Westmore · UDRP DecisionPershingclearing.com
The Panel ordered transfer of <pershingclearing.com>. It found the domain confusingly similar to Complainant’s PERSHING marks because it incorporated PERSHING in full and added the descriptive term “clearing,” a service offered by Complainant. The Panel further found no rights or legitimate interests because the domain was used in connection with fraudulent activity, and found bad-faith registration and use based on an intentional attempt to attract Internet users for fraudulent pecuniary gain through confusion with Complainant’s mark.
The timeline behind pershingclearing.com
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This decision illustrates a strong UDRP fact pattern in which a trademark is combined with a term describing the complainant’s own financial service and the resulting domain is used in an impersonation-based fraud. The Panel treated the fraudulent use as fatal to any claim of rights or legitimate interests and as direct evidence of bad-faith commercial targeting.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pershing Investments, LLC v. Contact Privacy Inc. Customer 0151083228 / Robert Pysk, Pershing Clearing Case No. D2018-2319 1. The Parties Complainant is Pershing Investments, LLC of New York, New York, United States of America (“United States”), represented by Reed Smith LLP, United States. Respondent is Contact Privacy Inc. Customer 0151083228 of Toronto, Canada / Robert Pysk, Pershing Clearing of Los Angeles, California, United States. 2. The Domain Name and Registrar The disputed domain name <pershingclearing.com> is registered with Tucows Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 23, 2018, 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 October 25, 2018. 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 October 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 20, 2018. The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on December 5, 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. 4. Factual Background Complainant is a wholly-owned subsidiary of the Bank of New York Mellon Corporation (“BNY Mellon”) and offers financial products and services under numerous marks incorporating the mark PERSHING, including PERSHING (e.g. United States trademark with registration number 2,245,524, registered on May 18, 1999), PERSHING ADVISOR SOLUTIONS, THE PERSHING PRESS, THE POWER OF PERSHING, PERSHING NEXUS, PERSHING NUCLEUS and several others. Complainant has 23 offices and 1,400 clients in 40 different countries. Complainant provides services related to clearing and custody, investment and retirement solutions, enterprise data management, trading services and prime brokerage. Since 2008, Complainant has been recognized as the top clearing firm in the United States by Investment News. In addition, Complainant is now the industry’s largest provider of clearing and settlement solutions. Complainant owns hundreds of trademark registrations for its marks throughout the world, including in Canada and the United States. Complainant submitted registration records for a representative sample of its worldwide registrations. Complainant also owns more than 200 domain names incorporating the PERSHING mark, including <pershing.com>, <pershingadvisorsolutions.com>, <pershing.broker>, <pershing.finance>, <pershing.investments>, <pershing.trading> and many others. Respondent acquired ownership of the disputed domain name on March 27, 2018. Shortly thereafter, on April 13, 2018 and May 14, 2018, Complainant sent letters to Respondent requesting transfer of the disputed domain name to Complainant. Respondent failed to respond to Complainant’s letters. On April 16, 2018, Complainant also sent a demand letter to the internet service provider for the disputed domain name. Although the ISP removed the infringing content on the website located at the disputed domain name, it was put back up on or around May 1, 2018. Complainant then sent a second demand letter to Respondent on May 14, 2018. Sometime thereafter, the website content was once again taken down. In addition to listing Complainant’s mark on the website, the disputed domain name previously listed Amkort Investments as one of the underlying service providers. Complainant’s investigation discovered that Amkort Investments is a fake investment firm that, until recently was falsely advertising itself as a member of Securities Investor Protection Corporation and Financial Industry Regulatory Authority, Inc. and a broker of BNY Mellon products. Complainant notified the Federal Bureau of Investigation and United States Securities and Exchange Commission about these fraudulent activities and also discovered that several individuals had mistakenly wired money to Amkort believing Amkort was Complainant. The fraudulent wire instructions sent by Amkort identified Complainant and listed Complainant’s address. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is identical or confusingly similar with Complainant’s trademarks, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent has registered and used the disputed domain name in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Paragraph 15(a) of the Rules instructs the Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar Complainant has demonstrated that it has rights in the trademark registrations incorporating its PERSHING mark as referenced above. The disputed domain name incorporates Complainant’s mark in its entirety. The disputed domain name adds only the word “clearing,” a term identifying one of the services provided by Complainant under its PERSHING mark. This term adds no distinguishing feature. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks. B. Rights or Legitimate Interests Complainant contends that Respondent is not referred to or commonly known by the name Pershing and has no legal relationship with Complainant. Complainant has never licensed or otherwise permitted Respondent to use the PERSHING marks or apply for or use any domain names that incorporate or are similar to Complainant’s marks. Respondent has no identifiable history of using the disputed domain name in connection with a bona fide offering of goods or services. Rather, Respondent appears to have registered the disputed domain name as part of an elaborate fraud designed to victimize Complainant and Complainant’s customers. Respondent has used the disputed domain name to divert consumers from Complainant’s to Respondent’s website, and to perpetrate a fraud that resulted in several individuals mistakenly wiring hundreds of thousands of dollars internationally. Such illegitimate activity can never confer rights or legitimate interests on Respondent. The Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith By registering the disputed domain name, Respondent has demonstrated a knowledge of and familiarity with Complainant’s well-known trademark and business. The evidence of record indicates that Respondent has registered and used the disputed domain name for fraudulent purposes. The Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark for Respondent’s own fraudulent pecuniary gain. Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith. 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 <pershingclearing.com> be transferred to Complainant. Lynda Zadra-Symes Sole Panelist Date: December 19, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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