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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Carlyle Group v. Carlyle Coutts Capital Corporation

Case No. D2008-1960

1. The Parties

The Complainant is The Carlyle Group of London, United Kingdom of Great Britain and Northern Ireland, represented by Lovells LLP, Germany.

The Respondent is Carlyle Coutts Capital Corporation of Vancouver, Canada, represented by Lawrence B. Heath QC, Canada.

2. The Domain Names and Registrar

The disputed domain names, <carlyle-coutts.com> and <carlylecoutts.com> are registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2008. On December 24, 2008, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain names. On December 29, 2008, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2009. The Response was filed with the Center on January 26, 2009.

The Center appointed John Swinson as the sole panelist in this matter on February 4, 2009. 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 a large private equity firm and is the registered owner of the European Community trademark THE CARLYLE GROUP (registration number EM00233569) which was filed on April 1, 1996.

The Respondent is a private holding company that was set up to structure loans for private projects.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

The disputed domain names are identical or confusingly similar to the Complainant’s THE CARLYLE GROUP trademark

The Complainant submits that the disputed domain names are identical or confusingly similar to both the Complainant’s THE CARLYLE GROUP registered trademark and the designation “Carlyle” which it claims to have unregistered trademark rights to.

“Carlyle” is generally associated by the public with the Complainant and is the distinctive part of the Complainant's trademark THE CARLYLE GROUP. The disputed domain names contain the designation “Carlyle” as their leading term.

The addition of the word “Coutts” does not eliminate the impression that the disputed domain names are associated with the Complainant. The term “Coutts” refers to the private banking arm of The Royal Bank of Scotland Group. Previous panels have decided that the addition of a third party mark to the complainant’s trademark does not exclude the confusing similarity between the complainant's trademark and the disputed domain name containing that mark.

Moreover, both Carlyle and Coutts are operating in the financial sector, and in 2002, they even engaged in a partnership (Coutts Private Equity Limited Partnership), offering a private equity fund to private investors at Coutts. Therefore, the combination of the two marks Carlyle and Coutts will therefore rather increase than exclude the likelihood of confusion between Carlyle's trademark and the disputed domain names.

The Respondent has no rights or legitimate interests in respect of the disputed domain names

The Respondent does not use the disputed domain names for a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of them. Furthermore, the Respondent is not, and never has been, a representative or licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant’s marks.

Under the domain names, the Respondent is operating a website on which it currently presents the “One World Financial Solutions S.A.”. On this website, the Respondent is offering asset management and financial expertise. The fact that the disputed domain names are used for the presentation of a company whose corporate name does not contain the terms “Carlyle” or “Coutts” indicates that the Respondent has no legitimate interest in the domain names.

The disputed domain names were registered and are being used in bad faith

The combination of the “Carlyle” mark with the designation “Coutts” in the disputed domain names is no coincidence. Both the Complainant and Coutts are operating in the financial sector, and the Respondent registered the domain names in order to launch a website offering financial services and to thus wrongfully benefit from the Complainant's and Coutts' notoriety.

Since the disputed domain names <carlylecoutts.com> and <carlyle-coutts.com> are confusingly similar to the Complainant’s designation “Carlyle” and are used for a website on which financial services are offered, it is evident that the Respondent is trying to attract internet users by creating a likelihood of confusion with the Complainant's famous brand “Carlyle”. This is also evidenced by the fact the Respondent had knowledge of the Complainant’s trademark when registering the domain names. The Respondent was obviously well aware that it is very likely that internet users looking for an official “Carlyle” website will be misled to the Respondent’s websites. As the domain names are also used for the financial sector, Internet users might be misled to think that the content of the websites originates from the Complainant (and Coutts).

B. Respondent

The Respondent contends that:

The disputed domain names are not identical or confusingly similar to the Complainant’s THE CARLYLE GROUP trademark

The disputed domain names contain the designation “Carlyle” and “Coutts” which is used to identify the full name of the company of which it operates as, namely Carlyle Coutts Capital Corporation.

Although, previous panels decide that the addition of a third party mark does not exclude the confusing similarity between the Complainant's trademark and the disputed domain name containing that mark, the cases referenced by the Complainant were mergers and not partnerships. Both The Carlyle Group and The Royal Bank of Scotland Group engaged in a partnership in 2002, two years after the launch of Carlyle Coutts Capital Corporation.

The Respondent has rights or legitimate interests in respect of the disputed domain names

Carlyle Coutts Capital Corporation is an amalgamation of several companies. It was started in Toronto in 2000 to set up structure loans for private projects. The founding members are Lawrence B. Heath QC, J. Douglas Crashley and Janet Carlyle Heath. The Heath family can be traced back to the Carlyle family name in England and the Crashley name can be traced back to the Coutts family in Ireland which was the origin of the company name.

Carlyle Capital Corporation, a managed fund of the Complainant, defaulted on $16.6 billion dollars in March 2008. The Respondent has been operating a website that presents “One World Financial Solutions S.A.” and as of December of 2008 began referencing “One World Financial Solutions S.A.” on the disputed domain names as result of the issues caused by the financial woes of Carlyle Capital Corporation.

