The Complainant is Raymond James Financial, Inc. of St. Petersburg, Florida, United States of America ("United States"), represented by Thomas & LoCicero PL, United States.
The Respondent, as named in the initial Complaint, was Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States. The Complaint was later amended also to include as a Respondent Name Redacted1, purportedly of Los Angeles, California, United States.
The disputed domain names <raymondjamesrates.com> ("Domain Name No 1") and <raymondjamesla.com> ("Domain Name No 2"; together, the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 15, 2018. On June 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 19, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 21, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint to include as a Respondent in the case the newly identified registrant. The Complainant filed an amended Complaint against both Respondents on June 22, 2018 ("Amended Complaint").
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 Respondents of the Complaint, and the proceedings commenced on June 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2018. The Respondents did not submit any Response. Accordingly, the Center notified the Respondents' default on July 17, 2018.
The Center appointed D. Brian King as the sole panelist in this matter on August 2, 2018. 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 is a diversified financial services holding company with subsidiaries engaged in investment and financial planning, investment banking, and asset management ("financial services"). It is a corporation organized and existing under the laws of Florida in the United States, and has offices in the United States, Argentina, Brazil, Canada, France and the United Kingdom, among other countries. As of June 22, 2018, the Complainant and its subsidiaries had more than 3,000 offices, from which approximately 7,600 financial advisors manage approximately USD 730 billion in client assets.
The Panel has no information about the business activities of the Respondents. The Panel does, however, make two observations regarding the Respondents:
First, according to the Complainant, the name of the second Respondent is also the name of one of the Complainant's employees. The Complainant states that its employee "has [had] no role in the creation, registration or use" of the Domain Names. The Complainant suspects that the name was used in the registration process in an effort to impersonate its employee. The Panel makes no finding in regard to whether the registrant indeed attempted to impersonate an employee of the Complainant; however, the Panel accepts the Complainant's representation that its employee was not involved in the creation, registration or use of the Domain Names.
Second, the address provided to the Registrar at the time the Domain Names were registered is not associated with either of the Respondents. The address is "444 S. Flower St., Los Angelos [sic], California, USA". As is apparent from Annex 10 to the Complaint – aside from the misspelling of "Los Angeles" – that is in fact the address for one of the Complainant's offices.
The Complainant is the registered owner of the following trademarks in different jurisdictions (together, the "Registered Marks") (Annex 4 to the Amended Complaint).
|
Trademark |
Jurisdiction/Trademark Office |
|
RAYMOND JAMES |
United States Patent and Trademark Office (USPTO) |
|
RAYMOND JAMES |
European Union Intellectual Property Office (EUIPO) |
|
RAYMOND JAMES |
United Kingdom Intellectual Property Office (UKIPO) |
|
RAYMOND JAMES |
Swiss Federal Institute of Intellectual Property |
|
RAYMOND JAMES |
Canadian Intellectual Property Office |
|
RAYMOND JAMES |
Instituto Nacional de Propiedad Industrial de Chile |
|
RAYMOND JAMES |
Instituto Nacional da Propriedade Industrial do Brasil |
The RAYMOND JAMES mark has been used in commerce in connection with the provision of financial services to customers in the United States since at least December 31, 1964 (Amended Complaint, para 12; Annex 4, US Trademark Registration No. 2,404,765).
The Complainant registered its domain name <raymondjames.com> on or about September 23, 1998. The Domain Names were registered about twenty years later, on April 27, 2018.
As recently as June 13, 2018, Domain Name No 1 resolved to an active webpage offering financial services purportedly from Raymond James (Annex 7 to Amended Complaint), but has since been deactivated (Annex 8 to the Amended Complaint). Domain Name No 2 also previously resolved to an active webpage purporting to offer financial services from Raymond James (Annex 9 to the Amended Complaint). When accessed by the Panel on August 10, 2018, the Domain Names were both inactive.
The grounds set out in the Complaint can be summarized as follows:
The Complainant claims that the Domain Names are identical and/or deceptively similar to its mark RAYMOND JAMES. This is asserted on the basis that they incorporate the entire RAYMOND JAMES mark. The Domain Names also each include an additional word: the first adds the generic term "rates" to the mark, and the second adds the letters "la" (a common abbreviation for Los Angeles). The Complainant argues that adding a generic term and a geographic term to "raymondjames" does not remedy the confusing similarity of the Domain Names to the Complainant's mark.
The Complainant claims that the Respondents have no rights or legitimate interests in respect of the Domain Names. The Complainant asserts that it has not licensed its mark to the Respondents nor has it consented or acquiesced to the Respondents' use of the mark. The Respondents have no relationship with the Complainant that would entitle the Respondents to use the Complainant's trademarks in any manner, according to the Complainant. Further, to the best of the Complainant's knowledge, the Respondents have not been commonly known by or associated with the Domain Names.
