CapTech Ventures, Inc. v. CapTech Partners, LLC
Claim Number: FA1703001722810
Complainant is CapTech Ventures, Inc. (“Complainant”), represented by William P Dickinson of Williams Mullen, Virginia, USA. Respondent is CapTech Partners, LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <captech.com>, registered with Network Solutions, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge none has a known conflict in serving as a Panelist in this proceeding.
David L. Kreider, as the Chair of the three-member panel, along with Jeffrey M. Samuels and Paul M. DeCicco, collectively, the “Panel”.
Complainant submitted a Complaint to the Forum electronically on March 21, 2017; the Forum received payment on March 21, 2017.
On April 27, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <captech.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 May 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2017 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@captech.com. Also on May 1, 2017, 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 on May 5, 2017. The full text of the Response is set out below. The Panel notes that the unsigned Response does not comply with the certification and other requirements set out in ¶5(c)(i) through (ix) of the Rules.
On 18 May 2017, by email to the Forum, Respondent made an additional submission in the following terms:
“FYI, I have verified with Network Solutions (the domain provider) and I am now awaiting documented information from Network Solutions legal team that will show that my company had ownership of captech.com consistently since 1994 and that any links associated with the url page are standard links created by Network Solutions for any url that is "website under construction". Not only did I not benefit from these links, but I did not even know they were there - its just a standard configuration for any url that is "in construction". These two facts will prove, without a doubt, that 1) I have the right to the url since I owned and used it before Complainant and 2) I have not used the url in bad faith. I will send that information as soon as I get it from Network Solutions. Please include this correspondence in my file since my prior response did not have enough detail to cover these important issues.”
The Panel notes that Respondent’s Additional Submission does not comply with Supplemental Rule 7, as it was received after the deadline for submissions and without the required fee.
On May 18, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed David L. Kreider as Panelist; Jeffrey M. Samuels as Panelist; and Paul M. DeCicco 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 domain name be transferred from Respondent to Complainant.
A. Complainant
[a.] CONFUSING SIMILARITY OF DOMAIN TO ASSERTED MARKS (UDRP Rule 3(b)(ix)(1); UDRP Policy ¶ 4(a)(i)).
Complainant must first prove that the Domain is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Evidence of a federal registration with the United States Patent and Trademark Office (“USPTO”) is sufficient to show that Complainant has rights in a mark. See Charlotte Russe Merchandising, Inc. v. Private Registrations Aktien Gesellschaft, FA1204001439309 (Forum June 6, 2012) (“The Panel finds Complainant has successfully established rights in its mark through its registrations with the USPTO.”); Nat’l Westminster Bank plc v. onlineco, FA0703000938025 (Forum May 2, 2007) (“Complainant has established rights in the NATWEST mark through registration with the USPTO.”); Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). Here, Complainant has both federal registrations for and common law rights in the Marks.
Complainant, a corporation registered in Virginia and doing business throughout the United States, is a leading IT management consulting company. Complainant has continuously used the mark CAPTECH in connection with providing the services above since approximately April 1997. Complainant has spent a substantial sum marketing its services throughout the United States under the Marks. Complainant markets CapTech Ventures, Inc. and its services through various advertising media, including without limitation in print media and on the Internet at Complainant’s website CAPTECHVENTURES.COM, registered on or about December 30, 1997. Complainant also owns the domain name CAPTECHCONSULTING.COM, which was registered by Complainant on or about November 22, 2004. Complainant has invested great time, effort, and resources in the development of its distinctive and well known Marks, such that Complainant’s unique brand has become widely recognized as emanating from Complainant and as maintaining only the highest quality standards in consulting services.
Complainant owns the following USPTO registrations: CAPTECH, U.S. Reg. No.
2,918,334, registered in connection with “business management consultation” in International Class 35 and “computer consultation and computer programming for others” in International Class 42; CAPTECH & Design, U.S. Reg. No. 3,943,970, registered in connection with “business management consultation” in International Class 35 and “computer consultation; computer programming for others; design, maintenance, development, and updating of computer software” in International Class 42; CAPTECH VENTURES, INC., U.S. Reg. No. 2,918,331, registered in connection with “business management consultation” in International Class 35 and “computer consultation and computer programming for others” in International Class 42; and OTHERS TALK, WE LISTEN, U.S. Reg. No. 4,019,175, registered in connection with “business management consultation” in International Class 35 and “computer consultation; computer programming for others; design, maintenance, development and updating of computer software” in International Class 42.
In addition to its federal registrations, Complainant has developed common law rights in the Marks. See RML-Bel Air, LLC d/b/a Bel Air Honda v. Cayman Ninety Business c/o Domain Administrator, FA1006001327815 (Forum July 19, 2010) (“[A] complainant need not have a trademark registered with a governmental authority in order to establish rights in a mark.”). In particular, Complainant has used the CAPTECH mark continuously in United States commerce in connection with its business management and computer consultation services since at least as early as April 1997. Such use is sufficient to establish rights in the Marks. See, id. (“The Panel finds that Complainant’s continuous use of the BEL AIR HONDA mark in connection with its auto dealership and as an authorized Honda dealer since November 2001 establishes sufficient secondary meaning in the mark to evidence Complainant’s rights in the mark under Policy ¶ 4(a)(i).”). Through its USPTO registrations and continuous use in commerce, Complainant has established rights in the Marks.
The Domain name is nearly identical or confusingly similar to Complainant’s Marks. According to the WHOIS information, the Domain is currently registered in the name of CapTech Partners, LLC. The Domain’s accompanying website contains links to click-through advertising for competing consulting services. Based on the evidence set forth herein, the WHOIS information for the Domain is incorrect.
