Securities Investor Protection Corporation v. Mercedita Bautista / eName General Reseller
Claim Number: FA2005001896198
Complainant is Securities Investor Protection Corporation (“Complainant”), represented by Christopher H. LaRosa, United States. Respondent is Mercedita Bautista / eName General Reseller (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sipcomitee.org>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 13, 2020; the Forum received payment on May 13, 2020.
On May 14, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <sipcomitee.org> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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@sipcomitee.org. Also on May 14, 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 June 8, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
On June 9, 2020, the Panel issued a Procedural Order pursuant to Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy requesting further statements from the Claimant, on or before June 12, 2020, extending time for rendering a decision, and allowing Respondent to make submissions on any said further statement that may be received from Complainant within five (5) days of the date on which it was received by Respondent.
Also on June 9, 2020, Complainant furnished said additional information and provided evidence of service of same on Respondent.
Respondent did not make any submissions within the time allowed.
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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a non-profit membership corporation that administers a quasi-public fund established to provide relief to customers of failed securities broker-dealers placed in liquidation under the Securities Investor Protection Act, 15 U.S.C. §§ 78aaa et seq. (“SIPA”). Complainant claims rights in the SIPC mark acquired through its ownership of the United States registered service mark described below, its statutory official symbol and its use of SIPC as a mark since its creation in 1970 by the Congress of the United States.
Complainant submits that it has acquired a reputation in the use of the acronym “SIPC” for “Securities Investor Protection Corporation” and is known by the acronym among regulatory authorities, members of the securities industry, and the general public. Complainant adds that extension of trade and service mark protection to acronyms is well established under the Policy. See, e.g., Sec. Inv. Prot. Corp. v. Andy Guevarra, Case No. 1371560 (Forum Mar. 22, 2011) (“Guevara”).
Complainant submits that the disputed domain name <sipcomitee.org> is confusingly similar to its SIPC service mark and acronym as the letters “sipc” are incorporated into the disputed domain name.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that it has never authorized Respondent to use Complainant’s service mark SIPC in connection with the disputed domain name <sipcomitee.org> in any way, and Respondent’s use of the disputed domain name reflects clear bad faith.
Complainant refers to screenshots of the pages from the website to which the disputed domain name resolves. The content on the website purports to provide information about and represent an organization called the “Securities and Investments Protection Committee”.
Complainant submits that to its knowledge no such organization exists. Complainant asserts that members of its staff called the telephone number on the “Contact Us” page of the website and received the following response: “Call can’t be completed as dialed.”
Complainant argues that the name “Securities and Investments Protection Committee” is being used by Respondent because it is nearly identical to Complainant’s name, except that “Investments” has been substituted for “Investor” and “Committee” has been substituted for “Corporation”.
Complainant submits that the very existence of Respondent’s organization is dubious.
Furthermore, Complainant argues that the website to which the disputed domain name resolves describes a mission of the “Securities and Investments Protection Committee” that is very similar to that of Complainant, as follows:
“As a specialized commission, this office conducts inquiries and investigations into matters associated with fraud, suspect documents and money laundering. We are an independent regulatory commission for investment firms.
We exist to ensure that the corporate finance industry is conducting business fairly and under the guidance and supervision of policies set forth by this country.
We are committed to protect the investing public and maintaining the market integrity through efficient governance and regulation of the industry.”
Complainant argues that when coupled with this mission statement, Respondent’s use of “SIPC” acronym strongly suggests that Respondent selected the disputed domain name in order to create confusion in the minds of investors seeking information about Complainant.
Complainant argues that the disputed domain name was registered and is being used in bad faith alleging that the disputed domain name, and the name of the organization which purports to be represented on the website to which the disputed domain name resolves and purported mission of the organization as stated on the website are designed to create confusion and are an obvious attempt to dupe investors into believing that Respondent’s site is actually Complainant’s official site.
