national arbitration forum

 

DECISION

 

Veritas Capital Fund Management, L.L.C. v. Veritas Capital

Claim Number: FA1010001349759

 

PARTIES

Complainant is Veritas Capital Fund Management, L.L.C. ("Complainant"), represented by Scott Kareff, New York, USA.  Respondent is Veritas Capital ("Respondent"), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <veritascapitaluk.com>, registered with GoDaddy.com, Inc.

 

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 30, 2010; the National Arbitration Forum received payment on October 4, 2010.

 

On October 1, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <veritascapitaluk.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 October 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 2010 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@veritascapitaluk.com.  Also on October 5, 2010, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On Nov. 3, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin.

 

Respondent has submitted correspondence which will be taken into consideration in reaching a decision for this matter.

 

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" 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 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 the 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 <veritascapitaluk.com> domain name is confusingly similar to Complainant’s VERITAS CAPITAL mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Veritas Capital Fund Management, L.L.C., provides financial and investment services.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the VERITAS CAPITAL mark (e.g., Reg. No. 2,537,965 issued February 12, 2002).

 

Respondent registered the <veritascapitaluk.com> domain name on July 9, 2010.  The disputed domain name previously resolved to a website that prominently displayed Complainant’s mark.  The resolving website also offered the same financial and investment services that Complainant offers under its VERITAS CAPITAL mark.  The disputed domain name currently resolves to an inactive website.

 

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 asserts rights in the VERITAS CAPITAL mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 2,537,965 issued February 12, 2002).  The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the VERITAS CAPITAL mark pursuant to Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).  Furthermore, the Panel determines it is irrelevant for Policy ¶ 4(a)(i) purposes whether Complainant holds trademark registrations with the trademark authority in the country in which Respondent resides.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant contends that Respondent’s <veritascapitaluk.com> domain name is confusingly similar to its VERITAS CAPITAL mark.  Respondent fully incorporates Complainant’s mark in the disputed domain name and then merely omits the space between the words in the mark.  Respondent also attaches “uk,” the country-code for the United Kingdom, and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.  The Panel finds the omission of a space, addition of a geographic term, and affixation of a gTLD do not sufficiently distinguish a domain name from a mark.  See 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 MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).  Therefore, the Panel determines that Respondent’s <veritascapitaluk.com> domain name is confusingly similar to its VERITAS CAPITAL mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <veritascapitaluk.com> domain name under Policy ¶ 4(a)(ii).  The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name.  The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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.”).  Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Although the WHOIS information indicates that “Veritas Capital” is the registrant of the disputed domain name, there is no affirmative evidence in the record that indicates that Respondent is actually known by this name.  Therefore, the Panel finds Respondent is not commonly known by the <veritascapitaluk.com> domain name under Policy ¶ 4(c)(ii).  See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also 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”).

 

Complainant avers Respondent previously used the <veritascapitaluk.com> domain name to fraudulently obtain Internet users’ confidential information.  Complainant states that the “About Us” tab on Respondent’s formerly resolving website claimed that Respondent was the United Kingdom branch of Complainant’s financial business.  Complainant further states that the “Services” tab claimed that Respondent provided investment management services, review, and analysis of investment portfolios, consulting services, and financial planning services.  Finally, the resolving website provided a telephone number and email address for Internet users to contact Respondent.  Based on the evidence in the record, the Panel finds Respondent used the disputed domain name to phish for Internet users’ confidential information.  Therefore, the Panel finds Respondent did not use the <veritascapitaluk.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(a)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See 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 seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also 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).

 

Furthermore, Complainant claims that Respondent used the <veritascapitaluk.com> domain name in an attempt to pass itself off as Complainant’s official website.  Complainant provides screen shots of the website that resolved from the disputed domain name.  These images show a website that prominently displayed Complainant’s VERITAS CAPITAL mark throughout the site.  In addition, the resolving website purported to offer the same financial and investment services that Complainant offers its customers.  The Panel finds that Respondent’s efforts to pass itself off as Complainant is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  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 Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).

 

Complainant asserts the disputed domain name does not currently resolve to an active website.  The Panel finds Respondent’s failure to make active use of the disputed domain name provides additional evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name).

 

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

 

Registration and Use in Bad Faith

 

Complainant contends that the <veritascapitaluk.com> domain name redirected Internet users seeking Complainant’s services to Respondent’s fraudulent website that offered services that competed with Complainant’s business.  Therefore, the Panel finds the disputed domain name disrupted Complainant’s business.  Accordingly, the Panel finds this behavior qualifies as bad faith under Policy ¶ 4(b)(iii).  See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).

 

Complainant further contends that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark.  As previously discussed, the <veritascapitaluk.com> domain name is confusingly similar to Complainant’s VERITAS CAPITAL mark.  Moreover, the Panel presumes that Respondent used the disputed domain name in an attempt to profit.  Accordingly, the Panel finds Respondent engaged in registration and use in bad faith under Policy ¶ 4(b)(iv).  See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).

 

In addition, Complainant alleges that Respondent used the <veritascapitaluk.com> domain name to intentionally attract Internet users to its website to “phish” for Internet users’ personal information by creating a strong likelihood of confusion with Complainant’s VERITAS CAPITAL mark. The Panel agrees and finds that Respondent’s prior use of the disputed domain name to “phish” is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).

 

Complainant argues that Respondent used the <veritascapitaluk.com> domain name in an attempt to pass itself off as Complainant.  The Panel finds that this use also supports a finding of bad faith pursuant to Policy ¶ 4(a)(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 DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).

 

Finally, prior panels have found that failure to make active use of a domain name can qualify as bad faith when the domain name registration occurred after the complainant acquired rights in a mark.  See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred years after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name approximately 7 years after the complainant registered its trademark with the USPTO).  Respondent registered the <veritascapitaluk.com> domain name on July 9, 2010, years after Complainant first registered the VERITAS CAPITAL mark with the USPTO (e.g., Reg. No. 2,537,965 issued February 12, 2002).  Therefore, the Panel finds Respondent’s failure to make active use qualifies as bad faith in this case pursuant to Policy ¶ 4(a)(iii).

 

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

 

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 <veritascapitaluk.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  November 5, 2010

 

 

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