Formation Capital, LLC v. KARINA HERRER / MATT NEFF
Claim Number: FA1604001672265
Complainant is Formation Capital, LLC (“Complainant”), represented by Martin W. Hayes of Williams Mullen, Virginia, USA. Respondent is KARINA HERRER / MATT NEFF (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <formatiomcapital.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2016; the Forum received payment on April 27, 2016.
On April 27, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <formatiomcapital.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the names. 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 April 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2016 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@formatiomcapital.com. Also on April 28, 2016, 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 May 24, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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’s Contentions
1. Complainant is a leading private investment management firm focused on senior housing and care, post-acute and health care real estate investments. Complainant has used the FORMATION CAPITAL mark continuously since 1998 in advertising its business. Respondent’s <formatiomcapital.com> domain name is a typosquatted version of Complainant’s FORMATION CAPITAL mark. The change of “n” to an “m” in the mark and the addition of the generic top level domain (“gTLD”) “.com” capitalizes on a common typographical error made by internet users.
2. Respondent is not commonly known by or authorized to use the FORMATION CAPITAL mark. Respondent does not have any rights or legitimate interests in the disputed domain name. Respondent is using the domain names to both pass itself off as Complainant and run a phishing scheme attempting to have Complainant’s to authorize wire transfers.
3. Respondent has engaged in bad faith registration and use. Respondent is attempting to both disrupt Complainant’s business and commercially profit from a likelihood of confusion through its phishing scheme.
B. Respondent’s Contentions
1. Respondent did not submit a response for its consideration in this proceeding.
1. Respondent’s <formatiomcapital.com> domain name is confusingly similar to Complainant’s FORMATION CAPITAL mark.
2. Respondent does not have any rights or legitimate interests in the <formatiomcapital.com> domain name.
3. Respondent registered or used the <formatiomcapital.com> 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(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 (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 claims that it has operated its private investment management firm focused on senior housing and care, post-acute and health care real estate investments for over 15 years. Complainant has provided the panel with Complainant’s Ex. 2, showing the registration date for its <formationcapital.com> domain name on May 7, 1999. While Complainant does not hold a registered trademark for the FORMATION CAPITAL mark, this does not preclude it from establishing Policy ¶ 4(a)(i) rights in the mark. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Complainant asserts that through its continuous and ongoing use of the FORMATION CAPITAL mark for 15 years, it has established secondary meaning in the mark. While Complainant has only provided evidence of its registration of its own domain name in 1999, the Panel agrees that owning a domain name identical to a mark aids in the establishment of secondary meaning. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant has used its mark in the oil and gas industry since 1997. Complainant has used its mark in the real estate industry since 2004. Complainant’s rights were previously recognized in Klabzuba Oil & Gas, Inc. v. ross micheal, Claim Number: FA1505001619813.”); see also MediaBiotics Labs., L.L.C. v. NOLDC, Inc., FA 346252 (Forum Dec. 7, 2004) (“Complainant’s previous registration of domain names reflecting Complainant’s CORTIBURN, CORTIZIDE and ANXIETOL 7 marks evidences Complainant’s rights in the marks.”). Therefore, the Panel holds that Complainant has established secondary meaning in the FORMATION CAPITAL mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <formatiomcapital.com> domain name is a typosquatted version of Complainant’s FORMATION CAPITAL mark. Complainant’s position is that changing “n” to an “m” in the mark and the addition of the generic top level domain (“gTLD”) “.com” capitalizes on a common typographical error made by internet users. Panels have seen similar typosquatted alterations to a mark as insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark). Furthermore, the addition of a gTLD has been found irrelevant in a Policy 4(a)(i) analysis. See e.g., Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007). The Panel agrees with Complainant and hold that the <formatiomcapital.com> domain name is confusingly similar to the FORMATION CAPITAL 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 (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 (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 asserts that Respondent is not commonly known as the disputed domain names, nor is Respondent in possession of licensing rights that would allow him to use the FORMATION CAPITAL mark in a domain name. The Panel recalls that Respondent has failed to submit a Response to rebut any of these contentions. The Panel agrees with Complainant that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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).
Complainant argues that Respondent’s use of the disputed domain names fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant asserts that Respondent is both attempting to pass itself off as Complainant and in furtherance of a phishing scheme aimed at Complainant’s employees. “Phishing” is defined as a practice that is intended to defraud consumers into revealing personal and proprietary information. See e.g., Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004). Complainant has submitted Exhibit 4, which it claims shows an email sent from Respondent attempting to have a fraudulent wire transfer authorized. Prior panels have also found attempts by a respondent to pass itself of as the complainant or fraudulently obtain the personal information of Internet users to be inconsistent with the rights normally granted under Policy ¶¶ 4(c)(i) or (iii) . See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); 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).”). The Panel finds that Respondent is either attempting to pass itself off as Complainant or run a phishing scheme, and it declines to award Respondent rights or legitimate interests.
Complainant argues that Respondent’s use of a domain name confusingly similar to the FOUNDATION CAPITAL mark in an email address will foster the belief that the emails are sponsored by or affiliated with Complainant. Complainant further argues that Respondent may be profiting if its attempts to get a wire transfer authorized go through. Prior panels have found Policy ¶ 4(b)(iv) bad faith where the respondent has created a likelihood of confusion and profited in the process. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA14009001581255 (Forum October 29, 2014) (“The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”). The Panel finds that a likelihood of confusion exists, and that Respondent is profiting in the process, it finds bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <formatiomcapital.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 6, 2016
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