Legatum Limited v Name Redacted

WIPO Case No. D2024-3879

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Legatum Limited v. Name Redacted

Case No. D2024-3879

1. The Parties

The Complainant is Legatum Limited, United Arab Emirates, represented by Cleveland Scott York LLP,

United Kingdom.

The Respondent is Name Redacted.[1]

[1]The named registrant contacted the Center claiming that the disputed domain name was registered by a third party without its

2. The Domain Name and Registrar

The disputed domain name <legatum-ltd.com> is registered with 123-Reg Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 4, 2024.

2024. On September 24, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On September 24, 2024, 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 (Registration Private, Domains By Proxy, LLC)
and contact information in the Complaint. The Center sent an email communication to the Complainant on

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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 the Respondent of the 5, the due date for Response was October 27, 2024. On October 7 and October 18, 2024, the Center received email communications from a person named like the Registrar-confirmed registrant indicating that the registration of the disputed domain name had been made without its knowledge or authorization by a third party. A person using the disputed domain name sent email communications to the Center on October 29, 2024.

The Center appointed Luca Barbero as the sole panelist in this matter on November 4, 2024. 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 part of a group which is a private investment partnership, with offices in London and Dubai, specialized in investing its own capital for large-scale philanthropic endeavors in areas such as healthcare (in particular Neglected Tropical Diseases), education and countering modern slavery and human trafficking.

The Complainant was incorporated in the Dubai International Financial Centre (“DIFC”), United Arab
Emirates on October 11, 2004, and changed its name to Legatum Limited on October 30, 2005.

The Complainant is part of the Legatum Group and the owner of trademark registrations for LEGATUM. The other entities within the Legatum Group use the LEGATUM trademark under license from the Complainant.

The Complainant has provided evidence of ownership, amongst others, of the following trademark registrations for LEGATUM (Annex 3 to the Complaint):

- United Kingdom trademark registration No. UK00002429891 for LEGATUM (word mark), filed on August

14, 2006, and registered on May 25, 2007, in classes 16, 25, 33, 35, 36, 37, 39, 41, 43 and 45;

- United States of America (“United States”) trademark registration No. 3540408 for LEGATUM (word mark),
filed on August 10, 2006, and registered on December 2, 2008, in International Classes 16, 25, 35, 36, 37,

39, 41, 43 and 45.

The Complainant claims it is also the owner of the domain name <legatum.com>, which was registered on
June 22, 2003, and is used by the Complainant to promote its services under the trademark LEGATUM.

The disputed domain name <legatum-ltd.com> was registered on September 8, 2020, and is currently not pointed to an active website. According to the screenshots submitted by the Complainant – which have not been challenged by the Respondent -, prior to the present proceeding, the disputed domain name resolved to a website promoting a purported business named “Legatum Limited” specialized in financial and accounting consultancy services. The website displayed a Dubai telephone number apparently associated with a third party and a care of postal address in Seychelles.

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5. Parties’ Contentions

A. Complainant

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

Notably, the Complainant contends that the disputed domain name is confusingly similar to the trademark LEGATUM in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of a hyphen, the term “ltd” (acronym of “limited”) and the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: i) the Complainant has not licensed or otherwise permitted the Respondent to use its trademark LEGATUM; ii) the Respondent masked its identity to avoid being contacted; iii) the disputed domain name is not being used in connection with a bona fide offering of goods or services; and iv) the

Respondent has no trademark or service mark rights in LEGATUM and is not commonly known by the disputed domain name.

The Complainant also submits that the Respondent registered the disputed domain name to impersonate the Complainant and mislead Internet users by diverting them to the Respondent’s website. The Complainant further asserts that, according to its searches, the name and contact details provided on the website to which the disputed domain names resolved are false.

The Complainant states that by registering the disputed domain name, the Respondent was most likely seeking to profit from the Complainant’s established brand to divert consumers to the Respondent’s website and force the Complainant to purchase the disputed domain name from the Respondent.

With reference to the circumstances evidencing bad faith, the Complainant submits that, considering i) in
2012, the Complainant purchased a 128,000 square foot Precinct Building at the DIFC (later renamed
“Legatum Plaza”) which is now the Complainant’s headquarters; ii) the Respondent fabricated the content of
its website to include references to the financial services sector in Dubai; and iii) the Complainant is well
renowned in the United Arab Emirates, United Kingdom and United States, it is inconceivable that the
Respondent had no knowledge of the Complainant at the time of registering the disputed domain name.