The disputed domain names were not registered and are not being used in bad faith

The disputed domain names were registered after the Respondent was created, based on the family names of the founding members, which was not in bad faith and in no way was representative of the Complainant and its business practices. The Respondent is in the financial industry, but the Respondent clearly does not solicit or accepts public funds whereas the Complainant does.

The goodwill and recognition of the Respondent has been built within private companies to build and structure private projects and maintains it has no interest in the type of business that the Complainant and The Royal Bank of Scotland deal in.

6. Discussion and Findings

To succeed, the 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 the complainant has rights; and

(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 onus of proving these elements is on the complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have rights in a trademark or service mark, and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark or service mark.

The Complainant is the registered owner of a European Community trademark for THE CARLYLE GROUP (registration number EM00233569) which was filed on April 1, 1996. The Panel is therefore satisfied that the Complainant has registered trademark rights in the words THE CARLYLE GROUP.

The Complainant also submitted that it had common law rights in the word “Carlyle”. The Panel was unable to conclude, from the information provided in the Complaint, whether the Complainant had common law rights in the word “Carlyle” alone.

Numerous prior decisions have determined that when a domain name incorporates a complainant’s trademark and merely adds another trademark or the name of another company, the domain name can be confusingly similar to the complainant’s trademark (see Chevron Corporation v. Young Wook Kim WIPO Case No. D2001-1142 and Société des Produits Nestlé SA v. Stuart Cook WIPO Case No. D2002-0118). On the facts of this case, the distinctive part of the Complainant’s registered trademark is “Carlyle”. The disputed domain names use the distinctive aspect of the Complainant’s trademark and add the name “Coutts” which is the brand of the private banking arm of the Royal Bank of Scotland Group. The Panel also notes that both the names “Carlyle” and “Coutts” are associated with provision of financial services, and the fact that both companies have engaged in a business partnership. The Panel considers that the disputed domain names are confusingly similar to the Complainant’s THE CARLYLE GROUP trademark.

The Panel is not persuaded by the Respondent’s argument that the decisions referred to above were concerned with domain names that incorporated the trademarks of companies who had merged as opposed to companies who had entered into a partnership. The Respondent has used the distinctive aspect of the Complainant’s trademark and merely added the name of another organization in the financial industry. The fact that the Complainant and Coutts had entered into a partnership, and not a merger, does not impact on a finding that the disputed domain names are identical or confusingly similar to the Complainant’s trademark. See, for example, Schott Glas and Nec/Schott Components Corp. v. Necschott, WIPO Case No. D2001-0127; Saab Automobile AB et al. v. Joakim Nordberg, WIPO Case No. D2000-1761, and note also National Hockey League And Lemieux Group Lp v. Domain For Sale, WIPO Case No. D2001-1185.

The Panel therefore finds that, in the circumstances of this case, the disputed domain names are identical or confusingly similar to the Complainant’s THE CARLYLE GROUP trademark. Consequently, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Respondent’s legal name is “Carlyle Coutts Capital Corporation”. Therefore, the question arises as to whether the Respondent has rights or legitimate interests in the disputed domain names pursuant to Paragraph 4(c)(ii) of the Policy.

While the Respondent’s corporate name is “Carlyle Coutts Capital Corporation”, the Respondent provided little evidence that the Respondent is commonly known by that name or the names “Carlyle Coutts” or “Carlyle-Coutts” (these being the terms used in the two disputed domain names).

The Respondent provided a certificate of incorporation from British Columbia to show that it is named “Carlyle Coutts Capital Corporation”. Such a certificate, however, is not of itself conclusive.

In Banco EspГ­rito Santo S.A. v. Bancovic, WIPO Case No. D2004-0890, the Panelist stated:

Since a “legitimate interest” is sufficient in order to defeat a Complaint under the Policy, a Panel must be careful when considering whether or not a claim by the Respondent that he or she has “been commonly known” by the domain name is legitimate. It is not sufficient for the Respondent to merely assert that he or she has been commonly known by the domain name in order to show a legitimate interest. The Respondent must produce evidence in order to show that he or she has been “commonly known” by the domain name.

See also Rothschild Bank AG, N M Rothschild & Sons Limited and Rothschild Continuation Holdings AG v. Rothchild Corporation and Rothchild Internet Development Corporation SA de CV/ Joseph Martin Rothchild, WIPO Case No. D2001-1112; and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.

Presently, the websites at the disputed domain names are not functioning. However, it is accepted by both parties that, at the time the Complaint was filed, the disputed domain names resolved to “www.one-world-financial-solutions.com” which is operated by One World Financial Solutions S.A. The Respondent did not provide any evidence as to their relationship with One World Financial Solutions S.A but from the website it appears that they are either a subsidiary, related company or partner of the Respondent.