Moreover, the Complainant argues that the Respondents' lack of rights or legitimate interests in respect of the Domain Names is evident from the manner in which the Domain Names have been used. First, the Complainant argues – despite there being no association between the Complainant and the Domain Names – the websites to which the Domain Names resolve offered financial services and displayed the corporate information of the Complainant. Second, the Complainant argues that the Respondents used the Domain Names for the purpose of profiting from Internet users who confuse the Domain Names as being associated with the Complainant. With respect to the latter point, the Complainant gives the specific example of a potential customer who called the phone number listed on one of the Domain Names and subsequently received an email from an individual purporting to work as one of the Complainant's financial advisors. The Complainant alleges that the customer received instructions to wire funds to a bank account in Armenia, where the Complainant has no bank accounts or offices, and was asked for sensitive personal information. The Complainant alleges that the Respondents thus used the Domain Names in a fraudulent manner and therefore cannot have rights or legitimate interests in the Domain Names.
Finally, the Complainant alleges that the Domain Names were registered and used in bad faith. The Complainant argues that the fact that the Respondents registered two domain names containing the RAYMOND JAMES mark in its entirety is itself evidence of bad faith. The Complainant further asserts that the Respondents' provision of fraudulent contact information to the Registrar (i.e., using the name of one of the Complainant's employees and using the address of its Los Angeles office) is further evidence of bad faith. The Complainant also alleges that the Domain Names were being used in a scheme to defraud Internet users, as outlined above.
The Respondents did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of paragraph 4(a)(ii) above.
Paragraph 4(b) of the Policy sets out illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) above.
The Panel has no hesitation in finding that the Domain Names are confusingly similar to trademarks in which the Complainant has rights for the reasons that follow.
The Complainant has provided sufficient evidence showing that it possesses rights to the mark RAYMOND JAMES. The mark has been used by the Complainant in conjunction with the offering of financial services since 1964, and it has been registered by the Complainant around the world. Indeed, the Complainant provided copies of certificates of registration of the RAYMOND JAMES mark from a number of different jurisdictions (Annex 4 to the Amended Complaint).
Both of the Domain Names incorporate the RAYMOND JAMES mark in its entirety, with the addition of a single other generic word or abbreviation. Panels have consistently held that the addition of generic or descriptive words to a complainant's trademark does not distinguish a domain name from the registered mark (see Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; eBay Inc. v. ebayMoving/Izik Apo, WIPO Case No. D2006-1307; Lime Wire LLC v. David Da Silva v. Conactprivacy.com, WIPO Case No. D2007-1168; Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber, WIPO Case No. D2003-0251). When a domain name wholly incorporates a mark in a recognizable manner, the addition of non-distinctive text does not remedy the confusing similarity to the mark (see Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Revlon Consumer Products Corporation v. IONE Inc., WIPO Case No. D2010-1000).
Domain Name No. 1 wholly incorporates the RAYMOND JAMES mark, but adds the word "rates". That does not eliminate the confusing similarity; "rates" is a generic word commonly used in the Complainant's industry (i.e.,financial services). Domain Name No. 2 incorporates the same mark, but adds the letters "la" – a common abbreviation for the city of Los Angeles, California. As explained in the Complaint, the Complainant maintains an office in that city and the incorporation of the letters "la" with the Complainant's mark likewise does not eliminate the Domain Name's confusing similarity to the RAYMOND JAMES mark.
On these grounds, the Panel finds that the first element of the test under paragraph 4(a) of the Policy is met.
Many prior UDRP panels have found that complainants only need to establish a prima facie case in relation to the second element of the test under paragraph 4(a)(ii) of the Policy (see Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205; Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith, WIPO Case No. D2010-1576; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). Once a prima facie showing is made, the burden of proof shifts to the respondent to demonstrate that it does possess rights or legitimate interests in the disputed domain name. To overcome a complainant's prima facie showing, a respondent can, for example, provide evidence of a bona fide offering of goods or services, the common use of the domain name, or a legitimate noncommercial or fair use.
The present Panel agrees that the Complainant needs only to make out a prima facie case and finds that the Complainant has met that standard. The Complainant started using the RAYMOND JAMES mark in commerce from as early as 1964, and has provided evidence that it registered the mark as early as September 1998 (Annex 5 of the Amended Complaint). The Domain Names, on the other hand, were registered in 2018. Until recently, the websites to which the Domain Names resolved purported to offer financial services, which is the Complainant's business sector. Moreover, the webpages drew upon features of the Complainant's trademarks and branding, including by referencing the Complainant's corporate information and the address of its Los Angeles office, and by incorporating a logo that is similar to the one used on the Complainant's webpage (see Annexes 7-10 to the Amended Complaint). The clear conclusion to be drawn is that the Respondents had actual knowledge of the Complainant's mark and sought to trade off of the Complainant's goodwill. That is the antithesis of rights or legitimate interests in a domain name.
