Baron Capital Group, Inc. v. Alexander Ciccotelli
Claim Number: FA2202001985698
Complainant is Baron Capital Group, Inc. (“Complainant”), represented by Ryan Thomas of Fish & Richardson P.C., Minnesota, USA. Respondent is Alexander Ciccotelli (“Respondent”), represented by Joshua Grabar, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baroncapitalgroup.com>, registered with GoDaddy.com, LLC.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2022; the Forum received payment on February 24, 2022.
On February 24, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <baroncapitalgroup.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 28, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2022 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@baroncapitalgroup.com. Also on February 28, 2022, 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.
An untimely Response was received and determined to be complete on March 22, 2022.
On March 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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 timely response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: DEFICIENT RESPONSE
Respondent submitted a response on March 22, 2022. The deadline to respond was March 21, 2022. Thus, the Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, at its discretion, may choose whether to accept and consider this Response. Here, the Panel has decided to consider the deficient Response. See Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”); see also Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5).
A. Complainant
i) Complainant is an investment management company. Complainant has rights in the BARON and BARON CAPITAL marks through its registrations with the United States Patent and Trademark Office (“USPTO”) (BARON Reg. 2,961,602, registered June 14, 2005; BARON CAPITAL Reg. 3,824,939, registered July 27, 2010). The disputed domain name is identical or confusingly similar to the BARON and BARON CAPITAL marks as it incorporates the marks in their entireties and adds generic words along with the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its BARON and BARON CAPITAL marks in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead inactively holds the disputed domain name’s resolving website.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent inactively holds the disputed domain name’s resolving website. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BARON and BARON CAPITAL marks.
B. Respondent
1. The disputed domain name was registered on May 23, 2009.
2. Complainant has established rights in the BARON and BARON CAPITAL marks through its registrations with the United States Patent and Trademark Office (“USPTO”) (BARON Reg. 2,961,602, registered June 14, 2005; BARON CAPITAL Reg. 3,824,939, registered July 27, 2010, first use in commerce: December 31, 1982).
3. The disputed domain name has remained parked for over a decade at a webpage with a picture, a message stating the website is under construction, and links that do not resolve to any further substantive content.
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.
Complainant claims rights in the BARON and BARON CAPITAL marks through its registrations with the USPTO (BARON Reg. 2,961,602, registered June 14, 2005; BARON CAPITAL Reg. 3,824,939, registered July 27, 2010). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Spotify AB v. Olodo Glory / Sutherland, FA 2106001951577 (Forum July 15, 2021) (“Complainant’s registration of the SPOTIFY mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <baroncapitalgroup.com> is identical or confusingly similar to Complainant’s BARON and BARON CAPITAL marks. Under Policy ¶ 4(a)(i), adding generic or descriptive words and the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). The disputed domain name could be understood to either incorporate the BARON mark in its entirety and add the words “capital group”, which may relate to Complainant’s business, and/or incorporating the BARON CAPITAL mark and adding the word “group.” The disputed domain name also adds the “.com” gTLD to the end of the mark. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
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”).
Complainant argues that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its BARON marks in the disputed domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS Information, among other evidence, may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in a disputed domain name. See Warner Bros. Entertainment Inc. v. José Gallardo, FA 1712001763166 (Forum Jan. 20, 2018) (“Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <hogwartsmystery.com> domain name, and that Complainant has licensed or otherwise authorized Respondent to use the HOGWARTS mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “José Gallardo,” 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).”). The WHOIS of record identifies Respondent as “Alexander Ciccotelli”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its BARON CAPITAL and BARON marks in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Inactively holding a disputed domain name’s resolving website is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides screenshots of the disputed domain name’s resolving website, which has remained parked at a webpage with a picture, a message stating the website is under construction, and links that Complainant claims do not resolve to any further substantive content. Therefore, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name. Respondent contends that Respondent (by referring itself to as ‘Baron Capital Group LLC’) was established in 2009 for the purpose of purchasing and developing real estate. Taking the disputed domain name and email would cause it substantial harm. However, the Panel notes that Respondent provides no evidence to support its contention.
As the Panel finds that Respondent has failed to rebut the prima facie case against it, it concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered the disputed domain name in bad faith. The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which has remained parked for over a decade at a webpage with a picture, a message stating the website is under construction, and links that Complainant claims do not resolve to any further substantive content.
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant, founded in 1982, is an asset and investment management firm headquartered in New York City. Known for its long-term, fundamental, and active approach to growth investing, Complainant has built its successful business and strong reputation in the investment management industry on the quality of its research. Since at least as early as 1982, Complainant adopted and began to use the BARON CAPITAL trademark for its investment management services, and has continuously used this mark in the United States since that time. Since at least as early as 1984, Complainant adopted and began to use the BARON trademark for its investment management services, and has continuously used this mark in the United States since that time. Complainant has also been operating under the trade name “Baron Capital Group, Inc.” since at least as early as 1984, when the entity was incorporated in New York. Thus, Complainant’s use of the BARON CAPITAL and BARON marks as its brand, and “Baron Capital Group, Inc.” as its trade name, has thus been continuous for 40 years; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Complainant argues that Respondent registered the disputed domain name with bad faith knowledge of Complainant’s rights in the BARON CAPITAL and BARON marks. Under Policy ¶ 4(a)(iii), while constructive knowledge is generally insufficient in demonstrating bad faith, actual knowledge may be enough, and may be established through Respondent’s incorporation of a mark into a domain name, as well as Respondent’s use of the disputed domain name’s resolving website. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel infers, due to the notoriety of Complainant’s marks that Respondent had actual knowledge of Complainant’s rights in the BARON CAPITAL and BARON marks at the time of registering the disputed domain name, and thus it finds Respondent’s bad faith registration of the disputed domain name pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baroncapitalgroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 29, 2022
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