Capitol Wright Distributing LLC v. Ronaldo Cooper
Claim Number: FA2007001903585
Complainant is Capitol Wright Distributing LLC (“Complainant”), represented by Dwayne K. Goetzel, Texas, USA. Respondent is Ronaldo Cooper (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capltolwright.com>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 9, 2020; the Forum received payment on July 9, 2020.
On July 10, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <capltolwright.com> 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 July 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@capltolwright.com. Also on July 13, 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 August 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Capitol Wright Distributing LLC, offers wholesale beverage distribution services. Complainant has rights in the CAPITOL WRIGHT mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,920,523, registered March 22, 2016). See Amend. Compl. Annex 2. Respondent’s <capltolwright.com> domain name is confusingly similar to Complainant’s mark as it merely misspells Complainant’s CAPITOL WRIGHT mark by replacing the letter “I” with the letter “L”.
Respondent does not have rights or legitimate interests in the <capltolwright.com> domain name. Respondent is not commonly known by the disputed domain name and is not affiliated or authorized to use Complainant’s CAPITAL WRIGHT mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name’s resolving webpage features third-party hyperlinks. Respondent makes no active use of the disputed domain name. Further, Respondent engages in typosquatting.
Respondent registered and uses the <capltolwright.com> domain name in bad faith. Respondent engages in typosquatting. Additionally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the CAPITOL WRIGHT mark based on Complainant’s long term use of the mark and registration with the USPTO.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that offers wholesale beverage distribution services.
2. Complainant has established its trademark rights in the CAPITOL WRIGHT mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,920,523, registered March 22, 2016).
3. Respondent registered the disputed domain name on May 26, 2020.
4. Respondent has caused the disputed domain name to resolve to a webpage that features third party hyperlinks, Respondent makes no other active use of the disputed domain name and, further, it engages in typosquatting.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the CAPITOL WRIGHT mark based on registration with the USPTO (e.g., Reg. No. 4,920,523, registered March 22, 2016). See Amend. Compl. Annex 2. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Additionally, design elements included in a mark are irrelevant in determining if a domain name is confusingly similar to a mark. See Yellow Cab Company of Orlando, Inc. d/b/a Yellow Cab Company v. Desiree Valdez, FA 1398790 (Forum Aug. 17, 2011) (“While the [YELLOW CAB CO.] mark registered with the USPTO contains a stylized vehicle with the words of the mark, the Panel concludes that such a design does not matter under Policy ¶ 4(a)(i) because design elements cannot be captured in a domain name.”). Since Complainant provides evidence of registration of the CAPITOL WRIGHT mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CAPITOL WRIGHT mark. Complainant argues that Respondent’s <capltolwright.com> domain name is confusingly similar to Complainant’s CAPITOL WRIGHT mark because it merely misspells the word “capitol” by replacing the letter “I” with the letter “L.” Under Policy ¶ 4(a)(i), simple misspellings of a mark in a domain name are insufficient to distinguish the domain name from the mark. See Chegg Inc. v. Company CEO / Qulity Programming, FA 1610061 (Forum Apr. 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) whereas “Respondent’s <chwgg.com> domain name is a simple misspelling of Complainant’s CHEGG.COM mark.”). Thus, the Panel finds that the disputed domain name is confusingly similar to the CAPITOL WRIGHT mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
(a) Respondent has chosen to take Complainant’s CAPITOL WRIGHT trademark and to use it in its domain name, misspelling the word “capitol” by replacing the letter “I” with the letter “L” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on May 26, 2020;
(c) Respondent has caused the disputed domain name to resolve to a webpage that features third party hyperlinks, Respondent makes no other active use of the disputed domain name and, further, it engages in typosquatting;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <capltolwright.com> domain name because Respondent is not commonly known by the disputed domain name and has no affiliation with Complainant or authorization to use Complainant’s CAPITOL WRIGHT mark. Under Policy ¶ 4(c)(ii), when no response is submitted WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of affiliation with a complaint and lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”); see also Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS information of record lists “Ronaldo Cooper” as the registrant and no information suggests Respondent is affiliated with Complainant or that Complainant has authorized Respondent to use the CAPITOL WRIGHT mark. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent’s lack of rights or legitimate interests in the <capltolwright.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a website which is being used to obtain click-through revenue by linking to unrelated third-party websites. Use of a domain name to link to a complainant’s competitors is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant contends the domain name resolves to a website displaying only third party hyperlinks. See Compl. Ex. 5. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <capltolwright.com> domain name;
(g) Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name resolves to an inactive website. An inactive holding of a domain name is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Complainant has provided a screenshot of the resolving webpage for the disputed domain name that shows it is inactive. See Amend. Compl. Annex 5. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii);
(h) Complainant contends that Respondent does not use the <capltolwright.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent has engaged in typosquatting. Under Policy ¶ 4(a)(ii), typosquatting may be considered evidence that a respondent lacks rights and legitimate interests in a disputed domain name. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Complainant argues Respondent engages in typosquatting by misspelling Complainant’s CAPITOL WRIGHT mark in the disputed domain name in order to misdirect consumers who accidently mistype “Capitol Wright” when searching for Complainant’s website. As the Panel agrees with Complainant, the Panel finds that Respondent engages in typosquatting and therefore lacks rights and legitimate interests in the <capltolwright.com> domain name per Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, while Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary evidence considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Secondly, Complainant argues that Respondent registered and uses the <capltolwright.com> domain name in bad faith because Respondent engages in typosquatting. Under Policy ¶ 4(a)(iii), typosquatting is evidence of bad faith. See LifeLock, Inc. v. Adam Viener / ThunkTunk LLC, FA1409001579875 (Forum Oct. 28, 2014) (“As the Panel has noted above, at the conclusion of its findings under the first Policy element under Policy ¶ 4(a)(i), the disputed domain name <lifelocl.com> differs from the LIFELOCK mark only by substituting the letter ‘L’ for the letter ‘K’ in the LOCK-portion of Complainant’s registered mark. The Panel finds this behavior amounts to typosquatting, and as such the Panel finds this to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant contends that Respondent engages in typosquatting by misspelling Complainant’s CAPITOL WRIGHT mark by replacing the letter “I” with the letter “L” and therefore registered and uses the disputed domain name in bad faith. As the Panel agrees with Complainant, the Panel finds Respondent engages in typosquatting and thus finds Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent had constructive and/or actual knowledge of Complainant’s rights in the CAPITAL WRIGHT mark based on Complainant’s long term use of the mark and registration with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel may find that a respondent had actual notice of a complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration"). Complainant contends that since it had been offering goods under the CAPITOL WRIGHT mark for many years and had registered its own <capitolwright.com> domain name six years prior to Respondent’s registration of the disputed domain name Respondent had knowledge of Complainant’s rights in the mark. As the Panel finds that Respondent had actual knowledge of Complainant’s rights in the CAPITOL WRIGHT mark, the Panel finds that Respondent registered and uses the <capltolwright.com> domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capltolwright.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 7, 2020
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