The Respondents have not participated in these proceedings and have therefore not availed themselves of the opportunity to adduce evidence of any purported rights or legitimate interests in the Domain Names. This is likely because the Respondents have nothing useful to say in that regard. In the circumstances and in absence of any evidence to the contrary, the Panel credits the Complainant's representations that (a) it did not give the Respondents permission or a license to use the RAYMOND JAMES trademarks (or any variation thereof), and (b) there is no commercial or other relationship between the Complainant and either of the Respondents.
On these grounds, the Panel finds that the Complainant has satisfied the requirements of the second element of the test under paragraph 4(a) of the Policy.
The third element of the test under paragraph 4(a) of the Policy requires proof that the Domain Names have been registered and are being used in bad faith. The Panel finds that the Complainant has satisfied that element as well.
Previous UDRP panels have found that the mere registration of a domain name that is confusingly similar to a well-known mark can establish bad faith (see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Georgia-Pacific Corporation v. Charlie Kalopungi, WIPO Case No. D2011-0634). The Panel has already concluded above that the Domain Names are confusingly similar to the RAYMOND JAMES mark. Moreover – given the content of the webpages to which the Domain Names previously resolved (described above) – it is almost inconceivable that the Respondents registered the Domain Names without prior knowledge of the RAYMOND JAMES mark. The Panel thus concludes in the circumstances that the Respondents registered the Domain Names in bad faith, for the purpose of attracting Internet users based on the confusing similarity of the Domain Names to the Complainant's mark (see, e.g., SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092; First ScotRail Limited v. Mark Thomson, WIPO Case No. D2013-1623).
Moreover, the Panel finds that in registering the Domain Names, the Respondents provided the Registrar a false address – one that, save for a typographical error in the spelling of the city of Los Angeles, is actually the address of one of the Complainant's offices (Appendix 10 to the Amended Complaint). Therefore, not only did the Respondents register Domain Names that are confusingly similar to the Complainant's mark, but they compounded that confusion by registering them using an address that is affiliated with the Complainant. This further supports a finding of bad faith registration on the part of the Respondents.
The Complainant has provided sufficient evidence to show that the Respondents have not only registered but also used the Domain Names in bad faith. The websites that had been associated with the Domain Names contained information about financial services on offer, invited the Internet user to "open a new account," and provided a telephone number for that purpose (Annexes 7 and 9 to the Amended Complaint). At the bottom of the websites, there was a section entitled "Contact Us", which contained (i) the Complainant's name and the names of subsidiaries of the Complainant, matching verbatim the corporate information that appears at the bottom of the Complainant's own main website (Annex 6 to the Amended Compliant), and (ii) an address in Los Angeles that matches the address of one of the Complainant's offices there (Annex 10 to the Amended Complaint). As such, it is apparent that the Domain Names were being used in a manner purposefully to create the false impression that the websites were associated with the Complainant. The purposeful creation of that false impression constitutes bad faith usage.
The Complainant has also argued that the websites have been used to defraud Internet users. In particular, the Complainant refers to one potential customer who purportedly called the telephone number that was on one of the websites associated with the Domain Names and subsequently received an e-mail from someone impersonating a Raymond James financial advisor, inviting the customer to wire funds to a bank account in Armenia. The Complainant has not put that email exchange into evidence. The Complainant did, however, put into evidence an account application form that it says was attached to that email. The form requests personal information and states that completed forms should be emailed to an email address associated with Domain Name No 2: customerservice@raymondjamesla.com (Annex 11 of the Amended Complaint). This strongly suggests that, in fact, the Respondents were attempting to acquire personal information from Internet users in a fraudulent manner. Given the findings already reached by the Panel above, however, there is no need to make a determinative finding concerning whether the Respondents were engaged in fraudulent activity.
The Panel accordingly determines that the Respondents registered and used the Domain Names in bad faith, and therefore that the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <raymondjamesrates.com> and <raymondjamesla.com> be transferred to the Complainant.
1As detailed in Section 4 of this Decision, the record indicates a third party may have used the named registrant's name in registering the disputed domain which happens to be the name of one of the Complainant's employees. The Panel has accordingly decided to redact the registrant's name from the caption and body of this Decision. However, the Panel has included in Annex 1 to this Decision an instruction to the Registrar which includes the registrant's name. The Panel has authorized the Center to transmit Annex 1 to the Registrar, and has indicated that Annex 1 is not to be published given the circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.