Cerberus Capital Management, L.P. v. Jake Newton
Claim Number: FA1503001610865
Complainant is Cerberus Capital Management, L.P. (“Complainant”), represented by Scott Kareff of Schulte Roth & Zabel LLP, New York, USA. Respondent is Jake Newton (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cerberuscapitallp.com>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2015; the Forum received payment on March 30, 2015.
On March 24, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cerberuscapitallp.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2015 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@cerberuscapitallp.com. Also on April 1, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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 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 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.
A. Complainant
(i) Complainant uses the CERBERUS mark in connection with its investment management firm. Complainant has registered the CERBERUS mark with the likes of the United States Patent and Trademark office (“USPTO”) (e.g., Reg. No. 3,208,822, registered February 13, 2007), establishing its rights in the mark. Respondent’s <cerberuscapitallp.com> domain name is confusingly similar to Complainant’s CERBERUS mark because it incorporates the mark in its entirety and adds the descriptive term “capital” and descriptive acronym “lp” as well as the “.com” generic top-level domain.
(ii) Respondent has no rights or legitimate interests in the <cerberuscapitallp.com> domain name. Respondent is not commonly known by the disputed domain name, nor has it received any authorization to register such a domain name from Complainant. Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use through the domain name. Rather, it has used the <cerberuscapitallp.com> domain name for commercial gain with the intent to defraud other businesses to obtain goods at Complainant’s expense.
(iii) Respondent has acted in bad faith. Respondent has attempted to mislead Complainant’s suppliers to fraudulently obtain goods and services at Complainant’s expense. Respondent has attempted to pass itself off as Complainant in fraudulent e-mails, as demonstrated. Further, Respondent registered the <cerberuscapitallp.com> domain name with actual or constructive knowledge of the CERBERUS mark and Complainant’s rights in the mark.
B. Respondent
Respondent did not submit a response. The Panel notes that the <cerberuscapitallp.com> domain name was registered on January 1, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 uses the CERBERUS mark in connection with its investment management firm. Complainant purports to have registered the CERBERUS mark with the likes of the United States Patent and Trademark office (“USPTO”) (e.g., Reg. No. 3,208,822, registered February 13, 2007), arguing that such a registration evinces rights in a mark. Panels have found USPTO registrations as sufficient in demonstrating rights in a mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Next, Complainant contends that Respondent’s <cerberuscapitallp.com> domain name is confusingly similar to Complainant’s CERBERUS mark because it incorporates the mark in its entirety and adds the descriptive term “capital” and descriptive acronym “lp” as well as the “.com” generic top-level domain. The Panel agrees that such alterations are insufficient in distinguishing the disputed domain name from the CERBERUS mark under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Algemeen Nederlands Persbureau ANP B.V. v. European Travel Network, D2004-0520 (WIPO Sept. 8, 2004) (finding confusing similarity where “[d]istinctive elements of the Complainant’s marks, notably the acronym ANP, are reproduced entirely in the domain name.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel agrees that the <cerberuscapitallp.com> domain name is confusingly similar to Complainant’s CERBERUS mark under Policy ¶ 4(a)(i).
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 contends that Respondent has no rights or legitimate interests in the <cerberuscapitallp.com> domain name. First, Complainant argues that Respondent is not commonly known by the disputed domain name, nor has it received any authorization to register such a domain name from Complainant. Per the WHOIS information and the fact that Respondent has failed to submit any evidence in this proceeding, the Panel agrees that there is no basis upon which a finding of “commonly known by” is appropriate under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Next, Complainant contends that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use through the domain name. The Panel notes Complainant’s attached Exhibit B, which is purportedly the resolving page for the <cerberuscapitallp.com> domain name. As the page appears to be inactively held, the Panel agrees that the disputed domain name presents no bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Further, Complainant has provided correspondence with Respondent in which Respondent is purportedly attempting to defraud a business entity associated with Complainant. See Compl., at Attached Ex. C. In light of Respondent’s attempts to use the goodwill associated with Complainant’s mark in a fraudulent phishing scheme, this Panel agrees that Respondent has no rights or legitimate interests in the <cerberuscapitallp.com> domain name. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant contends that Respondent has attempted to mislead Complainant’s suppliers to fraudulently obtain goods and services at Complainant’s expense. Complainant argues that Respondent’s attempt to use the <cerberuscapitallp.com> domain name to pass itself off as Complainant in emails constitutes bad faith. The Panel recalls that Respondent has used the associated e-mail string in furtherance of commercial fraud. See Compl., at Attached Ex. C. The Panel agrees that such fraudulent activity via the disputed domain name lends evidence to support a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Nat. Arb. Forum Oct. 29, 2014) (“Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”).
Finally, Complainant argues that Respondent registered the disputed domain name with actual or constructive knowledge of the CERBERUS mark. Complainant argues that its notoriety is conclusive of Respondent’s knowledge of the CERBERUS mark. Complainant also notes that Respondent has attempted to pass itself off as Complainant in fraudulent e-mails, as demonstrated by Exhibit C. See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Nat. Arb. Forum Oct. 29, 2014) (“Respondent’s knowledge of Complainant’s mark is apparent by Respondent’s attempt to project itself as Complainant.”). The Panel infers due to the manner of use of the disputed domain name by Respondent and the notoriety of the client’s mark that Respondent had actual knowledge of Complainant’s rights in the CERBERUS mark, constituting bad faith registration and use per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cerberuscapitallp.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 1, 2015
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