an intention to capitalize on the Complainant’s goodwill and reputation. See WIPO Overview 3.0, sections 2.5.1 and 2.5.3. The Respondent’s use of a disputed domain name identical to the Complainant’s trademark in association with a website which features links to third party websites of competitors of the Complainant is not a bona fide use of the disputed domain name under the Policy.
As a result, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent did not respond to the Complainant.
Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent registered the disputed domain name, which incorporates the Complainant’s well-known SCHRODER trademark in its entirety, in order to divert Internet users seeking the Complainant’s website to the Respondent’s website, which features links to websites of third parties who are competitors of the Complainant for purposes of monetary gain. The Panel considers this conduct evidence of the registration and use of the disputed domain name in bad faith.
In addition, while it may be that the Respondent could be acting as a proxy for the registration of domain names on behalf of third parties, the Panel notes that there is no communication by the Respondent explaining or disclosing the circumstances of the registration of the disputed domain name (nor the identity of any potential underlying registrant). The Respondent has a history of being a named Respondent in UDRP complaints and the Panel acknowledges that the Respondent has engaged in a pattern of bad faith registrations in over fifteen prior panel decisions. The Respondent also failed to respond to the Complainant’s cease and desist letter in this matter.
The Panel finds there is sufficient evidence of bad faith under the Policy, particularly in the absence of any response or explanation on the part of the Respondent.
The Complainant has therefore satisfied the requirements under 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 <schroder.com> be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Date: August 26, 2020
