Cerberus Capital Management, L.P. v. Domain Privacy Service
Claim Number: FA1310001525549
Complainant is Cerberus Capital Management, L.P. (“Complainant”), represented by Scott Kareff of Schulte Roth & Zabel LLP, New York, USA. Respondent is Domain Privacy Service (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cerberusfxtrading.com>, registered with FastDomain, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2013; the National Arbitration Forum received payment on October 23, 2013.
On October 21, 2013, FASTDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <cerberusfxtrading.com> domain name is registered with FASTDOMAIN, INC. and that Respondent is the current registrant of the name. FASTDOMAIN, INC. has verified that Respondent is bound by the FASTDOMAIN, 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 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2013 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@cerberusfxtrading.com. Also on October 23, 2013, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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" 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 Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant’s Contentions
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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(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.”).
Complainant argues that it uses the CERBERUS mark in connection with the provision of financial services, particularly in the form of private equity investments. Complainant claims that it has registered the CERBERUS mark with the USPTO (e.g., Reg. No. 3,208,822 registered February 13, 2007). The Panel agrees that as both parties are known to reside in the United States, Complainant has met its burden under Policy ¶ 4(a)(i) through its USPTO registration. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant next argues that Respondent’s <cerberusfxtrading.com> domain name is identical or confusingly similar to the CERBERUS mark. Complainant argues that the additions of the terms “fx” (which is an industry term for “foreign exchange”) and “trading” enhance the confusing similarity of the domain name. The Panel notes that this domain name also includes the generic top-level domain (“gTLD”) “.com.” The Panel agrees that these terms enhance the confusing similarity of the domain name because both “fx” and “trading” have unique and descriptive meanings when viewed vis-à-vis the financial services offered by CERBERUS, and the gTLD is not relevant to this analysis. See, e.g., Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Therefore the Panel finds that the <cerberusfxtrading.com> domain name is confusingly similar to the CERBERUS mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant explains that Respondent is masking its identity through a privacy shield, and as such has no rights or legitimate interest in the domain name. The Panel notes that the WHOIS information for the <cerberusfxtrading.com> domain name lists “Domain Privacy Service” as the registrant of record. The Panel further notes that on the domain name’s website, there is no identifying information as to who owns the domain name, only the masthead reading “CerberusFX Trading Group” provides an indication as to source. However, Complainant explicitly denies any affiliation or relationship with Respondent, and further denies that Respondent has any authorization to use the CERBERUS mark. As such, the Panel agrees that there is insufficient evidence to find that Respondent is known by the <cerberusfxtrading.com> domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims that Respondent is using the <cerberusfxtrading.com> domain name to create a façade wherein Internet users will provide Respondent with their financial and confidential information. The Panel notes that the <cerberusfxtrading.com> domain name resolves to a website that contains an FAQs section which provides Internet users with advice for creating an online account with Respondent through the domain name’s input form. In the case of Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010), the panel declined to find anything bona fide about the use of a domain name for the purposes of phishing information out of Internet users for the respondent’s own purposes. The Panel here agrees that Respondent’s use of the <cerberusfxtrading.com> domain name amounts to a phishing ploy evidencing neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant contends that Respondent’s use of the <cerberusfxtrading.com> domain name is disrupting Complainant’s business. The Panel notes that the domain name’s website does suggest that Internet users who provide their information to Respondent will receive “CerberusFX” services that are offered by Respondent. The Panel finds that Respondent is operating a competing enterprise through this domain name and the Panel finds Policy ¶ 4(b)(iii) bad faith. See, e.g., Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant next argues that Respondent is seeking to exploit commercial gain through its use of the <cerberusfxtrading.com> domain name. Complainant pleads that Respondent has a pecuniary motive to trick Internet users into providing Respondent with their confidential financial information, which Respondent can then use to further its own ends. Complainant concludes that Respondent’s use of the CERBERUS mark in the <cerberusfxtrading.com> domain name, and on the domain name’s website facilitates the likelihood that Internet users will provide such information in the false belief that they are participating in a program run by Complainant. A review of the domain name’s website and Complainant’s website shows a similarity in the styles and designs used by Respondent in promoting its own independent venture. In Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), the panel found Policy ¶ 4(b)(iv) bad faith when the respondent sought to generate a profit through tactics that would likely confuse Internet users into believing that the complainant was a source or sponsor of the respondent’s offerings. The Panel here agrees that Respondent’s conduct evidences Policy ¶ 4(b)(iv) bad faith.
Complainant further attests that Respondent is using the <cerberusfxtrading.com> domain name to facilitate a phishing venture in which Internet users will mistakenly provide sensitive financial and personal information to Respondent under the false impression that they are giving said information to Complainant. The Panel notes the presence of an input form, as well as options to enroll in Respondent’s “services” through the domain name’s website. The Panel agrees that as Respondent is not licensed to trade under the CERBERUS mark, it can be inferred that Respondent’s conduct amounts to nothing more than an attempt to deceive Internet users and phish out the private and financial information of these users in Policy ¶ 4(a)(iii). See, e.g., Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining 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).
Complainant further states that Respondent registered the <cerberusfxtrading.com> domain name with actual or constructive knowledge of Complainant’s rights in the CERBERUS mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <cerberusfxtrading.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 25, 2013
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