national arbitration forum

 

DECISION

 

WL Ross & Co. LLC and Absolute Recovery Hedge Fund, L.P. and Absolute Recovery Hedge Fund, Ltd. v. Absolute Recovery Hedge Fund

Claim Number: FA0803001169430

 

PARTIES

Complainant is WL Ross & Co. LLC and Absolute Recovery Hedge Fund, L.P. and Absolute Recovery Hedge Fund, Ltd. (collectively, “Complainant”), represented by Larry C. Jones, of Alston & Bird, LLP, North Carolina, USA.  Respondent is Absolute Recovery Hedge Fund (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <arhedgefund.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com.

 

PANEL

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 Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 28, 2008.

 

On March 24, 2008, Direct Information Pvt Ltd d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <arhedgefund.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name.  Direct Information Pvt Ltd d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On April 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 22, 2008
 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@arhedgefund.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 25, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <arhedgefund.com> domain name is confusingly similar to Complainant’s ABSOLUTE RECOVERY HEDGE FUND mark.

 

2.      Respondent does not have any rights or legitimate interests in the <arhedgefund.com> domain name.

 

3.      Respondent registered and used the <arhedgefund.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The entities filing collectively as Complainant, WL Ross & Co. LLC (“WL Ross”) and Absolute Recovery Hedge Fund, L.P. and Absolute Recovery Hedge Fund, Ltd., is in the business of financial services including investment advisory and other investment-related services.  WL Ross is a federally registered investment advisor that was incorporated in Delaware as a limited liability corporation.  Absolute Recovery Hedge Fund, L.P. is a Delaware limited partnership organized in May 2001 to operate as a private investment partnership.  In 2001, Absolute Recovery Hedge Fund, Ltd. was incorporated under the laws of Bermuda.  Both Absolute Recovery Hedge Fund, L.P. and Absolute Recovery Hedge Fund, Ltd. (together referred to as the “AR Hedge Funds”) are affiliated and under the control of WL Ross.

 

Complainant has used the ABSOLUTE RECOVERY HEDGE FUND mark since 2001 in association with its investment and financial services.  Since 2001, Complainant has often abbreviated its ABSOLUTE RECOVERY HEDGE FUND mark to the AR HEDGE FUND mark.  Collectively, the AR Hedge Funds managed assets of over $89 million as of 2007. 

 

Respondent’s <arhedgefund.com> domain name, which it registered on January 31, 2008 resolves to a website featuring the ABSOLUTE RECOVERY HEDGE FUND mark and offering “private equity asset management services to sophisticated investors.”  The contact address on the website that resolves from the <arhedgefund.com> domain name is WL Ross’s previous address at 101 E. 52nd Street, New York, NY 10022 and does not match the WHOIS address at “22 Cortlandt Street, 16 Floor, New York, NY 10007.”  Respondent contacted an investor in Singapore purporting to represent Complainant and appeared to be attempting to phish for personal information and perpetrate a fraud on the foreign investor, which was brought to the attention of the U.S. Securities and Exchange Commission’s (“SEC”).

 

DISCUSSION

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."

 

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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant does not possess a trademark registration for the ABSOLUTE RECOVERY HEDGE FUND mark.  However, if Complainant can demonstrate sufficient common law rights in the mark which do predate the registration of the disputed domain name, this is sufficient for the purposes of Policy ¶ 4(a)(i).  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).

 

Complainant asserts that it began using the ABSOLUTE RECOVERY HEDGE FUND mark in 2001, and since that time has used its mark extensively to promote its business.  Complainant is a large hedge fund for accredited investors and manages assets totaling over $89 million as of 2007, which predates Respondent’s registration by seven years.  Thus the Panel finds that Complainant has established common law rights in the ABSOLUTE RECOVERY HEDGE FUND mark sufficient to convey rights which predate the registration of the disputed domain name under Policy ¶ 4(a)(i).  See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

 

The Panel finds Respondent’s <arhedgefund.com> domain name contains the abbreviation of Complainant’s ABSOLUTE RECOVERY HEDGE FUND mark without spaces and is confusingly similar under Policy ¶ 4(a)(i).  The addition of a generic top-level domain “.com” is irrelevant when evaluting if the disputed domain name is confusingly similar.  See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to the complainant’s MINNESOTA STATE LOTTERY registered mark); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

Rights or Legitimate Interests

 

The burden of proof shifts to Respondent when Complainant makes a prima facie case that Respondent does not have rights or legitimate interests in the <arhedgefund.com> domain name under Policy ¶ 4(a)(ii).  Thereafter, a failure to respond by Respondent furthers the presumption that it has no rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant has established a prima facie case, but chooses to examine all of the evidence before making a final determination with regards to Policy ¶ 4(c).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). 

 

The Panel finds that Responent is using the <arhedgefund.com> domain name to pass itself off as Complainant by using the disputed domain name to resolve to a website featuring Complainant’s entire ABSOLUTE RECOVERY HEDGE FUND mark, describing Complainant’s products, and displaying one of Complainant’s previous addresses under “contacts.”  The Panel infers that Respondent is attempting to contact potential third-party investors using the disputed domain name to fraudulently pass itself off as Complainant.  Accordingly, the Panel finds that Respondent has not made 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).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).

 

Respondent’s WHOIS contact information of “ABSOLUTE RECOVERY HEDGE FUND” is insufficient to demonstrate that Respondent is commonly known by the <arhedgefund.com> domain name as there is no other evidence in the record to suggest that Respondent is commonly known by the disputed domain name in connection with a legitimate or fair use.  Furthermore, Complainant asserts that Respondent is not affiliated, connected or associated with Complainant nor otherwise authorized to register or use Complainant’s ABSOLUTE RECOVERY HEDGE FUND mark.  Therefore, the Panel finds that Respondent is not commonly known by the <arhedgefund.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Based on the uncontested evidence presented by Complainant, the Panel finds that Respondent is attempting to profit by passing itself off as a representative of Complainant to sell investment services to third parties from the website that resolves from the <arhedgefund.com> domain name.  The Panel also finds that Respondent’s <arhedgefund.com> domain name is capable of creating a likelihood of confusion as to Complainant’s sponsorship and affiliation with the disputed domain name and corresponding resolving website due to Respondent displaying Complainant’s entire ABSOLUTE RECOVERY HEDGE FUND mark and attempting to offer fraudulent services similar to the genuine services offered by Complainant.  Therefore, the Panel finds that Respondent’s domain name is capable of creating a likelihood of confusion and qualifies as bad faith registration and use under Policy ¶ 4(b)(iv).  See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).

 

Finally, the Panel finds that Respondent is attempting to phish for personal information from third-party investors while pretending to represent Complainant, which is being accomplished by Respondent’s registration and use of the disputed domain name.  The Panel infers that Respondent registered the <arhedgefund.com> domain name and uses the resolving website in furtherance of its phishing scheme to defraud investors into giving Respondent their financial information.  Such registration and use constitutes bad faith.  See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith where the respondent registered the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <arhedgefund.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  May 7, 2008

 

 

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