Complainant is PIMCO Europe Ltd, United Kingdom, represented by Dechert LLP, United Kingdom.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Name Redacted.1
The disputed domain name <europe-pimco.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2020. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 12, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 16, 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 Respondent of the Complaint, and the proceedings commenced on December 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2021. The Center received a third party’s communication by email on December 27, 2020. Respondent did not submit any response. On January 11, 2021, the Center notified the Parties that it would proceed to panel appointment.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on January 25, 2021. 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.
Complainant was founded in 1971 and operates as a premier fixed income investment management company offering worldwide portfolio management services to qualified institutions, financial intermediaries and institutional investors. It has 17 global offices throughout Europe, Asia and the Americas with approximately 3,050 employees worldwide. Complainant has received numerous awards over the years. Complainant is part of the Pacific Investment Management Company LLC and its parent group, Allianz SE. Complainant, either in its own right or through its parent, has rights in numerous trade mark registrations across the world for the PIMCO mark (“PIMCO Mark” or the “Mark”) including: European Union Trade Mark Registration No. 000797548, registered on August 18, 2000 and France Registration No. 3433056, registered on June 6, 2006.
Respondent registered the Domain Name on September 22, 2020. The Domain Name resolves to a webpage which requires login details to access, and has been used to send fraudulent emails.
The Domain Name is confusingly similar to the PIMCO Mark insofar as it consists of the words “europe” and “pimco” separated by a hyphen, together with the generic Top-Level Domain (“gTLD”) “.com”. Adding a gTLD such as “.com” in a domain name is technically required thus it is a standard practice to disregard when determining whether a domain name is identical or confusingly similar to a trademark. Adding a hyphen does not serve to distinguish the Domain Name from the Mark. Nor does adding the word “europe” to the Mark distinguish the Domain Name as consumers would consider this a descriptive geographic location, particularly since Complainant offers its products and services in Europe. Inclusion serves only to reinforce the association between the Domain Name and Complainant in the minds of the public particularly given Complainant’s own sub-domain name <europe.pimco.com>. The PIMCO Mark is included in the Domain Name in its entirety which is in itself enough to render the Domain Name confusingly similar to it.
Furthermore, Respondent has sought to take advantage of such confusion by using an email address affiliated with the Domain Name, “[name]@europe-pimco.com” (the “Email Address”) to fraudulently misrepresent and falsify a connection with Complainant in offering potential investment opportunities to members of the public. As a result of the similarities between the Email Address and Complainant’s legitimate email addresses (from its <pimco.com> domain name), when contacted by the Email Address, consumers will assume that such emails are associated with, sponsored by or otherwise connected with Complainant. In fact, queries have been raised by the German Federal Financial Supervisory Authority (“BaFin”) with Complainant over the Domain Name.
The Domain Name was registered on September 22, 2020, nearly 50 years after Complainant founded its business. Considering the reputation and international presence of Complainant and the use made by Respondent of the Email Address, it is clear that Respondent did not independently conceive of the name Pimco and was aware of Complainant and its rights and reputation in the PIMCO Mark when registering the Domain Name. Respondent is using the Domain Name and related Email Address to give the impression of being a representative or employee of or otherwise affiliated with or authorized by Complainant or a member of its group. Respondent aims to misleadingly deceive consumers by offering potential investment opportunities (presumably with a view to obtaining money from such consumers) and has already made contact with members of the public to this end, including in France. These efforts to defraud the public prevents any possibility that the Domain Name is being used in connection with either the good faith offering of goods or services or operation of a business. Nor could the actions of Respondent constitute legitimate or fair use of the Domain Name unless it was authorized by Complainant. Complainant has not licensed or otherwise permitted or authorized Respondent to use its PIMCO Mark or to apply for a domain name incorporating the PIMCO Mark. Respondent’s name does not include the PIMCO Mark or anything similar and it is not commonly known by the PIMCO Mark.
Complainant contends that the Domain Name and Email Address were registered and are being used in bad faith because Respondent registered the Domain Name to unfairly benefit from the rights in the PIMCO Mark. Similarly “Pimco” is not a word that is in common use and by registering the Domain Name and using the Email Address to fraudulently misrepresent a connection with Complainant in purporting to provide investment opportunities this is clear evidence that Respondent registered and is using the Domain Name with knowledge of Complainant and of the use Complainant is making with its PIMCO Mark. Furthermore, it indicates that Respondent’s primary intent with respect to the Domain Name and Email Address is to trade off the value of the PIMCO Mark. Respondent has registered the Domain Name primarily for the purpose of disrupting Complainant’s business and has used it in bad faith. Also, the Domain Name has been used in a way that is likely to dilute the reputation of the PIMCO Mark and as such is evidence of bad faith.
