Decisión del Panel Administrativo nº D2021-2297 of WIPO Arbitration and Mediation Center, October 10, 2021 (case M31 Management Limited v. Nathan Montone)
| Resolution Date | October 10, 2021 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Complaint denied with dissenting and concurring opinion |
| Dominio | Generic Domains |
The Complainant is M31 Management Limited, China, represented by Baker & McKenzie, China.
The Respondent is Nathan Montone, United States of America (“United States”), represented by Sullivan & Worcester LLP, United States.
The disputed domain name [m31.capital] is registered with Automattic Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2021. On July 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2021, 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 the Complainant on July 19, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 20, 2021.
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 Complaint, and the proceedings commenced on July 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2021. The Response was filed with the Center August 13, 2021.
The Center appointed Reyes Campello Estebaranz, Dr. Hong Xue and Gary J. Nelson as panelists in this matter on September 6, 2021. The Panel finds that it was properly constituted. Each member of 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.
On September 13, 2021, the Panel issued a Panel Order (Panel Order No. 1) requesting the Parties further clarification and evidence regarding: (i) whether or not the Complainant operates and/or has a location or another type of presence and/or promotion in the United States, and whether the content of its corporate website (linked to its domain name [m31capital.com]) was the same at the time of the registration of the disputed domain name or it was different; and (ii) whether the Respondent or any of its companies operate and/or has a location or any other type of presence and/or promotion in China, and whether the content of its corporate website (linked to the disputed domain name) was the same when it was first linked to the disputed domain name. Panel Order No. 1 indicated September 18, 2021, as a common deadline to the Parties for their responses.
On September 17, 2021, the Respondent responded to the Panel Oder No. 1. On September 18, 2021, the Complainant responded to the Panel Order No.1. On September 20, 2021, the Respondent forwarded to the Center a supplemental filing. On September 21, 2021, the Complainant forwarded an email communication to the Center expressing its objection to the Respondent’s unsolicited supplemental filing.
The Complainant is a company incorporated in Shanghai under the laws of China on August 10, 2016, and further incorporated under the laws of the Cayman Islands, United Kingdom, on April 30, 2019, with the same company name. The Complainant is active in the financial and investment sectors, being based in Shanghai and Beijing and operating internationally. The Complainant’s core business is providing consultancy and investment services to its global investors, for investing in China’s new technologies and innovative fast growing companies.
The Complainant operates under the trademark M31 (and a stylized version of this mark), which enjoys protection through various registrations thereof internationally, including:
- Chinese Trademark Registration No. 34840656, M31, figurative, registered on October 7, 2019, in class 36;
- Hong Kong, China, Trademark Registration No. 304496374, M31, figurative, registered on April 18, 2018;
- United Kingdom Trademark Registration No. UK00003304581, M31, word, registered on July 13, 2018, in class 36;
- European Union Trademark Registration No. 017889476, M31, word, registered on September 4, 2018, in class 36; and
- United States Trademark Registration No. 5781368, M31, word, registered on June 18, 2019, in class 36, (collectively “the M31 mark”).
The Complainant further owns various domain names comprising the M31 mark,[1] including [m31capital.com] (registered on March 29, 2018), which is linked to its corporate website in English and Chinese languages.
The disputed domain name was registered on September 20, 2019, and it resolves to an active website in English, Chinese and Korean languages, which includes in its heading the M31 mark (being the number 31 placed in a lower level with respect to the letter “m”) and the word “capital”, located in the middle of the site in capital letters. The appearance and colors of the site are a combination of white background with letters in black and grey, being its sections placed in horizontal sequence at the top of the site below the heading, underlying the displayed sections in red. This website offers investment services in cryptocurrencies indicating on its landing site that “M31 Capital is a global investment firm focused exclusively on crypto assets and blockchain technology. We deploy capital on behalf of investors around the world through an active network participation strategy managed by our globally decentralized team […]”, being this text followed by a world map with four points located in New York, San Francisco, Shanghai and Seoul, and indicating the names of these same cities at the top of the map. The contact section of this site further includes a globe map pointing to these same cities (New York, San Francisco, Shanghai and Seoul) and includes a legend indicating, “M31 Capital has operations around the world and a globally decentralized team managing several crypto asset investment products with different strategies and risk profiles”. This website does not include any reference to the Respondent; it mentions the company M31 Capital Management LLC in the copyright of the site, and M31 Capital Partners LP, M31 Ventures and M31 Mining (with no indication of company form of the last two) in the “invest” section of the site. This website includes a “log in” section. This website does not include any legal, privacy or terms of use sections, and no fiscal numbers, addresses, telephone numbers, or other means of communication are provided, the sole contact provided is an email address and a link to a page in LinkedIn.
Key contentions of the Complaint may be summarized as follows:
The disputed domain name is identical to the Complainant’s trademark, being the generic Top-Level-Domain (“gTLD”) irrelevant in the UDRP first element test.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that the Respondent has been commonly known as “M31” or “M31 Capital”, there is no connection between the Parties, and the Respondent has not been authorized to use the Complainant’s trademark.
The disputed domain name was registered and is being used in bad faith. The cumulative circumstances of the case indicate that the Respondent registered the disputed domain name targeting the Complainant and its trademark to take unfair advantage of its prior rights, disrupting the Complainant’s business and intentionally attempting to attract Internet users by creating a likelihood of confusion with the Complainant’s trademark and corporate website for commercial gain.
The M31 mark is used in relation to a variety of services (including insurance consultancy, investment, brokerage, banking, and capital investment fund management services) in various jurisdictions worldwide. Through extensive use and promotion, the Complainant has established substantial goodwill and reputation in the M31 mark and its trading name M31 Capital, which the public identifies with the Complainant and its business. The Complainant is mentioned in various financial publications and has been awarded as top 10 China’s Emerging Venture Capital Institutions in 2020 by China Venture and 2020 China’s Top 10 Most Promising First-Time Funds by 36KR. Furthermore, the term “m31” is not common in the financial sector, the Respondent selected a gTLD (“.capital”) associated to the Complainant’s trade name and domain name [m31capital.com] (linked to the Complainant’s corporate website since March 29, 2018), and the Respondent has used the disputed domain name to offer the same type of services as the main Complainant’s business (investment services).
Due to the notoriety of the M31 mark and the Complainant in the financial and investment sector, the Respondent likely had knowledge of these prior rights when it registered the disputed domain name. The Respondent’s website operates in the same field as the Complainant, uses the M31 mark (with no authorization) and includes and “log in” section for potential investors, closely resembling the Complainant’s official website.
The Complainant has cited previous decisions under the Policy and various sections of the [WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Editio]n, (“[WIPO Overview 3.0]”) that it considers...
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