First Capital Group of
Claim Number: FA0806001198540
PARTIES
Complainant is First Capital Group of Texas (“Complainant”), represented by Matthew M. Jennings,
of Cox Smith Matthews Incorporated,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <firstcapitalgroup.us>, registered
with Onlinenic,
Inc. d/b/a China-Channel.com.
PANEL
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on June 2, 2008;
the Forum received a hard copy of the Complaint on June 2, 2008.
On June 10, 2008, Onlinenic, Inc. d/b/a China-Channel.com confirmed by e-mail to the Forum that
the <firstcapitalgroup.us>
domain name is registered with Onlinenic,
Inc. d/b/a China-Channel.com
and that Respondent is the current registrant of the name. Onlinenic,
Inc. d/b/a China-Channel.com
has verified that Respondent is bound by the Onlinenic,
Inc. d/b/a China-Channel.com
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the U. S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”).
On June 17, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 7, 2008 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the
“Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On July 14, 2008, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed James A. Carmody, 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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <firstcapitalgroup.us> domain name is identical to Complainant’s FIRST CAPITAL GROUP mark.
2.
Respondent does not have any rights or
legitimate interests in the <firstcapitalgroup.us>
domain name.
3.
Respondent registered and used the <firstcapitalgroup.us> domain name in
bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, First Capital Group of
The <firstcapitalgroup.us>
domain name was registered on April 16, 2008.
Respondent is making no direct use of the disputed domain name; it
resolves to nothing more than a banner stating: “Welcome to the home of
firstcapitalgroup.us.” However, the
disputed domain name has been used for unsolicited e-mails. Numerous e-mails have been sent from the
disputed domain name identifying the sender as “First Capital Group” and
soliciting help for a part time “Penny Stocks Manager” position. It is advertised that this is a position
which merely requires the recipient to open a bank account and arrange for
“transfer of further funds to investors.”
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 the 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 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 the 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 the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
In order to establish rights in a mark, it is
not necessary to have registered that mark with a governmental authority, so
long as common law rights can be established pursuant to Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the [UDRP] 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);
see also Artistic Pursuit LLC v.
calcuttawebdevelopers.com, FA 894477
(Nat. Arb. Forum Mar. 8, 2007) (finding that [UDRP] ¶ 4(a)(i) does not require
a trademark registration if a complainant can establish common law rights in
its mark).
Complainant has been in continuous operation
since 1984 offering a variety of financial and investment services under the
FIRST CAPITAL GROUP mark. It likewise
has used the FIRST CAPITAL GROUP mark in all of its advertisements and other
marketing material, including at its own <firstcapitalgroup.com> domain
name. Furthermore, this continued use of
the FIRST CAPITAL GROUP mark in all of Complainant’s business activities sufficiently
establishes that many consumers would associate the FIRST CAPITAL GROUP mark
with Complainant. Accordingly, the Panel
finds that Complainant has sufficiently established common law rights in the
FIRST CAPITAL GROUP mark pursuant to Policy ¶ 4(a)(i). See Jerry
Damson, Inc. v.
The <firstcapitalgroup.us>
domain name contains Complainant’s FIRST CAPITAL GROUP mark in its entirety
omitting the spaces between words and including the country-code top-level
domain (“ccTLD”) “.us.” It is
well-established that the inclusion of a ccTLD and the omission of spaces do
not distinguish a disputed domain name.
Consequently, the Panel finds Respondent’s <firstcapitalgroup.us>
domain name to be identical to Complainant’s FIRST CAPITAL GROUP mark pursuant
to Policy ¶ 4(a)(i). See Future
Steel Holdings Ltd. v. Majercik, FA 224964 (Nat. Arb. Forum Mar. 15, 2004)
(“The <steelmaster.us> domain name is identical to the STEEL MASTER
mark. The only difference is the
omission of the space between the words and the addition of the ccTLD “.us,”
which does not significantly distinguish the domain name from the mark.”); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum
Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be
identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us”
to a mark fails to distinguish the domain name from the mark pursuant to the Policy”).
The Panel concludes
that Complainant has sufficiently established Policy ¶ 4(a)(i).
Rights
or Legitimate Interests
Under Policy ¶
4(a)(ii), Complainant must first establish a prima facie case that Respondent lacks rights and legitimate
interests in the <firstcapitalgroup.us> domain name. See Lush LTD v. Lush Environs, FA
96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent
does file a response, the complainant must allege facts, which if true, would establish
that the respondent does not have any rights or legitimate interests in the
disputed domain name). The Panel finds that Complainant has met
this burden of proof and that it is now incumbent on Respondent to demonstrate
affirmatively that it does have rights or legitimate interests in the disputed
domain name. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name, it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”).
The Panel may
presume that Respondent lacks rights and legitimate interests since Respondent
has failed to submit a response. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence). The Panel is free to accept all adverse
inferences as it deems appropriate. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw
adverse inferences from the respondent’s failure to reply to the
complaint). The Panel will nonetheless
examine the record in consideration of the elements listed under Policy ¶
4(c). See EK Success, Ltd. v. Yi-Chi, CPR0314 (CPR June 12, 2003) (“[T]he Respondent's default cannot simply be construed as
an admission of the allegations contained in the Complaint.”).
