WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Reservoir Capital Group, LLC v. Ahmed Omolabi

Case No. D2019-3105

1. The Parties

The Complainant is Reservoir Capital Group, LLC, United States of America, represented by Paul, Weiss, Rifkind, Wharton & Garrison LLP, United States of America.

The Respondent is Ahmed Omolabi, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <reservoircapitalgroup.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2019. On December 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2019, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2020.

The Center appointed Dr. Beatrice Onica Jarka as the sole panelist in this matter on February 11, 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 was founded more than 20 years ago, as a privately held investment firm that invests opportunistically in both public and private markets. It currently has 486 investors and USD 2.2 billion in assets under management. The Complainant has co-founded more than 30 alternative investment firms that collectively grew to manage over USD 125 billion, with over 400 limited partners across a range of investor types. The Complainant has a strong history of corporate and financial partnerships, as well as deep industry network and investment experience across a wide range of sectors and market environments.

The Complainant is the owner of all trademark rights to the name RESERVOIR in connection with the provision of financial and investment services, including the registered trademark RESERVOIR (United States of America Trademark Registration Number 3195689, registered on January 9, 2007). According to the registration, the RESERVOIR trademark is associated with “[f]inancial services, namely investment advisory, management and administrative services on behalf of investment funds and separate managed accounts for high net worth individuals and families” and “[i]nvestment services, namely, acquiring, structuring and holding investments on behalf of investment funds”.

The Respondent registered the disputed domain name in February 2019. According to the evidence provided by the Complainant, the disputed domain name resolved to a website displaying the Complainant’s name “Reservoir Capital Group” prominently and purportedly offering financial services. The disputed domain name does not resolve to an active website currently.

5. Parties’ Contentions

A. Complainant

By the Complaint, the Complainant contends that:

- the disputed domain name is identical or confusingly similar for the purposes of the Policy, as it incorporates the Complainant’s registered trademark and merely adds “Capital Group” to the end of RESERVOIR trademark—words with no distinctive character.

- moreover, there are further elements displayed on the disputed domain name’s website which induce more confusion as to the disputed domain name and the Complainant’s trademark.

- the Complainant’s name “Reservoir Capital Group,” is featured prominently on the disputed domain name’s website, and it appears in a similar configuration as it does on the Complainant’s legitimate website, namely, in the upper lefthand corner with “Reservoir” written in larger letters and “Capital Group” in smaller, right justified letters directly below.

- the services purportedly offered on the website at the disputed domain name overlap significantly with the various financial and investment services that the Complainant provides.

- the language on the website at the disputed domain name regarding “Company History”, is identical to language on the Complainant’s “About Us” page, and even included the same timeline from the Complainant’s site, complete with the names and descriptions of actual funds established by the Complainant.

- the Complainant at no time authorized the Respondent to use the name “Reservoir” as part of the disputed domain name. The Complainant has trademark rights to RESERVOIR in connection with the provision of financial and investment services, and the disputed domain name.

- The Respondent plainly has no rights to or legitimate interests in respect of the disputed domain name.

- The Complainant registered its trademark more than 10 years ago and predates the Respondent’s disputed domain name registration.

- To the best of the Complainant’s knowledge and belief, the Respondent does not hold any intellectual property rights in any mark that contains the term “Reservoir”.

- The Complainant has never authorized the Respondent to use its trademark, whether in a domain name or otherwise, or to register and use the disputed domain name and has no business relationship with the Respondent.

- any possibility that the Respondent’s use of Reservoir’s trademark could constitute either a bona fide offering of goods and services or a legitimate noncommercial use is undercut by the fraudulent content of the pre-suspension website. The website undertow the disputed domain name contains false and misleading information as indicative of an illusory business and precludes a finding that the Respondent has rights or legitimate interests in respect of the disputed domain name.

- the Respondent has failed to assert any rights or legitimate interests in response to the Complainant’s letter, notwithstanding the Complainant’s repeated and diligent attempts to make contact. Specifically, the Complainant sent the letter to the two email addresses and Cayman Islands, United Kingdom mailing address that appeared on the website at the disputed domain name as of November 25, 2019 and also to the Privacy Protect’s email and mailing addresses on file with the WhoIs database as of November 25, 2019, and via a form on Privacy Protect’s website. When Privacy Protect disabled its services and the Respondent was revealed as the registrant on the WhoIs database on December 3, 2019, the Complainant sent the letter to the newly-disclosed email and Nigerian mailing addresses, which proved to be a false address.

