CLI Capital v. Clicapital Investment / Cliinvestments
Claim Number: FA2001001881475
Complainant is CLI Capital (“Complainant”), represented by Christian D. Stewart of CLI Capital, Texas, USA. Respondent is Clicapital Investment / Cliinvestments (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cliinvestmentgroup.us>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on January 31, 2020; the Forum received payment on January 31, 2020.
On January 31, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <cliinvestmentgroup.us> domain name (the Domain Name) is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On February 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of February 24, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cliinvestmentgroup.us. Also on February 4, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 2, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
On March 6, 2020, in response to a Request from the Panel, Complainant filed an Additional Submission which was found to comply with the Panel’s request and was considered by the Panel.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is in the financing industry. It has rights in the CLI CAPITAL mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,592,375, registered Aug. 26, 2014). Respondent’s <cliinvestmentgroup.us> Domain Name is confusingly similar to Complainant’s CLI CAPITAL mark, as it incorporates the “CLI” leading term, merely adding the descriptive phrase “investment group” and the “.us” country-code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the Domain Name. It is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because its resolving web site impersonates and passes off as Complainant and attempts to solicit payments from customers of Complainant. Respondent is not commonly known by the Domain Name. Complainant has not licensed Respondent to use the CLI CAPITAL mark in any way, nor is Respondent affiliated with Complainant. Finally, Respondent has no federal trademark rights in a mark that is identical to the Domain Name.
Respondent registered and is using the Domain Name in bad faith as it attempts, for commercial gain, to attract Internet users to its web site by creating confusion as to the source, sponsorship, endorsement or affiliation of its web site and impersonates Complainant. Respondent had actual knowledge of Complainant’s rights in the CLI CAPITAL mark when it registered the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
C. Additional Submission—Complainant
On March 6, 2020, in response to a request from the Panel, Complainant filed an Additional Submission which consisted in part of additional argument and also included a copy of a TESS report verifying that there was no record at the USPTO of the trademark CLI INVESTMENT.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision, except where differences in the two policies require a different analysis.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel may accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true), Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The CLI CAPITAL mark was registered to Church Loans and Investments Trust with the USPTO (Reg. No. 4,592,375) on August 26, 2014 and was subsequently assigned to Complainant (Complaint Exhibit A). Complainant’s ownership of this registration is sufficient to establish its rights in that mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). As assignee and owner of the CLI CAPITAL mark, Complainant has sufficient rights in that mark to bring and maintain this proceeding.
Respondent’s <cliinvestmentgroup.us> Domain Name is confusingly similar to Complainant’s CLI CAPITAL mark as it incorporates the dominant CLI element of the mark, merely adding the descriptive phrase “investment group” and the “.us” ccTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). PADI Americas, Inc. v. MPM Administration, FA 1783415 (Forum May 22, 2018) (finding the <padivacations.com> domain name to be confusingly similar to the complainant’s PADI mark: “the inclusion of the suggestive term “vacations” in the at-issue domain name only adds to any confusion between the domain name and Complainant’s trademark since the term suggests Complainant’s travel related services.”), Transamerica Corporation v. Whois Foundation, FA 1700616 (Forum Dec. 5, 2016) (“For the purposes of comparison of the domain name and the trademark, it is agreed by panelists that ccTLDs can generally be disregarded”). The WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, the dominant element of Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the CLI CAPITAL mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(iii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iv) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because its resolving web site impersonates and passes off as Complainant and attempts to solicit payments from customers of Complainant, (ii) Respondent is not commonly known by the Domain Name, (iii) Complainant has not licensed Respondent to use the CLI CAPITAL mark in any way and is not affiliated with Complainant, and (iv) Respondent has no federal trademark rights in a mark that is identical to the Domain Name. These allegations are addressed as follows:
Complaint Exhibit G consists of screenshots of pages from the web site resolving from the Domain Name. The site is commercial in nature and displays the name “CLI INVESTMENT GROUP” adjacent to a diamond-shaped logo consisting of different-colored dots arranged in that pattern. The diamond-shaped logo is identical to Complainant’s logo, which is registered with the USPTO (Complaint Exhibit A), except that the dots in one logo are printed in different colors than those in the other. The font in Respondent’s web site is the same as that in Complainant’s site (Complaint Exhibit F) and the text and layout throughout Respondent’s site is virtually the same as in Complainant’s, purporting to offer the same types of lending services as Complainant. The site even mimics Complainant’s site to the extent of including photos of purported officers of CLI INVESTMENT GROUP, as does Complainant’s site for its officers. Although the name of the sponsor of this site is not identical to Complainant’s name, there is no doubt that Respondent’s site is designed and intended to mimic and impersonate Complainant. An Internet user reaching this site could easily believe that he or she has reached that of Complainant. Using a confusingly similar domain name to pass off as a complainant by featuring a similar logo and services is not a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(ii) or a legitimate noncommercial or fail use for the purposes of and Policy ¶ 4(c)(iv). Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).[i]
Complainant alleges that Respondent is using its web site ”for the purpose of soliciting payments and duping customers of Complainant’s financial services,” but there is no evidence of this appearing from any of the exhibits submitted with the Complaint. Those allegations are not proven.
