WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ferox Capital Management Limited v. Ferox Advisors Limited

Case No. D2013-1926

1. The Parties

The Complainant is Ferox Capital Management Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by DWF LLP, United Kingdom.

The Respondent is Ferox Advisors Limited of Kocaeli, Turkey, self-represented.

2. The Domain Name and Registrar

The disputed domain name <feroxadvisors.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2013. On November 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2013. The Response was filed with the Center on December 6, 2013.

The Center appointed Assen Alexiev as the sole panelist in this matter on December 31, 2013. 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 firm, established in 2000 in the United Kingdom.

The Complainant owns the following trademarks (the FEROX trademarks):

- The word trademark FEROX with registration No. UK00002263601, registered on August 10, 2001 for the territory of the United Kingdom for services in International Class 36; and

- The Community word trademark FEROX with registration No. EU005178851, registered on July 2, 2007 for services in International Class 36.

The Respondent is a financial derivatives trading company, established in 2013.

The Respondent registered the disputed domain name on May 11, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it offers investment management services in the United Kingdom, Europe, the Middle East and Asia. According to the Complainant, in July 2013 the Respondent started operating an investment and fund management services business in Europe and the Middle East offering the same services as the Complainant and in the same geographical locations.

The Complainant contends that the dominant element of the disputed domain name is FEROX, and this element is identical to the FEROX trademarks. The Complainant also contends that the “advisors” element of the disputed domain name is descriptive for the services offered by the Respondent and cannot distinguish the disputed domain name from the Complainant`s FEROX trademarks.

The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is in no way connected with the Complainant, and is not licensed by the Complainant to use the disputed domain name or to offer services under the FEROX trademarks.

The Complainant claims to have a significant reputation under the FEROX trademarks in the United Kingdom, Europe, Asia, the Middle East and America. According to the Complainant, the Respondent is misrepresenting itself by using the Complainant`s FEROX trademarks for its own benefit and for commercial gain in order to attract users to the Respondent`s website. The Complainant also submits that the Respondent is creating a likelihood of confusion with the Complainant`s FEROX trademarks as to the source, affiliation and endorsement of its website and the services it offers.

The Complainant further maintains that the Respondent has registered the disputed domain name for the purpose of disrupting Complainant`s business, and attempts to divert business away from the Complainant by causing confusion. Finally, the Complainant submits that due to the small and specialized character of the sector in which the parties operate, the Respondent must have been aware of Complainant`s legal rights in the FEROX trademarks.

B. Respondent

The Respondent describes itself as a financial derivatives trading company based in Dubai, which specializes in managed accounts and focuses on clients primarily in the United States of America (“US”) and the Middle East. The Respondent submits it is based in the Ras Al Khaimah (“RAK”) free trade zone in the United Arab Emirates (“UAE”) for tax purposes.

The Respondent disagrees that the disputed domain name is identical or confusingly similar to the Complainant’s FEROX trademarks. The Respondent submits that it has rights and legitimate interests in the disputed domain name, and that the disputed domain name was neither registered, nor is being used, in bad faith.

The Respondent contends that its name was created in combination with a unique logo of a gray wolf. The Latin word “ferox” was selected as the etymological source of the English words ‘ferocious’ and “fierce”, which characterise the gray wolf, a powerful symbol in Central Asia and the Middle East. The name and the animal logo were chosen to signify the Respondent’s alleged assertiveness in financial trading where animal spirits have traditionally been used as sentimental symbols.

The Respondent states that it was not aware of the existence of the Complainant at the time of the registration of the disputed domain name. The Complainant did not have a trademark registration for FEROX for the territory of the US at the time the disputed domain name was registered. The Respondent points out that the Complainant registered a FEROX trademark for the territory of the US one month after the registration of the domain name, and alleges that the Complainant has not become known in the markets where the Respondent operates – the UAE and the US.

The Respondent also submits that its exclusive focus and strategy of business are different from the Complainant’s – the Respondent focuses on managed accounts and creating customized financial solutions for high net worth clients looking for a specialist approach, as opposed to the more traditional and generalist approach of fund management.

The Respondent denies having registered the disputed domain name in an attempt to exploit the Complainant’s popularity. The Respondent submits that, rather than doing so, it puts the stress on the innovative financial methods and the entrepreneurial spirit of the team personally depicted on the Respondent’s website.