Respondent did not reply to Complainant’s contentions. However, the Center received a third party’s communication by email on December 27, 2020, in which this third party appears to have claimed that his identity had been stolen, and he had filed a complaint for identity theft.
The Panel finds Complainant has established rights in the PIMCO Mark based on the aforementioned trademark registrations for the Mark that Complainant made of record.
The Panel further finds that the Domain Name <europe-pimco.com> is confusingly similar to Complainant’s PIMCO Mark. The relevant comparison to be made is with the second-level portion of the Domain Name (i.e., “europe-pimco”). The Domain Name wholly incorporates the PIMCO Mark, adding a hyphen and the word “europe”. Including the PIMCO Mark in the Domain Name in its entirety is enough to render the Domain Name confusingly similar to the PIMCO Mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. Furthermore, combining the PIMCO Mark with an additional term does not prevent a finding of confusingly similarity. In this case, using the particular term “europe” with the PIMCO Mark in the context of the fraudulent phishing scheme described below supports the Panel’s findings under the second and third elements as it increases the likelihood of confusion. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). “[P]unctuation changes such as hyphens are de minimis when analyzing a domain name for identity or confusing similarity under the Policy.” SeeCareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251. Lastly, adding the gTLD such as “.com” does not distinguish the Domain Name from the Mark because the use of a gTLD is required of domain name registrations. See SBC Communications v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use the Mark for any purpose including to register the Domain Name. Furthermore, Complainant points outs that Respondent’s name does not include the PIMCO Mark or a variation of it and Respondent is not commonly known by the Mark. Complainant further maintains that Respondent’s lack of rights or legitimate interests in the Domain Name are evidenced by the fact that Respondent is using a confusingly similar Domain Name and the associated Email Address to give the impression to the public of being a representative or employee of or otherwise affiliated with or authorized by Complainant or a member of its group. Respondent’s objective is to misleadingly deceive consumers by offering potential investment opportunities (presumably with a view to obtaining money from such consumers) and, in fact, has already made contact with members of the public to this end, including in France.
Insofar as Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden to Respondent to show evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Respondent has failed to adduce any evidence to shoulder its burden. Thus, Complainant’s facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Respondent registered and has been using a domain name that, as the Panel found above, is confusingly similar to the PIMCO Mark. When Respondent registered the Domain Name, Complainant had been using its PIMCO Mark for many years and it was well known. Furthermore, the term “Pimco” is not a word that is in common use, so by registering the Domain Name <europe-pimco.com> and using the Email Address “[name]@europe-pimco.com”, both of which use the PIMCO Mark, to fraudulently misrepresent a connection with Complainant in purporting to provide investment opportunities, this is clear evidence that Respondent registered the Domain Name with knowledge of Complainant and its rights in the PIMCO Mark, and with a clear purpose.
Respondent’s use of the Domain Name also constitutes bad faith use because Respondent has compounded the confusion caused by registering a confusingly similar Domain Name by using the similar Email Address affiliated with the Domain Name to fraudulently misrepresent a connection with Complainant in offering potential investment opportunities to the public. As a result of the similarities between the Email Address and Complainant’s actual email addresses (from its <pimco.com> domain name), when contacted by the Email Address, consumers will assume that such emails are associated with, sponsored by or otherwise connected with Complainant. Indeed, questions have been raised by the BaFin with Complainant about the Domain Name. Respondent’s registration and use of the Domain Name under the fraudulent circumstances set forth above constitute bad faith registration and use of the Domain Name. See BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364.
Furthermore, the fact that Respondent registered the Domain Name under a false name and with false contact information provides additional grounds for the Panel to conclude that Respondent registered the Domain Name in bad faith. See Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138.
The Panel wants to make clear that insofar as a third party has been the victim of identity theft, this finding of bad faith registration and use is not attributed to him personally but to the unknown actual registrant of the Domain Name whose identity has been fraudulently concealed. Accor S.A. v. Kristen Hoerl, WIPO Case No. D2007-1722.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) 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 Name <europe-pimco.com> be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Date: February 7, 2021
1 Respondent appears to have used the name and contact details of a third party when registering the Domain Name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the Domain Name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.