Decision for dispute CAC-UDRP-104758

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner, amongst others, of the following trademark registrations for LFPI:

- France trademark registration No. 3366800 for LFPI (word mark), registered on June 23, 2005, in class 36;
- France trademark registration No. 3367374 for LFPI (word mark), filed on June 23, 2005, in classes 35, 36 and 42;
- European Union trademark registration No. 005122585 for LFPI (word mark), filed on June 7, 2006 and registered on August 9, 2007, in class 36; and
- European Union trademark registration No. 014293724 LFPI (figurative mark), filed on June 26, 2015 and registered on October 27, 2015, in class 36.

The Complainant La Financiere Patrimoniale D’Investissement, operating under the trade name LFPI, is one of the leading independent, multi-strategy alternative asset managers in Europe with nearly €12 billion under management in private equity (majority, minority, co-investments, funds of funds and thematic funds including hotels), private debt, real estate, as well as asset management in Europe and North America, with a focus on long-term investments.

The Complainant owns a number of domain names, including the domain name <lfpi.fr> registered on April 15, 2003 and used by the Complainant to promote its services under the trademark LFPI.

The disputed domain name <lfpi-am.com> was registered on May 10, 2022 and is currently not pointed to an active website. According to the screenshot submitted as Annex to the Complaint, which has not been challenged by the Respondent, the disputed domain name was previously pointed to a parking page with commercial links, also related to investments and asset management.

COMPLAINANT

The Complainant states that the disputed domain name <lfpi-am.com> is confusingly similar to its trademark LFPI, as it reproduces the trademark in its entirety with the sole addition of the acronym “am” (standing for “Asset Management”) and the generic Top-Level Domain (TLD) “.com”, which is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name because i) it is in no way related with the Complainant, ii) it does not carry out any activity for, or business with, the Complainant and iii) no license nor authorization has ever been granted to the Respondent to make any use of the Complainant’s trademark LFPI, or apply for registration of the disputed domain name by the Complainant.

Moreover, the Complainant contends that, since the disputed domain name resolves to a parking page with commercial links and it has been used in a phishing scheme, the Respondent has used the disputed domain name to pass itself off as one of the Complainant’s employees, in order to obtain personal information and/or receive undue payments. The Complainant therefore submits that the Respondent is not using the disputed domain name for a bona fide offering of goods or services or for non-commercial or fair use.

With reference to the circumstances evidencing bad faith, the Complainant highlights that, given the distinctiveness and reputation of its trademark and that the disputed domain name is so obviously connected to the Complainant also considering the association of the acronym “am” (standing for “Asset Management”, which directly refers to the Complainant’s field of activity), the Respondent registered the disputed domain name with full knowledge of the Complainant and its trademark.

Furthermore, the Complainant contends that the Respondent’s bad faith can also be inferred by the fact that the Respondent used the disputed domain name to pass off as the Complainant in order to obtain personal information and to receive undue payments. The Complainant underlines that the Respondent has registered the disputed domain name in the name of Philippe Baillet, LFPI AM, using the Complainant’s official address, but the email address listed in the WhoIs records is in no way controlled by the Complainant in any way.

In addition, the Complainant points out that the disputed domain name has redirected to a parking page with commercial links and submits that the Respondent has deliberately attempted to pass off as the Complainant also in order to attract internet users to its website for commercial gain, which is further indication of the Respondent’s bad faith.

RESPONDENT

No administratively Compliant response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

1. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark LFPI as it reproduces the trademark in its entirety with the mere addition of a hyphen, the two letters “am” (which could be understood as an acronym for “Asset Management”) and the generic TLD “.com”, which are not distinguishing features and are thus not sufficient to prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy.

2. With reference to the Respondent’s rights or legitimate interests in the disputed domain name, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to provide any element from which a Respondent’s right or legitimate interest in the disputed domain name could be inferred.
Indeed, the Complainant stated that the Respondent is not related in any way with the Complainant, that the Respondent does not carry out any activity for, nor has any business with the Complainant and that the Complainant has not authorized the Respondent to use its trademark LFPI or to register the disputed domain name. In addition, there is no evidence that the Respondent might be commonly known by the disputed domain name.

In light of the use of the disputed domain name to redirect users to a parking page with sponsored links related to the Complainant’s field of activity as well as in connection with an email address used to deliver phishing communications passing off as the Complainant, the Panel finds that the Respondent has clearly not used the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate non-commercial or fair use.

3. As to bad faith at the time of the registration, the Panel finds that, in light of the prior registration and use of the Complainant’s trademark LFPI in connection with the Complainant’s investment and asset management services, the Respondent was or could have been aware of the Complainant’s trademark.

The Respondent’s redirection of the disputed domain name to a website with sponsored links related to Complainant’s field of activity (as shown by the screenshot in Annex to the Complaint) and the use of the disputed domain name as email address to deliver phishing communications passing off as the Complainant clearly shows that the Respondent was indeed well aware of the Complainant’s trademark and registered the disputed domain name with such trademark in mind.

The Panel notes that the Respondent’s use of the disputed domain name in connection with a parking page with commercial links amounts to bad faith under paragraph 4(b)(iv) of the Policy, since the Respondent intentionally attempted to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its web site.

With reference to the current redirection of the disputed domain name to an inactive website, as established in a number of prior cases, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding.

Moreover, the Respondent’s use of the disputed domain name for an email address used to deliver phishing communications impersonating the Complainant (as evidenced by an example of fraudulent communication submitted as Annex to the Complaint) and the indication of the Complainant’s address in the public Whois records clearly indicates that the Respondent used the disputed domain name in bad faith, to pass off as the Complainant and extort personal information and payments to recipients of its email communications.

In view of the above, the Panel finds that the Complainant has proven that the Respondent registered and used the disputed domain name in bad faith.