URS FINAL DETERMINATION


Capsugel Belgium NV v. Honey Salt Ltd. / Privacy Hero Inc.
Claim Number: FA2101001927725


DOMAIN NAME

<capsugel.sucks>


PARTIES


   Complainant: Capsugel Belgium NV of Bornem, Belgium
  
Complainant Representative: Greer, Burns & Crain LTD Jake M Christensen of Chicago, IL, United States of America

   Respondent: Honey Salt Ltd. of Providenciales, Turks And Caicos Islands
  
Respondent Representative: Orrick, Herrington & Sutcliffe LLP of Boston, MA, United States of America

REGISTRIES and REGISTRARS


   Registries: Vox Populi Registry Ltd.
   Registrars: Rebel Ltd

EXAMINER


   The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
   Dawn Osborne, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: January 8, 2021
   Commencement: January 12, 2021
   Response Date: January 26, 2021
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION



   Findings of Fact: The Complainant is the owner of the trade mark CAPSUGEL registered, inter alia, in the USA for capsules with first use recorded as 1979. The Domain Name has been used for a complaints site to encourage negative feedback about the Complainant. The Domain Name has been offered generally for sale. See evidence from the Respondent ‘Respondent’s goal is to develop the domain names to support the websites located at the Platform and also resell them to parties that may wish to use the Disputed Domain for expanded or enhanced commentary or feedback purposes on their own site. Respondent listed the domain names for sale on the world’s largest MSL style resale markets in order that it might be available to any user from their chosen Registrar.’

  

URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.


[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 


The Domain Name is identical to the Complainant’s CAPSUGEL trade mark adding only the gTLD .sucks. It is well established by previous decisions under the UDRP that adding a gTLD to a trade mark will not prevent a domain name being identical to that trade mark for the purposes of the UDRP Policy. See Lockheed Martin Corporation v. Sam Kadosh, FA1751762 (Forum Oct. 9, 2017) (“Respondent has added the gTLD “.sucks” to Complainant’s wholly incorporated mark. The Panel therefore agrees with Complainant and finds Respondent’s <lockheedmartin.sucks> domain name to be identical to Complainant’s LOCKHEED MARTIN mark.”).


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


Using a domain name for a free speech Complaint site can be a right or a legitimate interest but only where the participant does not seek to profit from this activity with commercial activity or by selling the domain name for profit. see Baylor University v. Andrew Makarov, FA 1438498 (Forum Apr. 18, 2012) (finding Respondent lacked rights or legitimate interests in the <baylorsucks.com> domain name where Respondent used the domain to host a monetized parking page and offered the domain name for sale).


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant'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 Registrant's web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 


The Respondent admits that its business model involves acquiring and selling its .sucks domain names generally. Accordingly despite the Respondent claiming that it is not for profit and its primary interest is free speech the Panel finds that given the large number of .sucks domain names registered by the Respondent and the admission by the Respondent that the business model of the Respondent is to sell these names the Panel finds that there is clear and convincing evidence that the Respondent has registered the disputed domain name to sell generally for profit which has in the context of domain names identical or confusingly similar to the trade marks of others been held to be registration and use in bad faith. See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”); Further the Panel finds that there is a pattern of this conduct and this prevents trade mark owners from reflecting their marks in corresponding domain names.


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

DETERMINATION


After reviewing the parties submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. capsugel.sucks

 


Dawn Osborne
Examiner
Dated: January 29, 2021

 

 

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