The Complainant contends that the Respondent had actual knowledge of the Complainant’s rights when it registered the disputed domain name and that it registered and used the disputed domain name in bad faith since: i) the disputed domain name was registered for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant; ii) the Respondent purposely registered the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain name and unfairly disrupting the business of the Complainant; and iii) the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website.

B. Respondent

As indicated in the Procedural History, on October 7 and October 18, 2024, the Center received email communications from a person named like the Registrar-confirmed registrant indicating that the registration of the disputed domain name had been made without its knowledge or authorization by a third party.

An entity claiming to be the owner of the disputed domain name sent email communications to the name and also appearing at the website associated with the disputed domain name - on October 29, 2024. In such communications, it indicated that it had been given the contact details of the Complainant’s representative by the service provider who registered the disputed domain name in 2022, that it registered a

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company name with the same name as the Complainant and its domain name without knowledge of the Complainant’s trademark registrations. It also stated that it was willing to surrender the disputed domain name and change its company name. It further stated that it had initiated the process for the change of name, but the process may have taken up to 4 weeks. The Panel notes that the email communication has

been submitted through an email connected to the disputed domain name by an entity named “Legatum
Limited”, which differed from the registrant of the disputed domain name. Noting that the disputed domain
name is being used by an entity different from the named registrant, the Panel will refer to this entity as the

Respondent.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the

following:

(i)        that the disputed domain name registered by the Respondent is identical or confusingly similar to a

trademark or service mark in which the Complainant has rights;

(ii)       that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      that the disputed domain name has been registered and is being used in bad faith.

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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. trademark registrations for LEGATUM.

The entirety of the LEGATUM mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of the term “ltd” (which can be interpreted as an acronym of “limited”), 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 mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

In addition, the gTLD “.com” can be disregarded under the first element confusing similarity test, being a standard registration requirement. WIPO Overview 3.0, section 1.11.1.

Therefore, 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.

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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 Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark.

Although the disputed domain name does not currently resolve to an active website, prior to the present and concludes there is no sufficient evidence before the Panel to find that the Respondent is commonly known by the disputed domain name. The Panel also notes that, should the company “Legatum Limited” have been actually incorporated, the incorporation of a company without further evidence of a legitimate business cannot give rise to rights or legitimate interests. The Panel further notes the Respondent’s statement that it is “willing to surrender the domain name and change the name of [its] company” suggests that the Respondent itself was aware of the fact that the composition of the disputed domain name could mislead Internet users into believing that the website is operated or endorsed by the Complainant.
proceeding it was pointed to a website promoting a business purportedly named “Legatum Limited”, allegedly
providing consulting services in the financial sector. The Panel notes it is unclear whether a company
named “Legatum Limited” was actually incorporated - as it was referenced on the website to which the
disputed domain name resolved as “Legatum Limited”, c/o Rogers Capital Corporate Services (Seychelles)

In view of the above-described use of the disputed domain name, the Panel finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use without the intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Therefore, the Panel finds that the Complainant has established the second element of the Policy as well.

C. Registered and Used 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.

In the present case, the Panel finds that, in light of i) the prior registration and use of the trademark “ ii) the distinctiveness of the LEGATUM mark in its sector; iii) the composition of the disputed domain name, combining the Complainant’s LEGATUM mark with the term “ltd” (abbreviation for “limited”) and corresponding to the Complainant’s company name; and iv) the content of the website initially published at the disputed domain name, promoting financial consultancy services, displaying a Dubai telephone number and the indication that one of the two members of the Respondent’s team has lived and

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worked in Dubai, the Respondent was more likely than not aware of the Complainant and the LEGATUM
trademark at the time of registration of the disputed domain name.

In view of the prior use of the disputed domain name in connection with the website described above, using the Complainant’s trademark LEGATUM to promote consultancy services in the same field of activities in which the Complainant operates, on the balance of probabilities, the Panel finds that the Respondent intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website according to paragraph 4(b)(iv) of the Policy.

As to the fact that the disputed domain name does not resolve to an active website at the time of the drafting of the Decision, panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non- use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness of the Complainant’s trademark, the composition of the disputed domain name, the Panel’s conclusion regarding the prior use of the disputed domain name, and that it appears to have provided partly unrelated contact details also on the website to which the disputed domain name previously resolved, the Panel finds that the current passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Therefore, the Panel finds that the Complainant has also 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 <legatum-ltd.com> be transferred to the Complainant.

/Luca Barbero/
Luca Barbero
Sole Panelist
Date: November 18, 2024

this communication, the Panel has redacted the 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 disputed domain name, which includes the name of the

knowledge or authorization, he has never made any application to have the disputed domain name registered in his name. In light of 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.