Paragraph 4(a) of the UDRP Policy provides that to obtain the transfer of the disputed domain name, the complainant must prove that each of the following elements is present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant has established that it has rights in the trademark "AMUNDI" since 2009. The trademark of the Complainant was registered prior to the registration of the disputed domain name (February 20, 2017) and is valid worldwide, comprising the territory where the Respondent is located (the US).
This Panel finds that the domain name <AMUNDIPIONEER.COM> is considered confusingly similar to the Complainant's trademark because it wholly incorporates such mark, i.e. "AMUNDI". The addition of the term "PIONEER" to the Complainant's registered and well-known mark neither affects the attractive power of such trademark, nor is sufficient to negate the confusingly similarity between the disputed domain name and the Complainant's mark. UDRP Panels agree that the top-level suffix, in this case .com, is usually to be ignored for the purpose of determination of identity or confusing similarity between the disputed domain name and the trademark of the complainant as it is a technical requirement of registration (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition).
Accordingly, the Panel finds that the Complainant has proven the first element of the paragraph 4(a) of the UDRP Policy.
It is well-stablished view of UDRP Panels that the complainant shall establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the respondent (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition: "Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of UDRP".)
As per the WHOIS records, confirmed by the Registrar, the Respondent is Syed Hussain - Domain Management MIC and there is no evidence that the Respondent has been commonly known by the disputed domain name.
The Complainant has no relationship with the Respondent whatsoever. The Respondent has never received any approval of the Complainant, expressed or implied, to use the Complainant's trademark or any other identical or confusingly similar mark, such as the wording “amundipioneer”, in or as part of any domain name.
The domain name <amundipioneer.com> currently resolves to a parking page containing links related to the Complainant's business, i.e. asset management, and links to third parties’ sites with competitive products and services. Hence, there is no evidence that the Respondent’s use of the disputed domain name is either a bona fide offering of goods or services or a legitimate noncommercial or fair use, without intent for commercial gain.
UDRP Panels have generally recognized that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services” or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. If such links are based on trademark value, Panels have tended to consider such practices generally as unfair use resulting in misleading diversion (WIPO Overview 2.0).
The Panel finds that the Complainant has established its prima facie case and without any evidence from the Respondent to the contrary, the Panel is satisfied that the Complainant has satisfied the second element of the paragraph 4(a) of the UDRP Policy.
The Respondent hides behind a privacy shield. The manner in which such a service is used may constitute a factor indicating bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.9.
The Respondent's bad faith is clearly evident from the fact that he has deliberately registered and used the disputed domain name confusingly similar with the well-known marks of the Complainant, containing the Complainant's mark "AMUNDI" in its entirety and adding the term "PIONEER", creating a likelihood of confusion with such marks. Considering the vast and widespread advertising campaigns announcing the acquisition of the company Pioneer Investments by the Complainant, it is unlikely that the registration of the disputed domain name in question few months after such announcement may be attributed to a mere chance and not, as is, with a full awareness and intent to exploit the reputation of the Complainant and its mark acquired in the asset management industry.
The content of the website to which the disputed domain name resolves makes it clear that the Respondent has registered and used the disputed domain name with a view of commercial gain. Such website is a parking page containing third parties’ links with competitive goods and services to those of the Complainant.
Hence, this Panel finds that by registering and using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location (see UDRP Policy 4(b)(iv)).
Moreover, the website contains the information that the disputed domain name is for sale and a link to the domain auction platform SEDO's website offering the domain for sale for the amount of USD 2750, which is without doubt in excess to the out-of-pocket costs of the Respondent directly related to the disputed domain name.
Therefore, this Panel also retains proved that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the disputed domain name (see UDRP Policy 4(b)(i)).
Considering previous UDRP decisions (in particular NAF FA0008000095411 radioshackcorporation.com et al.; NAF FA0105000097320 ameritradepro.com et al.) against the same Respondent with similar fact situations finding the Respondent having registered and used in opportunistic bad faith domain names containing well-known trademarks of third parties, the Panel finds that the Respondent is engaged in a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name (see UDRP Policy 4(b)(ii)).
Consequently, the Panel finds that the Complainant has proven the third element of the paragraph 4(a) of the UDRP Policy.
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