SHUAA Capital psc v. ANDRE GANYO
Claim Number: FA1409001580226
Complainant is SHUAA Capital psc (“Complainant”), represented by David Bateman of K&L Gates LLP, Washington, USA. Respondent is ANDRE GANYO (“Respondent”), Togo.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shuaacapitalpscae.com>, registered with eNOM, 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 September 17, 2014; the National Arbitration Forum received payment on September 17, 2014.
On September 19, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <shuaacapitalpscae.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 September 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 2014 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@shuaacapitalpscae.com. Also on September 24, 2014, 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 October 22, 2014, 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
Complainant is a Dubai-based publically traded company that offers financial services to its corporate and institutional clients, with its stock listed on the Dubai Financial Market. The SHUAA CAPITAL mark is used by Complainant to identify these services, and the mark has been registered with the United Arab Emirates Ministry of Economy and Commerce (“UAEMEC”) (e.g., Reg. No. 88,889, registered May 27, 2008). The addition of “psc” and “ae” enhance confusion because “psc” is a common term for the phrase “public stock company” in Dubai and “ae” is a geographic descriptor of the Arab Emirates area.
Respondent has no rights or legitimate interests in the <shuaacapitalpscae.com> domain name. Respondent has no authority to use Complainant’s marks and nothing in WHOIS suggests Respondent is actually known by the <shuaacapitalpscae.com> domain name. Further, Respondent uses the domain name to host e-mail accounts so Respondent can pose as Complainant’s officials and make fraudulent offers to provide loans in exchange for surety deposits from various Internet users.
Respondent registered and used the <shuaacapitalpscae.com> domain name in bad faith. Respondent is capitalizing on a likelihood Internet users will be confused and believe that Respondent is in fact an office of Complainant with authorization to bind Complainant to contracts. The use of the domain name by Respondent to pass-off as Complainant’s executives illustrates bad faith, especially when Respondent is promising to loan money and accept deposits in the name of Complainant. Further, Respondent’s knowledge of Complainant’s mark is apparent by Respondent’s ability to masquerade as Complainant’s officers.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief.
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 is a Dubai-based publically traded company that offers financial services to its corporate and institutional clients, with its stock listed on the Dubai Financial Market. The SHUAA CAPITAL mark is used by Complainant to identify these services, and the mark has been registered with the United Arab Emirates Ministry of Economy and Commerce (“UAEMEC”) (e.g., Reg. No. 88,889, registered May 27, 2008). The Panel agrees that Complainant’s usage of the mark in its Dubai-based business, and registration of the mark with the appropriate registrar, demonstrates sufficient Policy ¶ 4(a)(i) rights to proceed under the UDRP. See, e.g., Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant claims the addition of “psc” and “ae” enhance confusion because “psc” is a common term for the phrase “public stock company” in Dubai and “ae” is a geographic descriptor of the Arab Emirates area. The Panel agrees that the abbreviations “psc” and “ae” enhance confusing similarity as the SHUAA CAPITAL mark is used in connection with Complainant’s UAE-based public stock company, and the addition of the gTLD is irrelevant. See Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of 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 argues that Respondent has no authority to use Complainant’s marks and nothing in WHOIS suggests Respondent is commonly known by the <shuaacapitalpscae.com> domain name. The WHOIS records lists “ANDRE GANYO” as the registrant of record for the domain name. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record), the panel declined to find under Policy ¶ 4(c)(ii) when nothing in the record supported the assertion that the respondent was “commonly known as” the disputed domain name. The Panel agrees that there is no evidence in the record that Respondent is commonly known by the <shuaacapitalpscae.com> domain name under Policy ¶ 4(c)(ii).
Complainant claims that Respondent is using the domain name to host e-mail accounts so Respondent can pose as Complainant’s officials and has made fraudulent offers to provide loans in exchange for surety deposits from various Internet users. Respondent is imitating Complainant in a sophisticated apparent scam. The Panel finds that these actions show that no Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, has been made of the domain name because the e-mail accounts were used in a passing-off scam. See, e.g., 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); Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Nat. Arb. Forum May 5, 2014) (the panel found that the respondent lacked rights and legitimate interests in the disputed domain name where the respondent used the domain name to send e-mails to various IT hardware suppliers in an attempt to impersonate the complainant and defraud the suppliers).
Complainant has proven this element.
Complainant argues that Respondent is capitalizing on a likelihood that Internet users will be confused and believe that Respondent is in fact an office of Complainant with authorization to bind Complainant to contracts. In Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), the panel held that, in general, a confusingly similar domain name cannot be used in a manner that generates profit for the respondent based on the likelihood of false association of the domain name with a third-party mark holder. The Panel agrees that Respondent’s efforts in e-mailing prospects, as evidenced in Complainant’s exhibits, amount to Policy ¶ 4(b)(iv) bad faith through the capitalization of Internet users’ confusion.
Complainant argues that the use of the domain name by Respondent to pass-off as Complainant’s executives demonstrates bad faith, especially when Respondent is promising to loan money and accept deposits in the name of Complainant. Respondent is posing as Complainant’s executives and sending e-mails to set up business transactions. The Panel agrees that this attempt by Respondent to pass off as Complainant is indicative of broader bad faith under Policy ¶ 4(a)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).
Complainant argues that Respondent’s knowledge of Complainant’s mark is apparent by Respondent’s ability to masquerade as Complainant’s officers. The Panel find that Respondent’s registration and use of the domain name with actual knowledge of Complainant’s rights, and with disregard for those rights, is indicative of Policy ¶ 4(a)(iii) bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. 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.”).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <shuaacapitalpscae.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: October 23, 2014
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