Respondent has provided no information that it is the owner
or beneficiary of a trade or service mark identical to the disputed domain
name. Absent any additionally
information in the record, the Panel finds that Respondent is not the owner or
beneficiary of a trade or service mark that is identical to the <firstcapitalgroup.us>
domain name pursuant to Policy ¶ 4(c)(i). See Meow
Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding
that there was no evidence that Respondent was the owner or beneficiary of a
mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA
117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not
own any trademarks or service marks reflecting the <pepsicola.us> domain
name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
The WHOIS
information for the disputed domain name lists Respondent as “Shanahan LTD c/o David
Shanahan.” This provides no reason for
the Panel to think that there is a connection between Respondent and the
disputed domain name. In lieu of any
additional evidence, the Panel finds that Respondent is not commonly known by
the disputed domain name pursuant to Policy ¶ 4 (c)(iii). See
Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (concluding a respondent lacks rights and legitimate interests in a
disputed domain name where there is no evidence in the record indicating that
the respondent is commonly known by the disputed domain name).
Respondent does not appear to actively use
the disputed domain name for a website.
It resolves to nothing but a statement saying “Welcome to
firstcapitalgroup.us.” The Panel finds
this inactive use to constitute neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See
Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb.
Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark
and is not using the <bloomberg.ro> domain name in connection with an
active website. The Panel finds that the
[inactive use] of a domain name that is identical to Complainant’s mark is not
a bona fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use of the domain name pursuant to [UDRP]
Policy ¶ 4(c)(iii).”); see also Hewlett-Packard Co. &
Hewlett-Packard Dev. Co., L.P. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr.
20, 2005) (“The Panel finds that the [inactive] use of a domain name that is
identical to Complainant’s mark is not a bona fide offering of goods or
services pursuant to [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial
or fair use of the domain name pursuant to [UDRP] ¶ 4(c)(iii).”)
However, the <firstcapitalgroup.us> domain name does appear to be used by Respondent to send unsolicited e-mails. In these e-mails, Respondent identifies itself as “First Capital Group” and purports to offer a part time “Penny Stocks Manager” position. It is advertised that a bank account will be opened with which the manager would be charged with accepting bank transfers and forwarding them on to company “investors.” The Panel presumes this to be a “phishing” scheme, a fraudulent attempt to acquire personal information about unsuspecting Internet users. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“‘Phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”). Accordingly, the Panel finds this activity to also be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to UDRP ¶ 4(c)(iii)).
The Panel concludes
that Complainant has sufficiently established Policy ¶ 4(a)(ii).
Registration
and Use in Bad Faith
Complainant operates in the financial
industry. Respondent has failed to reply
in this case; however e-mails sent from the disputed domain name show that
Respondent purports to be a financial institution, also involved in
investments. The Panel presumes then
that Respondent is a competing business.
Additionally, the fraudulent e-mails being distributed by Respondent
identify the sender as “First Capital Group,” which is identical to Complainant’s
FIRST CAPITAL GROUP mark. Accordingly, the
Panel finds that the disputed domain name was registered and is being used in bad
faith for the purposes of disrupting Complainant’s business pursuant to Policy
¶ 4(b)(iii). See Monsanto Co.
v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the
respondent’s use of <monsantos.com> to misrepresent itself as the complainant
and to provide misleading information to the public supported a
finding of bad faith); see also Surface Prot. Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between the complainant and the respondent, the respondent likely
registered the contested domain name with the intent to disrupt the
complainant's business and create user confusion).
Moreover, Respondent presumably engages in
this conduct to financially benefit from the information it might obtain. Since the e-mails sent from the disputed
domain name identify themselves as coming from “First Capital Group,” which is
identical to Complainant’s mark, the Panel finds that Respondent is attempting
to commercially benefit from a likelihood of confusion with Complainant’s
mark. This is additional evidence of
Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”); see also Carey
Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he
Panel finds that Respondent is capitalizing on the confusing similarity of its
domain names to benefit from the valuable goodwill that Complainant has
established in its marks. Consequently,
it is found that Respondent registered and used the domain names in bad faith
under [UDRP] ¶ 4(b)(iv).”).
The fraudulent e-mails sent from the disputed
domain name are part of a phishing attempt.
The Panel finds this to be further evidence establishing Respondent’s
bad faith registration and use of the <firstcapitalgroup.us> domain name pursuant to Policy ¶ 4 (a)(iii).
See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19,
2006) (finding that the respondent demonstrated bad faith registration and use
because it was attempting to acquire the personal and financial information of
Internet users through a confusingly similar domain name); see also 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.”).
And finally, the disputed domain name itself
does not resolve to an active website.
In the view of the Panel, this inactive use is additional evidence of
Respondent’s bad faith registration and use of the <firstcapitalgroup.us> domain name pursuant to Policy ¶
4(a)(iii). See Am. Broad. Cos., Inc.
v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding
that the respondent’s failure to make active use of its domain name in the
three months after its registration indicated that the respondent registered
the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s inactive use
of the domain name satisfies the requirement of ¶ 4(a)(iii) of the UDRP).
The Panel concludes
that Complainant has sufficiently established Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <firstcapitalgroup.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
July 28, 2008
Click Here to
return to the main Domain Decisions Page.
Click
Here to return to our Home Page