Baron Capital Group, Inc. v. Steffen Bartsch
Claim Number: FA2201001981840
Complainant is Baron Capital Group, Inc. ("Complainant"), represented by Ryan Thomas of Fish & Richardson P.C., Minnesota, USA. Respondent is Steffen Bartsch ("Respondent"), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baron-capital.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 25, 2022; the Forum received payment on January 25, 2022.
On January 25, 2022, NameCheap, Inc. confirmed by email to the Forum that the <baron-capital.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 January 27, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@baron-capital.com. Also on January 27, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 February 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is an asset and investment management firm founded in 1982 and headquartered in New York City. Complainant uses BARON CAPITAL and related marks in connection with its services. Complainant owns longstanding United States trademark registrations for BARON, BARON CAPITAL, and BARON CAPITAL MANAGEMENT in standard character form.
The disputed domain name <baron-capital.com> was registered via a privacy registration service in February 2021. The domain name resolves to a page stating that the web hosting account has been suspended. Complainant states that the domain name previously was used for a website that displayed Complainant's physical address and attempted to pass off as Complainant. Complainant states further that Respondent is not commonly known by the disputed domain name; is not authorized to use Complainant's marks; and is not an authorized vendor, supplier, or distributor of Complainant's services.
Complainant contends on the above grounds that the disputed domain name <baron-capital.com> is identical or confusingly similar to its BARON CAPITAL mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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:
(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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <baron-capital.com> corresponds to Complainant's registered BARON CAPITAL trademark, substituting a hyphen for the space and appending the ".com" top-level domain. Such modifications are normally disregarded for purposes of paragraph 4(a)(i) of the Policy. See, e.g., CNH Industrial N.V. v. Claus Norbert Hennen, D2021-4008 (WIPO Jan. 24, 2022) (finding <cnh-capital.com> identical or confusingly similar to CNH CAPITAL); Coller Capital Ltd. v. Joseph Reaves / Sara Morales, D2021-3161 (WIPO Jan. 13, 2022) (finding <coller-capital.com> confusingly similar to COLLER CAPITAL); ACORE Capital LP v. WhoisGuard Protected, WhoisGuard, Inc. / Abuchi Okoye, D2021-0009 (WIPO Feb. 25, 2021) (finding <acore-capital.com> identical to ACORE CAPITAL); GOBI CAPITAL LLC v. Billy Thompson, FA 1899519 (Forum July 9, 2020) (finding <gobi-capital.com> identical or confusingly similar to GOBI CAPITAL). The Panel considers the disputed domain name to be identical or confusingly similar to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. Respondent does not appear to be making any active use of the domain name. The only indication of any prior use is Complainant's assertion that the domain name was previously used for a website passing off as Complainant.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "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 [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name corresponding to Complainant's name and registered mark, and does not appear to have made any active use of the domain name (with the possible exception of an attempt to pass off as Complainant, although the evidence of such use is lacking). Respondent has not come forward to offer an explanation for its selection or intended use for the domain name. Under the circumstances, the Panel considers it reasonable to infer that Respondent registered the domain name intending to use it to create and exploit confusion with Complainant's mark for commercial gain, most likely either by selling the domain name or by using it to attract Internet users seeking Complainant, and that Respondent is maintaining the domain name for that purpose. See, e.g., Airbnb, Inc. v. Data Protected Ltd., FA 1854961 (Forum Aug. 30, 2019) (inferring bad faith in similar circumstances); Guess? IP Holder L.P. & Guess?, Inc. v. Florence E / Guess Community Services, FA 1828918 (Forum Mar. 7, 2019) (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baron-capital.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 21, 2022
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