Complainant submits that Respondent has no possible legitimate motive for impersonating Complainant and creating confusion in this manner. Complainant argues that the disputed domain name was registered and is being used in bad faith because it resolves to a near verbatim copy of an outdated version of Complainant’s official website and therefore Respondent’s website can have no purpose other than to divert securities investors interested in Complainant away from Complainant’s official website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
In response to the Procedural Order of June 9, 2020, issued by the Panel, Complainant provided a further statement clarifying its submissions relating to the content of the website to which the disputed domain name resolved.
No submissions were received from Respondent although expressly afforded the opportunity so to do in said Procedural Order.
Complainant is a non-profit membership corporation that administers a quasi-public fund established to provide relief to customers of failed securities broker-dealers placed in liquidation under the Securities Investor Protection Act, 15 U.S.C. §§ 78aaa et seq. (“SIPA”).
Complainant is the registered owner of
· United States service mark SIPC, registration number 2,081,146, registered on July 22, 1997 on the Principal Register for services in International Class 36; and
· United States service mark SIPC (Design), registration number 2,087, 256, registered on August 12, 1997 on the Principal Register for services in International Class 36.
In addition, Complainant has and uses an official symbol which includes the word “SIPC.”
Complainant has an established Internet presence and maintains a website to which its principal domain name <sipc.org> and other domain names that it owns including <sipc.com>, <sipc.net>, <sipc.us>, <sipc.mobi>, <sipc.info>, and <si-ic.com> resolve.
The disputed domain name was registered on February 4, 2020.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WHOIS and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name.
Respondent availed of a proxy service to conceal its identity on the published WHOIS and it was disclosed by the Registrar in the verification of the registration details in the course of this proceeding.
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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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 and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
Complainant has adduced uncontested clear and convincing evidence that it has rights in the SIPC mark acquired through its ownership of the abovementioned United States registered service mark and its long use in the provision of services.
Complainant has acquired a reputation and goodwill in the SIPC mark among regulatory authorities, members of the securities industry, and the general public, through its use as a service mark, an acronym for “Securities Investor Protection Corporation” and within its statutory official symbol since its creation by the Congress of the United States in 1970.
The disputed domain name domain name <sipcomitee.org> consists of Complainant’s service mark in its entirety. Visually, the letter “c” is then borrowed to create a misspelling of the word “committee”, having only one letter “m”.
Complainant’s SIPC service mark is the initial and dominant element of the disputed domain name. The element “omitee” or what appears visually as the misspelled word “comitee” have no distinctive character.
This Panel finds therefore that the disputed domain name is confusingly similar to the SIPC mark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name is presented to signify an acronym for an organization called the “Securities and Investments Protection Committee”. There is doubt as to whether any such organization exists and on the balance of probabilities it is what Complainant describes as “a phantom organization” named to impersonate Complainant. Complainant’s enquires and efforts to contact Respondent by email and phone have met with no results.
In such circumstances the burden of production shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain name. Respondent has failed to discharge that burden and therefore this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant therefore succeeds in the second element of the test in Policy ¶ 4(a)(ii).
The selection of the disputed domain name that has as its only distinctive and dominant element Complainant’s service mark, which has no obvious meaning except as an acronym for Complainant’s statutory name leads this Panel to infer that the registrant of the disputed domain name must have been aware of Complainant, its name and mark when the disputed domain name was chosen and registered.
This conclusion is supported by the fact that the disputed domain name has been used as the address of a website which purports to impersonate Complainant.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith to take predatory advantage of the reputation and goodwill of Complainant and its services in order to divert Internet traffic to Respondent’s website create confusion in the minds of investors seeking information about Complainant.
The content of the website to which the disputed domain name resolves, including the purported mission statement of Respondent’s organization, appears to be an attempt to impersonate Complainant and to dupe investors into believing that Respondent’s website is actually Complainant’s official site. Complainant has submitted that the content of Respondent’s website is in fact a near verbatim copy of an outdated version of Complainant’s official website.
In such circumstances this Panel must find on the balance of probabilities that Respondent is using the disputed domain name in bad faith as the address of a website in an intentional attempt to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of Respondent’s web site and is therefore using the disputed domain name in bad faith.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the relief sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sipcomitee.org> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________
James Bridgeman SC
Panelist
Dated: June 16, 2020
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