Complainant states that it has never licensed or authorized Respondent to use its mark in any way and that Respondent is not affiliated with it. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The information furnished to the Forum by the registrar lists the registrant of the Domain Name as “Clicapital Investment / Cliinvestments.” Both of these names are similar to the Domain Name but this does not mean that Respondent has been commonly known by the Domain Name. As discussed above Respondent is not authorized to use Complainant’s mark, and the evidence before the Panel gives no indication that Respondent used these names for any purpose other than to register the Domain Name. Registering a domain name in a name which is similar or identical to the domain name is not, by itself, sufficient to demonstrate that the respondent “has been commonly known by” it for the purposes of Policy ¶ 4(c)(iii). There must be some evidence, independent of the registration, that the respondent used the name in a business or some other undertaking, or that persons have by other means come to associate the respondent with that name. If a person could acquire rights or legitimate interests in a domain name under Policy ¶ 4(c)(iii) simply by registering it in a name similar or identical to the domain name at issue, Policy ¶ 4(c)(iii) would be essentially meaningless. Augusta National, Inc. v. Ryan Carey, FA1758547 (Forum Dec. 21, 2017) (“If a respondent could acquire rights and legitimate interests in a domain name through Policy ¶ 4(c)(ii) by the simple expedient of incorporating the complainant’s mark into the name of his business entity, the intent and purpose of the Policy would be completely frustrated.”), Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). On the evidence before the Panel, it is clear that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
In its Additional Submission, Complainant stated that it conducted a search of the USPTO records and found no record of any registration for the mark CLI INVESTMENT. It submitted a copy of the TESS report confirming this (Complainant Exhibit J). CLI INVESTMENT is not exactly identical to the <cliinvestmentgroup.com> Domain Name but it is substantially so, and the Panel finds that this evidence satisfies the requirement for a prima facie case as to the Policy ¶ 4(c)(i) element. Finally, Respondent has defaulted and there is no evidence in the record that it is the owner or beneficiary of a trademark that is identical to the Domain Name.
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use or registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent ‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration or use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is clearly using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. This fits squarely within the circumstances articulated by Policy ¶ 4(b)(iv) and is clear evidence of bad faith registration and use. Walgreens Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum Jul. 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”), Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Second, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in August 2019 (Complainant Exhibit E establishes the creation date). Complainant’s CLI CAPITAL mark has been used since 2011 (Complaint Exhibit A). Respondent copied the dominant element of that mark verbatim into the Domain Name and uses that element in the name of the entity advertised on the resolving web site, which entity offers the same type of services as Complainant. The extent to which Respondent’s web site mimics and copies Complainant’s site conclusively establishes that Respondent knew of Complainant and its rights at the time of registration. Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cliinvestmentgroup.us> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
March 6, 2020
[i] The cases cited in this section were decided under the Uniform Dispute Resolution Policy (UDRP), which does not include the provisions incorporated into the usTLD Policy as ¶ 4(c)(i). The usTLD Policy ¶¶ 4(c)(ii), (iii) and (iv) are identical to UDRP Policy ¶¶ 4(c)(i)(ii) and (iii).
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