MAK Capital One L.L.C. v. Nicholas Nader
Claim Number: FA1609001693995
Complainant is MAK Capital One L.L.C. (“Complainant”), represented by Jeffrey I. Abrams of Harder Mirell & Abrams LLP, California, USA. Respondent is Nicholas Nader (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <makcapitalfunding.com>, registered with GoDaddy.com, LLC (“Registrar”).
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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 15, 2016; the Forum received payment on September 15, 2016.
On September 16, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the disputed domain name <makcapitalfunding.com> 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 September 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@makcapitalfunding.com. Also on September 20, 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.
A timely Response was received and determined to be complete on October 10, 2016.
On October 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman 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.
Complainant requests that the disputed domain name <makcapitalfunding.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its registered trademark and common law rights in the MAK CAPITAL trademark, described below, and submits that the disputed domain name <makcapitalfunding.com> is both identical and confusingly similar to the trademark as it is composed of the MAK CAPITAL mark followed by words “funding” and “.com.”
Complainant submits that Respondent has no rights or legitimate interests with respect to the disputed domain name asserting that Complainant never granted a license, consented to, or otherwise authorized, Respondent or anyone else associated with the disputed domain name to use the MAK CAPITAL mark.
Complainant further asserts that to the extent Respondent nonetheless attempts to assert any such right or interest in the name MAK CAPITAL that interest did not exist prior to Respondent having actual knowledge of Complainant’s exclusive rights in the mark.
Complainant asserts that it is a well-established and highly successful financial service firm in the USA and its acquisitions are the subject of news reporting in the financial services industry. Consequently it can be assumed that at the time that the disputed domain name was registered on July 16, 2016, Respondent knew of Complainant and its MAK CAPITAL mark. Complainant submits that the only reason Respondent could have selected the disputed domain name was precisely because Respondent was aware that the disputed domain name is identical to the MAK CAPITAL trademark which was registered in 2010.
Complainant submits that Respondent has used the disputed domain name for profit by placing a website at <www.makcapitalfunding.com> which hosts a page stating that a “Website is under construction. Coming soon.” A header reading “Mak Capital” displays above the aforementioned wording. Respondent appears to intend to create a website that will offer professional financial services in return for payment and there can be no doubt that Respondent is seeking to capitalize on the success and reputation of Complainant. Complainant argues that such advance awareness is evidence of prior notice, defeating exception 4(c)(i) of the Policy.See Alcon, Inc. v. ARanked, NFA Case No. FA1306493 (“capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)”). Accordingly, Respondent cannot satisfy the exception in Paragraph 4(c)(i) of the Policy.
Respondent also cannot assert that it is commonly known by the disputed domain name. There is no active web site at all associated with the disputed domain name and a Google search for the disputed domain name returns only the Respondent’s infringing website and technical information about same, including the WhoIs and DNS information. Accordingly, Complainant submits that Respondent cannot satisfy the exception in Paragraph 4(c)(ii) of the Policy.
Respondent’s infringing website appears to be a holding page for a website advertising financial services completely unrelated to Complainant but identically titled “Mak Capital”. Complainant submits that the purpose of Respondent’s conduct is clear—to misleadingly divert internet users searching for information concerning Complainant. There is no legitimate purpose or fair use of the disputed domain name. The fact that the disputed domain currently resolves to a holding page is irrelevant—various decisions exist in which the disputed domain was transferred to the trademark holder when no website was active, least of all a holding page. See Tumblr, Inc. v. Iilangshitao, WIPO Case No. D2014-1575. (See Ex. G to Abrams Decl.); Comercia Bank v. Will Rote, WIPO Case No. D2016-0425.
Complainant submits that Respondent registered and used the disputed domain name for the purpose of profiting by directing Internet traffic (people seeking information about Complainant) to Respondent’s website, in violation of Policy ¶4(b)(iv).
Furthermore Complainant submits that Respondent is infringing its rights at common law in the MAK CAPITAL trademark and is preparing to operate a website that is engaged in a business substantially similar to Complainant.
B. Respondent
In Response, by email Respondent stated that he does not wish to make any claim to this disputed domain name or anything associated with Complainant. Respondent states that he had no idea this was a trademark protected name and he just wanted to buy a domain name. He was under the impression that if the Registrar allowed him to buy the domain name he was not doing anything wrong.