- there is strong evidence of bad faith in this case. The Respondent’s bad faith may be inferred solely as a result of a trademark’s notoriety, a finding of bad faith is practically compelled when the Respondent engages in a complex, sustained, and blatant fraud.

- moreover, there are several other factors which provide further support for a finding of bad faith, as the website to which the disputed domain name resolves contains misleading and false information, including a fake office location and a review from a customer who does not exist or the contact information the Respondent provided to the Registrar is similarly false, while the disputed domain name’s operator initially engaged a domain privacy company to hide its true identity is additional evidence of bad faith, so the Respondent deliberately elected to conceal its identity from members of the public seeking to identify the registrant of the disputed domain dame.

- As a result of the Complainant’s letter demanding that the Respondent cease using the Reservoir’s trademark and transfer the disputed domain name to it, the Registrar suspended the disputed domain name but the Respondent never responded to the letter.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

In order to establish the first element of the Policy, the Complainant should show that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant holds rights.

Based on the assertions and evidence presented by the Complainant, this Panel finds undisputable that the Complainant holds rights in the RESERVOIR trademarks. Moreover, the rights of the Complainant predate the registration of the disputed domain name by the Respondent.

This Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark RESERVOIR, as it incorporates a complainant’s registered trademark and merely adds the dictionary words “Capital Group” to the end of RESERVOIR trademark. The Panel considers that adding the dictionary terms to the Complainant RESERVOIR trademark does not prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Although the Complainant has indicated in its Complaint that on the website under the disputed domain name there are further elements of confusion displayed, the Panel does not consider necessary to analyse these submissions under the paragraph 4(a) of the Policy.

For all the reasons above, this Panel finds that the disputed domain name is confusingly similar to the RESERVOIR trademark and that the Complainant has established the first element of the paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under the second element of the Policy, the Complainant has to show that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent, according to WIPO Overview 3.0, section 2.1. In these proceedings, this Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, as there is no business or legal relationship between the Complainant and the Respondent. Moreover, the Complainant asserts that the Respondent does not hold any intellectual property rights in any mark that contains the term “reservoir”. According to the Complainant any possibility that the Respondent’s use of RESERVOIR trademark could constitute either a bona fide offering of goods and services or a legitimate noncommercial use is undercut by the fraudulent content of the pre-suspension website as the website at the disputed domain name contains false and misleading information as indicative of an illusory business.

As noted, the contentions of the Complainant had not been rebutted by the Respondent, and the Panel agrees with the Complainant that the registration and use of a known trademark in a domain name cannot be considered as bona fide.

Therefore, in the opinion of this Panel, the Complainant has fully demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and consequently, the second element of paragraph 4(a) of the Policy is therefore established.

C. Registered and Used in Bad Faith

The Complainant asserts in its Complaint a series of facts which represent bad faith indication.

According to the Complainant, there are several factors which provide support for a finding of bad faith registration and use, including (a) the notoriety of the trademark RESERVOIR and the composition of the disputed domain name; (b) the fact that the website to which the disputed domain name resolved displayed the Complainant’s name “Reservoir Capital Group” prominently, contained misleading and false information (including a fake office location and a review from a customer who does not exist) and purportedly offered financial services; and (c) the contact information the Respondent provided to the Registrar appears to be false.

Moreover, the use of a domain privacy company to hide the true identity of the Respondent is additional evidence of bad faith for its side, so the Respondent deliberately elected to conceal its identity from members of the public seeking to identify the registrant of the disputed domain name.

As none of the Complainant’s assertions of bad faith has been rebutted by the Respondent, the Panel inclines to agree with the Complainant that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Panel finds that the Complainant has demonstrated that the Respondent has registered and used the disputed domain name in bad faith and therefore, the third element of paragraph 4(a) of the Policy is established.

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 <reservoircapitalgroup.com> be transferred to the Complainant.

Dr. Beatrice Onica Jarka
Sole Panelist
Date: February 25, 2020