The Complainant is VG Asset Management Limited, Hong Kong, China, represented by Squire Patton Boggs (US) LLP, United States of America.
The Respondent is Josef Salminger, JS IT Services, China.
The disputed domain name <vgassetmanagementhk.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2020. On June 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 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 June 24, 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 June 26, 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 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2020.
The Center appointed 陈长杰 Jacob (Changjie) Chen as the sole panelist in this matter on August 4, 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.
The Complainant VG Asset Management Limited, was incorporated in China on July 6, 2018. On March 11, 2019, the Complainant obtained a license granted by the Hong Kong Securities and Futures Commission to conduct advising on Securities and Asset Management related business in Hong Kong and elsewhere. The Complainant claims that its business operation covers investment advisory, real estate equity, real estate credit, and private equity investment, and has operated the business under the mark of VG Asset Management Limited since its incorporation.
According to the information disclosed by the Registrar, the Respondent is Josef Salminger, JS IT Services, located in Hong Kong, China.
The disputed domain name is <vgassetmanagementhk.com>, registered on April 23, 2019. The disputed domain name resolves to a website displaying “VG Asset Management Limited” and showing financial news and information of the company.
The Complainant contends that the disputed domain name is confusingly similar to its VG ASSETMANAGEMENT LIMITED mark.
The Complainant further contends that it has not authorized the Respondent to use its VG ASSETMANAGEMENT LIMITED mark or register any domain name incorporating the VG ASSETMANAGEMENT LIMITED mark. To the best of the Complainant’s knowledge, the Respondent does not have any other basis to claim rights to the VGAM’s mark.
The Complainant finally contends that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
In this case, preliminary issue is whether the Complainant has protectable rights in the mark to which it contends the disputed domain name is confusingly similar.
The Complainant has not registered the name VG ASSET MANAGEMENT LIMITED as a trademark, therefore, the Panel needs to consider: (i) whether the Policy applies to unregistered trademarks and (ii) whether the mark at issue has acquired unregistered trademark rights through use and promotion.
With regard to the first question, the Policy and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), refer to a “trademark or service mark” in which the complainant has rights, and do not limit the application of the Policy to a registered trademark or service mark. It is therefore open to conclude that the Policy is applicable to unregistered trademarks and service marks. Thus, the Panel is of the opinion that though the Complainant has not registered trademark or service mark for VG ASSET MANAGEMENT LIMITED, it has established trademark or service mark rights in that name for the purpose of the Rules. A fundamental principle of trademark law is that rights in a trademark can be acquired through use, even though the trademark may not be registered. See Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322; see also Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058.
With regard to the second question, the Panel notices that unregistered trademark rights could exist when the Complainant could prove that through its use, it has acquired enough goodwill and reputation in and to a mark and sufficiently associated with the mark, no matter how strong or weak those trademark and service mark rights may be. See Action Sports Videos v. Jeff Reynolds, WIPO Case No. D2001-1239.
In this case, the Complainant provided its Certificate of Incorporation, LICENCE UNDER THE SECURITIES AND FUTURES ORDINANCE, CAP.571 to prove its prior use and legitimate interests on the mark VG ASSET MANAGEMENT LIMITED. The Panel noticed that the Certificate of Incorporation and the LICENCE were respectively issued by two Hong Kong official Authorities, Registrar of Companies Hong Kong Special Administrative Region and SECURITY AND FUTURES COMMISSION, thus, the Panel acknowledges the authenticity and reliability of the evidence. The Complainant acquired its Certificate of Incorporation on July 6, 2018, and its LICENCE on March 11, 2019, predating the registration date of the disputed domain name (April 23, 2019). Given the Respondent’s failure to submit a response, the Panel is of the opinion that the Complainant’s use of the mark VG ASSET MANAGEMENT LIMITED earlier than the registration of the disputed domain name. Further, according to the Complainant’s business presentation for its business schedule and development plan, the Panel views that the Complainant has been using the mark VG ASSET MANAGEMENT LIMITED to operate its business in connection with the financial, asset management and investment advisory services, which can prove the Complainant’s goodwill in offering financial services. See UITGERVERIJ CRUX v. W. FREDERIC ISLER, WIPO Case No. D2000-0575.
The Panel therefore accepts that the Complainant holds rights in the unregistered trademark VG ASSET MANAGEMENT LIMITED. See Roper Industries, Inc. v. VistaPrint Technologies Ltd., WIPO Case No. D2014-1828.
It is well established that the generic Top-Level Domain (“gTLD”) suffix “.com” as a standard registration requirement is disregarded in the assessment of the confusing similarity between the disputed domain name and the Complainant’s trademark.
The disputed domain name incorporates the recognizable part “VG ASSET MANAGEMENT LIMITED” of the Complainant’s unregistered trademark in its entirety. The substitution of the word “limited” with the letters “hk” does not prevent a finding of confusing similarity between the Complainant’s unregistered trademark and the disputed domain name. See Roper Industries, Inc. v. VistaPrint Technologies Ltd., supra.
Therefore, the Panel concludes that the disputed domain name <vgassetmanagementhk.com> is confusingly similar to the Complainant’s unregistered trademark VG ASSET MANAGEMENT LIMITED.
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The burden of production is hence shifted to the Respondent to rebut the Complainant’s contentions. In this case, the Respondent’s failure to submit a response to rebut the Complainant’s prima facie case is deemed to have satisfied paragraph 4(a)(ii) of the Policy according to the WIPO Overview 3.0, section 2.1.
Furthermore, the Panel notes that the disputed domain name resolves to a website displaying the Complainant’s VG ASSET MANAGEMENT LIMITED mark and sharing financial news that can link to other financial news websites. The Panel views that the Respondent’s use of the disputed domain name cannot be considered as legitimate noncommercial or fair use of the disputed domain name or using the disputed domain name in connection with a bona fide offering of goods or services.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel notes that the disputed domain name was registered on April 23, 2019, later than the date that the Complainant started to use the VG ASSET MANAGEMENT LIMITED mark. The disputed domain name resolves to a website displaying the Complainant’s VG ASSET MANAGEMENT LIMITED mark and showing financial information that closely relates to the Complainant’s business. Moreover, the Complainant and the Respondent are both located in Hong Kong, China, thus the Panel holds that the Respondent must have been aware of the Complainant and its VG ASSET MANAGEMENT LIMITED mark and/or services at the time of registering the disputed domain name. Without any rights or legitimate interests, the Respondent’s registration of the disputed domain name is indicative of bad faith.
The Panel further observes that at the “About” and “Careers” sections and the copyright statement of the website associated with the disputed domain name, the Respondent claims itself as VG Asset Management Limited, which could cause confusion to Internet users. While according to the Complainant’s evidence, the Respondent’s use of the disputed domain name has caused actual confusion to a manager at Hong Kong Securities and Future Exchange. Thus, the Panel views that the Respondent has the intention to attract, for commercial gain, Internet users to the associated website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its websites or location or of products and services. See Barclays Bank PLC v. PrivacyProtect.org / Sylvia Paras, WIPO Case No. D2011-2011. Thus, the bad faith evident in the use of the disputed domain name can be established under 4(b)(iv) of the Policy.
For the reasons above, the Panel concludes that the disputed domain name was 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 <vgassetmanagementhk.com> be transferred to the Complainant.
Jacob (Changjie) Chen
Sole Panelist
Date: August 27, 2020