Respondent requested that his Response be taken as written consent to have the disputed domain name transferred, cancelled and or made void of any ownership that Respondent may have in it. He stated that he intended also to contact the Registrar to see if he could cancel the disputed domain name with them and if he could get a refund for his out of pocket costs.
Complainant MAK Capital One LLC is a New York based hedge fund founded in 2002 with over $500 million in regulatory assets under management, with investments across a variety of industries and asset classes.
Complainant is the owner of a U.S. Trademark Registration No. 3889964 for “MAK CAPITAL,” registered on December 14, 2010, for financial services, namely, investment management services, investment advisory services and asset management services.
There is no information available about Respondent except that which is stated in the Response, the details in the WhoIs and in the Complaint.
The disputed domain name was registered on July 16, 2016.
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."
Policy ¶ 4(a) 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.
Preliminary Issue – Consent to Transfer
Respondent consents to transfer the disputed domain name to Complainant. However, after the initiation of this proceeding, the Registrar GoDaddy.com, LLC placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending.
In circumstances such as this, where a respondent does not contest the transfer of the disputed domain name but instead agrees to transfer the domain name in question to a complainant some panels have decided to forego the traditional UDRP analysis and order an immediate transfer of the domain name at issue. See for example Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Alternatively, a panel may decide that a complainant has not implicitly consented in its complaint to the transfer of the domain name at issue without a decision on the merits by the panel. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that: “Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.”
For reasons given below this Panel has decided to proceed to analyze the submissions and deliver a decision following the usual UDRP analysis.
Complainant has provided evidence to prove its claim to ownership of rights in the MAK CAPITAL mark both through its ownership of the above mentioned registered trademark and by use of the mark at common law.
Having made a comparison between the disputed domain name <makcapitalfunding.com> and Complainant’s trademark, this Panel finds that the disputed domain name is confusingly similar to the MAK CAPITAL mark as it consists of Complainant’s mark in its entirety together with the descriptive element “funding” and the gTLD “.com” extension. The word “mak” in combination with the descriptive element “capital” are the dominant elements of both the disputed domain name disputed domain name <makcapitalfunding.com> and Complainant’s mark. The addition of the descriptive element “funding” does not serve to distinguish the domain name from the trademark in any way and in fact adds to the confusing character of the domain name because it references Complainant’s financial services business. In the circumstances of this case the gTLD extension may be ignored for the purposes of the comparison.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4 (a)(1).
Rights or Legitimate Interests
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name. In those circumstances the burden of production shifts to Respondent. In his Response, Respondent has expressly admitted that he has no such rights.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a) also.
While Respondent denies that he had any knowledge of Complainant or its mark when he registered the disputed domain name, this is not credible. It is highly improbable that anyone would choose and register such a distinctive combination of elements that comprise the disputed domain name <makcapitalfunding.com> unless the registrant was actually aware of Complainant and intended to use the disputed domain name to take predatory advantage of Complainant’s mark and goodwill.
Respondent has expressly indicated an intention to use the disputed domain name to establish a website which is currently under construction. Whether or not this was a genuine intention, by publishing his “under construction” website in these circumstances he would most probably divert Internet traffic intended for Complainant to Respondent. This amounts to a bad faith use of the disputed domain name.
Furthermore, the holding page to which the disputed domain name resolved on August 23, 2016, a copy of which has been submitted in evidence by Complainant, contains a photograph of a rural snow-clad mountain scenery with the words “ Website is under construction”, “Mak Capital”, “Website is under construction coming soon” and “ “© Mak Capital – 2016”. This is clearly a flagrant attempt to give Internet visitors the impression that Respondent’s website is owned or managed by or in some way associated with Complainant. It is also an unauthorized claim that Complainant is asserting copyright in Respondent’s website. For these reasons, Respondent’s claim to have innocently selected and registered the disputed domain name disputed domain name <makcapitalfunding.com> is not in the least credible and in all probability Respondent’s offer to transfer the disputed domain name to Complainant is either an attempt to frustrate the UDRP process or an attempt to avoid a finding of bad faith registration and use.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a) and is entitled to the relief sought.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <makcapitalfunding.com> domain name be TRANSFERRED from Respondent to Complainant.
_________________
James Bridgeman, Panelist
Dated: October 21, 2016
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