Harris Associates, L.P. v Sergey Glukhov

WIPO Case No. D2025-1571

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Harris Associates, L.P. v. Sergey Glukhov

Case No. D2025-1571

1. The Parties

The Complainant is Harris Associates, L.P., United States of America (“United States”), represented by MIIP

MADE IN IP, France.

The Respondent is Sergey Glukhov, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <oakmark-am.com> is registered with Beget LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2025. On April 22, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2025, 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.

On April 29, 2025 the Center informed the Parties in Russian and English that the language of the registration agreement for the disputed domain name was Russian. On April 29, 2025, the Complainant confirmed its request the language of the proceeding to be English. The Respondent did not submit any comments on the Complainant’s request about the language of the proceeding.

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 in Russian and English of the Complaint, and the proceedings commenced on May 5, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2025.

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The Center appointed Assen Alexiev as the sole panelist in this matter on May 28, 2025. 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 is an investment management company. It is the investment adviser to The Oakmark
Funds and manages domestic equity, international equity, and balanced portfolios. As of June 2024, the
Complainant had USD 102 billion under management.

The Complainant is the owner of a number of trademark registrations for OAKMARK (the “OAKMARK trademark”), including the following representative registrations:

−	the United States trademark OAKMARK with registration No. 1995735, registered on August 20, 1996 for services in International Class 36; and
−	the European Union trademark OAKMARK with registration No. 006906895, registered on January 16, 2009 for services in International Classes 36.

The Complainant operates its official website at the domain name <oakmark.com>, registered on October
26, 1995. The Complainant’s LinkedIn profile under the name “Harris | Oakmark” has more than 10,000
followers.

The disputed domain name was registered on April 8, 2025. It is currently inaccessible and Internet browsers display warning messages. At the time of filing of the Complaint, the disputed domain name resolved to a landing page of the Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

The Complainant states that the disputed domain name is confusingly similar to its OAKMARK trademark, because it incorporates the trademark in its entirety with the addition of a hyphen and the letters “am”. The Complainant notes that “am” is often used as an abbreviation for “asset management”, which is descriptive of

the Complainant’s operations.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Respondent is not commonly known under it, there is no relationship between the Parties, and the Complainant has not licensed the Respondent to use the OAKMARK trademark. The Complainant adds that a Google search for “oakmark-am” or “oakmark-am Sergey Glukhov” returns results related only to the Complainant.

The Complainant submits that the Respondent does not engage in any legitimate noncommercial or fair use of the disputed domain name and is not using it in connection with a bona fide offering of goods and services, as the disputed domain name does not resolve to an active website.

The Complainant maintains that the composition of the disputed domain name, which is a combination of the Complainant or suggests sponsorship or endorsement by it. According to the Complainant, any use of the disputed domain name would mislead consumers that the Respondent is affiliated with the Complainant or that its activities are approved by the Complainant.

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The Complainant contends that the disputed domain name was registered and is being used in bad faith. the OAKMARK trademark, which is well-known in the financial sector and enjoys a wide reputation.

According to the Complainant, the disputed domain name was registered to create confusion in the mind of consumers and to carry out unlawful activities. The Complainant notes that the disputed domain name has mail exchange (“MX”) servers activated, so there is a risk that it may be used for phishing or scam, given the

field of activity of the Complainant in the financial services sector. In the Complainant’s view, an email campaign may be very detrimental to the Complainant’s clients. The Complainant adds that the Respondent is likely to have provided false information when registering the disputed domain name, considering that the email address indicated by it does not correspond to its name, and the Respondent’s physical address seems to not exist based on searches conducted using online maps.

originating from an address at the disputed domain name is likely to be regarded as originating from the

B. Respondent

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

6. Discussion and Findings

6.1. Procedural Issue - Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Russian. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requests that the language of the proceeding be
English with the arguments that the “.com” Top-Level Domain in which the disputed domain name is
registered targets consumers from all over the world, that English is the international business language, that
the disputed domain name is registered in Latin characters, rather than Cyrillic script, and that neither the
Complainant nor its counsel are fluent in Russian, so there would be significant expenses and delay if the
Complaint and its Annexes would have to be translated into Russian.

The Respondent did not object to the Complainant’s request regarding the language of the proceeding and did not bring to the attention of the Panel any reasons why the use of English would be unfair, inappropriate or inefficient.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as their ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered the matters above and the circumstances of this proceeding, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2. Substantive Issues

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

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The Complainant has shown rights in respect of the OAKMARK trademark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The Panel finds the OAKMARK trademark is recognizable within the disputed domain name. Accordingly,
the disputed domain name is confusingly similar to the OAKMARK trademark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here, “am”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the OAKMARK trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The disputed domain name incorporates the distinctive OAKMARK trademark of the Complainant in combination with the element “am”, which Internet users, more so those that have an interest in the financial services sector, may understand as an abbreviation for “asset management”, which is the core activity of the Complainant. Internet users are therefore likely to understand the disputed domain name as denoting an online location related to the asset management services offered by the Complainant under the OAKMARK trademark. Moreover, the disputed domain name has MX records configured, so recipients of email communications from email accounts set up with the disputed domain name may well believe such communications to be originating from the Complainant.

Considering the above and the absence of any plausible explanation by the Respondent of the reasons why it has registered the disputed domain name and of its plans how to use it, the Panel accepts as more likely than not that the Respondent has registered the disputed domain name targeting the Complainant and its distinctive OAKMARK trademark as part of a plan to achieve commercial gain or other commercial advantage. Such conduct would not give rise to rights or legitimate interests in the disputed domain name.

The Panel finds the second element of the Policy has been established.

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C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not hundred billion USD, the composition of the disputed domain name, which combines the Complainant’s trademark with what appears to be an abbreviation for “asset management” - the core business of the Complainant, the fact that the disputed domain name has MX records activated, and the fact that the Respondent has not submitted a Response in this proceeding and has not provided any plausible explanation of its actions. Considering the above, the Panel finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.
prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having

reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s

The Panel finds that the Complainant has established the third element of the Policy.

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 <oakmark-am.com> be transferred to the Complainant.

/Assen Alexiev/
Assen Alexiev
Sole Panelist
Date: June 5, 2025