The Capital Group Companies, Inc. v. Noelia Lopez
Claim Number: FA2105001945473
Complainant is The Capital Group Companies, Inc. (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA. Respondent is Noelia Lopez (“Respondent”), Madrid, Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capgrouptravel.net>, registered with Arsys Internet, S.L. dba NICLINE.COM.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 18, 2021; the Forum received payment on May 18, 2021. The Complaint was submitted in Spanish and English.
On May 19, 2021, Arsys Internet, S.L. dba NICLINE.COM confirmed by e-mail to the Forum that the <capgrouptravel.net> domain name is registered with Arsys Internet, S.L. dba NICLINE.COM and that Respondent is the current registrant of the name. Arsys Internet, S.L. dba NICLINE.COM has verified that Respondent is bound by the Arsys Internet, S.L. dba NICLINE.COM 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 24, 2021, the Forum served the Complaint and all Annexes, including a Spanish Language Written Notice of the Complaint, setting a deadline of June 14, 2021, 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 the attention of postmaster@capgrouptravel.net. Also on May 24, 2021, the Spanish Language 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 21, 2121, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an investment services and capital management company.
Complainant holds a registration for the CAPITAL GROUP service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,524,913, registered May 6, 2014.
Respondent registered the domain name <capgrouptravel.net> on November 9, 2020.
The domain name is confusingly similar to Complainant’s CAPITAL GROUP service mark.
Respondent has not been commonly known by the domain name.
Respondent is in no way connected with Complainant.
Complainant has not licensed or otherwise authorized Respondent to use its CAPITAL GROUP mark in a domain name.
Respondent does not use the domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to pass itself off as Complainant online in connection with a website that is a near replica of a portion of Complainant’s Capital Group website for Spain, with the text translated into Spanish and displaying Complainant’s registered trademarks, including the CAPITAL GROUP logo and that of CAPITAL INTERNATIONAL, Complainant’s wholly-owned subsidiary, by all of which Respondent seeks to deceive Internet users and profit illicitly.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business for its commercial gain.
Respondent registered the domain name with knowledge of Complainant’s rights in the CAPITAL GROUP mark.
Respondent provided false WHOIS information in registering the domain name, in that Respondent falsely identified itself as “Noelia Lopez,” who is an actual employee of Capital International Management Company Sŕrl, but who did not register the domain name, and in that the contact e-mail address given by Respondent, <mzzg@capgroup.com>, does not exist.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Language Of The Proceeding
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Spanish. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits that the disputed domain name contains exclusively English words, which demonstrates Respondent’s proficiency in English. Respondent does not contest this assertion. In light of this, and because translating the documents required to prosecute this proceeding in Spanish would put Complainant to a substantial financial burden and would unnecessarily delay this proceeding, as well as because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” we conclude that it would be in the interests of justice for us to grant Complainant’s request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising its discretion in deciding that the language of a UDRP proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based upon evidence that a respondent had command of the English language).
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 rights in the CAPITAL GROUP service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP complainant’s USPTO registration for a mark sufficiently demonstrated its rights in that mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Spain). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <capgrouptravel.net> domain name is confusingly similar to Complainant’s CAPITAL GROUP service mark. The domain name incorporates an abbreviated version of the mark, with only the addition of the generic term “travel,” which can be taken to describe an aspect of Complainant’s international financial services business, plus the generic Top Level Domain (“gTLD”) “.net.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Sterling Jewelers Inc. v. KAY KAY YAN, FA 1542616 (Forum March 17, 2014) (finding that a respondent’s <kisskay.com> domain name was confusingly similar to a UDRP complainant’s EVERY KISS BEGINS WITH KAY mark because it constituted a mere abbreviation of the mark).
See also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018):
[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).
Further see Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum September 7, 2005):
[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.
This is because every domain name requires a gTLD or other TLD.
Finally, under this head of the Policy, see Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not sufficiently distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <capgrouptravel.net> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested <capgrouptravel.net> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the CAPITAL GROUP service mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “NOELIA LOPEZ,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not using the <capgrouptravel.net> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, in that Respondent employs the domain name to pass itself off as Complainant online in connection with a website that is a near replica of a portion of Complainant’s Capital Group website for Spain, with the text translated into Spanish and displaying Complainant’s registered trademarks, including the CAPITAL GROUP logo and that of CAPITAL INTERNATIONAL, Complainant’s wholly-owned subsidiary, by all of which Respondent seeks to deceive Internet users and profit illicitly. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (a panel there finding that a respondent’s attempt to pass itself off online as a UDRP complainant was neither a bona fide offering of goods or services by means of the domain name pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it pursuant to Policy ¶ 4(c)(iii) where that respondent used the domain name to present Internet users with a website that was nearly identical to that complainant’s official website).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s registration and use of the challenged <capgrouptravel.net> domain name, which we have found to be confusingly similar to Complainant’s CAPITAL GROUP mark, is an attempt by Respondent to profit illicitly from the confusion thus caused among internet users as to the possibility of Complainant’s association with the domain name and its resolving website. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith registration and use of a disputed domain name under Policy ¶ 4(b)(iv) where “Respondent registered and uses the … domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant”).
We are likewise convinced by the evidence that Respondent has further demonstrated bad faith in registering and using the domain name by supplying false WHOIS contact information in the course of registering it, as detailed in the Complaint before us. See, for example, Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use of a contested domain name under Policy ¶ 4(a)(iii) where a respondent provided false contact information when registering the domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <capgrouptravel.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 22, 2021
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