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(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 Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence about the registrations of the FEROX trademarks, registered in the United Kingdom and the European Union, and has thus established its rights in these trademarks.

It is a common practice under the Policy to disregard in appropriate circumstances the generic Top Level Domain (“gTLD”), such as “.com”, for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name here is “feroxadvisors”. This appears as a combination of two separate elements - “ferox” and “advisors”. In the Panel’s view, the “ferox” element dominates in this combination, as the second element is the plural form of a generic word used to describe a profession. As the dominating “ferox” element is identical to the Complainant’s FEROX trademarks, the Panel is satisfied that the disputed domain name is confusingly similar to these trademarks.

Therefore, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Consensus view of WIPO UDRP Panels is that the Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent is not connected to the Complainant and has not been licensed by it to use the disputed domain name or to offer services under the FEROX trademarks. According to the Complainant, the Respondent is not engaged in any activity that could give rise to rights or legitimate interests in the disputed domain name, but rather attempts to exploit the reputation of the Complainant`s FEROX trademarks for its own benefit and for commercial gain and to divert business away from the Complainant by causing confusion among Internet users.

The Respondent denies the contentions of the Complainant, and explains the marketing idea that stands behind its choice of the name “Ferox Advisors” in combination with a logo depicting a gray wolf. According to the Respondent, the message sent to consumers is different from that of the Complainant, so the two parties cannot be confused by Internet users. In support of its statements, the Respondent refers to the design and content of the website associated to the disputed domain name. The Respondent also asserts that it is operating in different geographical regions of the world from those of the Complainant.

Having analysed the submissions of the parties, the Panel has reached the following conclusions:

The Complainant did not have a trademark registration for FEROX in the US prior to the registration of the disputed domain name, and has not referred to any FEROX trademark registrations in the Middle East. The Complainant has contended that it is a well-known investment management firm in the markets where the Respondent operates, but has not provided any evidence in support of this contention or of its activities and reputation in any part of the world. In the absence of such evidence, or of evidence that the Respondent knew of the Complainant prior to the dispute, the Panel is prepared to give equal weight to the Respondent’s arguments for the application of paragraph 4(c)(i) of the Policy-- that it has independently chosen the Latin word “ferox” in combination with a logo depicting a gray wolf, and has selected the name under which to operate its activities related to investments in good faith and without knowledge of the Complainant— and to the Complainant’s arguments. Indeed, other than the content of its website, the Respondent has provided no evidence in support of its statements, but neither has the Complainant. Therefore, and in light of the limited evidence available to it, the Panel accepts that the Complainant has not established the Respondent’s lack of rights and legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant asserts that the Respondent must have been aware of Complainant’s legal rights in the FEROX trademarks when registering the disputed domain name. In the Complainant’s view, the Respondent attempts to divert business away from the Complainant by misrepresenting itself and causing confusion, and has registered and used the disputed domain name in an attempt to exploit the Complainant’s FEROX trademarks for its own commercial gain by creating a likelihood of confusion with the Complainant’s FEROX trademarks as to the source, affiliation and endorsement of its website and the services it offers.

The Respondent denies all these allegations, and points to the different focus, strategy, marketing and business methods of the two parties, reflected on their websites.

As discussed in relation to the issue of rights and legitimate interests, the evidence submitted by the parties is very limited. Other than the contents of their respective websites, which are purely promotional in nature, there is no evidence about the specific activities of the parties and the actual markets in which they operate. The Complainant has not provided any evidence to support its claims of being well-known in the markets where the Respondent operates, and has not even shown that the two parties compete with each other in the same markets.

The Complainant’s allegations are counterbalanced by the allegations of the Respondent, and there is no evidence in the case file to give more credibility to either of them. In this situation, the Panel finds that the Complainant has failed to meet its burden of proof that the Respondent has registered and used the disputed domain name in bad faith.

The Panel notes that its conclusions are made solely for the purpose of reaching a decision under the Policy. Any trademark or competition law disputes between the parties are beyond the scope of this proceeding, and fall within the purview of the respective courts or other institutions of competent jurisdiction.

7. Decision

For the foregoing reasons, the Complaint is denied.

Assen Alexiev
Sole Panelist
Date: January 14, 2014