Complainant is Massachusetts Financial Services Company, United States of America (“United States”) (hereinafter “Complainant”), represented by Mintz Levin Cohn Ferris Glovsky and Popeo, PC, United States.
Respondent is WhoisGuard, Inc., Panama / Michael Anderson, Como, United States (hereinafter “Respondent”).
The disputed domain name <mfs.fund> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2020. On September 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 28, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 30, 2020 (hereinafter the “Complaint”).
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on October 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 27, 2020.
The Center appointed M. Scott Donahey as the sole panelist in this matter on November 2, 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.
In 1924, Complainant established the first mutual fund in the United States. Complainant has been generally known as “MFS” since at least 1969, and Complainant uses that acronym as both a trade name and service mark. Complainant uses the MFS service mark extensively in its global business as its trade name and in connection with its financial services products. As of August 31, 2020, MFS manages more than USD 557 billion in client assets.
Complainant has several trademarks that include MFS, including one consisting of MFS alone that was registered with the United States Patent and Trademark Office (“USPTO”) on April 5, 1983, registration no. 1233922. Complaint, Annex 4. Complainant is also the registrant of the domain name <mfs.com>, which Complainant registered on July 23, 1994. Complaint, Annex 5.
The disputed domain name was registered on November 15, 2019. The disputed domain name resolves to a website very similar to that of Complainant’s website. Much of the language on the website is identical to that on Complainant’s website to which Complainant’s domain name resolves. In fact, the “Our History” web page on the website to which the disputed domain name resolves sets out facts identical to the facts of Complainant’s history. The website to which the disputed domain name resolves states that MFS Trade has USD 448.7 billion in assets under management, but in fact it is Complainant that has that level of assets under management as of 2017.
The website to which the disputed domain name resolves gives contact information for the company MFS Trade that is in fact the address of Complainant. Complaint, Annex 6.
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s registered trademarks. Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. Finally, Complainant alleges that the disputed domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
“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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
The disputed domain name consists of the registered trademark of Complainant appended to the generic Top-Level Domain (“gTLD”) “.fund”. Disregarding the gTLD, the Panel finds that the disputed domain name reproduces Complainant’s trademark in its entirety. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. Accordingly, the Panel finds that the disputed domain name is identical to Complainant’s MFS mark.
While the overall burden of proof in UDRP proceedings is on the complainant, previous UDRP 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name, which consists entirely of Complainant’s registered trademark and the gTLD “.fund”, a word that is closely connected with Complainant’s business, resolves to a website that is confusingly similar to Complainant’s website, including the use of Complainant’s history and its current address as that of the “business” operating the website to which the disputed domain name resolves. Such composition and use creates a high risk of implied affiliation with Complaint, and is indicative of bad faith registration and use targeting Complainant and Complainant’s trademark. Accordingly, the Panel has no difficulty in finding that the disputed domain name has been registered and is being used in bad faith.
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, <mfs.fund>, be transferred to Complainant.
M. Scott Donahey
Date: November 5, 2020
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