The website “www.one-world-financial-solutions.com” briefly mentions the Respondent but entirely advertises its own services. The structured loans services that the Respondent claims to offer appear to be offered entirely by One World Financial Solutions S.A.

From various websites viewed by the Panel, it appears that the Respondent is a real business, operating under the name “Carlyle Coutts Capital Corporation”, with a physical office in Toronto and an associated company Carlyle Coutts Capital Corporation SA in Panama. There is on the present record no reason for the Panel to believe that the certificate of incorporation provided by the Respondent is anything but genuine. Although the evidence produced by the Respondent in its pleadings may be limited, it seems plausible to the Panel that the Respondent could be commonly known by the name “Carlyle Coutts Capital Corporation”.

However, for the reasons discussed below, it is ultimately not necessary for the Panel to determine here whether the Respondent has rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy, as the Complaint fails on the issue of bad faith.

C. Registered and Used in Bad Faith

The Complainant submits that the Respondent registered the disputed domain names to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion between the disputed domain names and THE CARLYLE GROUP trademark.

In response, the Respondent submitted that its corporate name, “Carlyle Coutts Capital Corporation” derives from the names of its founders Lawrence B. Heath QC, J. Douglas Crashley and Janet Carlyle Heath.

On balance, the Panel has come to the conclusion that the Respondent did not register the disputed domain names to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion between the disputed domain names and THE CARLYLE GROUP trademark. It is of course possible that the Respondent could have established its corporate name to somehow reflect the reputation of or confuse the public as to its association with the Complainant. But the Complainant does not make this allegation and on the provided record the Panel does not find it to be probable. The Panel finds that in this case, the disputed domain names were more likely registered to reflect the corporate name of the Respondent, and not in bad faith.

The Respondent made plausible submissions as to why it selected “Carlyle Coutts Capital Corporation” as its corporate name. However, the Respondent was less convincing when it asserted that the Respondent has a genuine connection to the names “Carlyle” and “Coutts”. The Respondent did not for example supply evidence to support its assertion that the Heath family can be traced back to the Carlyle family name in England and the Crashley name can be traced back to the Coutts family in Ireland.

The only apparent connection the Respondent has to the Carlyle name is that it is the middle name of Jayne Carlyle Heath who is supposedly one of the founding members However, on the website “www.one-world-financial-solutions.com”, Jane Carlyle Heath was not listed as a founding member of the Respondent.

In any event, although it might have assisted its case, the Respondent is not required to provide evidence as to why it selected its corporate name. The onus is on the Complainant to show that the Respondent registered and is using the domain name in bad faith. “Carlyle Coutts Capital Corporation” is the Respondent’s real corporate name, and it apparently traded under this name for a number of years. It appears that the Complainant’s real concern may be the use of this corporate name, but that is not the subject of these proceedings. The policy is intended to provide redress in clear cases of cybersquatting, and it is not at all clear to the Panel that this is such a case.

The disputed domain names now resolve to One World Financial S.A.’s website “as result of the issues caused by the financial woes of Carlyle Capital Corporation”. It appears that the Complainant is in financial difficulties, and that the Respondent was receiving a significant number of emails that were intended for the Complainant. Accordingly, it appears that the Respondent changed email addresses so as not to receive emails intended for the Complainant.

The website located at “www.carlyle-coutts-capitalcorporation.com” currently states:

“Carlyle Coutts Capital Corporation S.A. is not owned by; associated with; nor affiliated with; nor have we ever conducted any form of business with “The Carlyle Group”, “Carlyle Capital Corporation” or “Carlyle Capital Assets”. Carlyle Coutts Capital Corporation S.A. is a private holding company and does not accept deposits, solicit funds nor manage any form of cash or money from the public.

“Urgent announcement & legal disclaimer”

Due to the adverse and negatory publicity that has been generated by “Carlyle Capital Corporation” (which also is an investment unit of the Carlyle Group) and is using a similar name of Carlyle Coutts Capital Corporation S.A., we are now forced to cease from using our Carlyle Coutts email address.

Based on the recent internet information on “Carlyle Capital Corporation” (which is an investment unit of the Carlyle Group) we are now receiving hundreds of email each day from angry investors looking for Carlyle Capital Corporation (which is an investment unit of the Carlyle Group) and this is blocking other email for us

…

The web sites of www.carlyle-coutts.com and www.carlylecoutts.com will cease to exist as of january 6, 2009. Carlyle Coutts Capital Corporation S.A. is a member of “One World Financial Solutions S.A.”

For better & faster service, please take note of email address change as follows:

From my.name@carlyle-coutts.com and my.name@carlylecoutts.com

To my.name@carlyle-coutts.com.pa

One World Financial Solutions, S.A.

www.one-world-financial-solutions.com”

Having regarded to all of the above circumstances the Panel is not persuaded on the present record that the disputed domain names were registered by the Respondent in bad faith. It may be that the Complainant, if indeed it were to have underlying concerns about the use by the Respondent of its corporate name, may wish to pursue possible options outside of the limited scope of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

---

John Swinson
Sole Panelist

Dated: February 19, 2009