Records from the Internet Archive indicate that the Domain was likely originally owned by Capital Technologies Integration, Inc. when it was created on or about January 10, 1994. However, as demonstrated by the attached evidence from the offices of the Delaware and California Secretaries of State, Capital Technologies Integration, Inc. no longer exists. Further, beginning in 2000, the Domain’s home page stated “Capital Technologies has changed its name to siteRock Corporation to better reflect the nature of our core business: providing our customers with services that optimize the availability and performance of their ebusiness systems.” Evidence suggests that the Domain may have been transferred to CapTech Partners, LLC around 2002, and Complainant notes that, according to evidence from the Delaware and California Secretaries of State, CapTech Partners, LLC was formed in 2002 and ceased to exist in June 2005. Records from the Internet Archive further indicate that the Domain website was unavailable beginning in June 2008. Upon information and belief, Respondent was not the original registrant of the Domain and is no longer the owner of the Domain, and the Domain was transferred to the new owner on or about June 2008 when the current website with the pay-per-click advertising was established. This evidence demonstrates both that the Domain is no longer owned by the party that originally registered it in 1994 and that the WHOIS information for the Domain is incorrect and has not been updated to reflect the June 2008 transfer. The new owner to whom the Domain was transferred will be referred to throughout the remainder of this Complaint as “Owner.”
Owner’s registration and use of the Domain is confusingly similar to Complainant’s CAPTECH mark and is likely to cause consumers to believe that Owner is affiliated with or connected to Complainant. The URL for the Domain incorporates Complainant’s CAPTECH mark in its entirety without alteration. See Julius Samann Ltd. v. Johnson, FA1010001350474 (Forum Nov. 9, 2010) (finding confusingly similarity where “Respondent’s disputed domain name incorporates all of Complainant’s LITTLE TREE mark”); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).
The Domain is identical to the Marks except for the inclusion of the top-level domain “.com”, which does not obviate the confusion. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Because the Domain is nearly identical to the Marks, consumers are likely to be confused as to the Domain’s source, affiliation, sponsorship, and/or endorsement. Further, as discussed above, Complainant’s rights in the CAPTECH mark established in April 1997 significantly precede Owner’s June 2008 registration of the Domain.
In light of the foregoing, Complainant respectfully submits that Complainant’s rights in and to the Marks precede Owner’s registration of the Domain; that the URL for the Domain is nearly identical to, and thus confusingly similar to, Complainant’s federally registered Marks; that Owner’s ownership and use of the Domain are likely to cause consumer confusion; and that Complainant has thus satisfied Policy ¶ 4(a)(i).
[b.] LACK OF RIGHTS OR LEGITIMATE INTEREST IN DOMAIN (UDRP
Rule 3(b)(ix)(2); UDRP Policy ¶ 4(a)(ii)).
Pursuant to Policy ¶ 4(a)(ii), Complainant bears the initial burden to establish a prima facie case that Owner does not have rights or legitimate interests in the disputed domain name. If Complainant successfully establishes such a case, the burden shifts to the domain owner to show that it does have rights or a legitimate interest in the disputed domain name. See Nike, Inc. v. nikecolombia / nike Colombia, FA 1383828 (Forum May 24, 2011) (“Complainant is required to produce a prima facie case in support of its allegations and then the burden shifts to Respondent to prove it possesses rights or legitimate interests in the disputed domain name.”); Betsson Malta Ltd. v. Droker, D2010-0883 (WIPO Aug. 12, 2010) (“[T]here is substantial Panel authority for the proposition that, once the Complainant has established a prima facie case, the burden shifts to the Respondent to rebut that case.”).
Owner has no license, permission, or authorization from Complainant to use the Marks, including the CAPTECH mark, or any confusingly similar variations thereof. In the absence of any authorization, Owner has no right or legitimate interest in the Domain for the following additional reasons: (1) Owner does not utilize the Domain or a name corresponding to the Domain in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i); (2) Owner makes no legitimate non-commercial or fair use of the Domain under Policy ¶ 4(c)(iii); and (3) to the best of Complainant’s knowledge, Owner is not commonly known by the Domain under Policy ¶ 4(c)(ii).
The Domain is not being used in connection with any bona fide offering of goods or services, nor any legitimate noncommercial use. Instead, Owner is using the Domain to obtain revenue from pay-per-click advertising, displaying a list of links on the Domain’s website advertising competing services including “management consulting,” “technology consulting,” and “consulting firms.” Panels have found that use of a confusingly similar domain as a forum for sponsored links, a classic form of click-through or pay-per-click advertising from which Owner may benefit, does not constitute a bona fide offering of goods or services or legitimate noncommercial use. See Workday, Inc. v. Vaguine, FA1702001716531 (Forum Mar. 15, 2017) (“Respondent’s <workday.biz> domain name addresses a website that lacks any content except for a series of pay-per-click links to Complainant’s competitors and other third parties. Respondent’s use of the confusingly similar at-issue domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); Quicken Loans Inc. v. UDRP Account / P.D.R Solutions FZC, FA1701001712213 (Forum Mar. 15, 2017)(“Respondent’s actions are not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names because Respondent, likely to garner pay-per-click fees, offered links to redirect users to websites in direct competition with Complainant, including ‘Refinance Loans’, ‘Home Loans’, and <consumersadvocate.org>.”); The Toronto-Dominion Bank v. Cinelli, FA1702001716316 (Forum Mar. 7, 2017)(finding no bona fide offering of goods or services or legitimate noncommercial use where “[t]he disputed domain name incorporates Complainant's well-known registered mark, and its sole apparent use has been in connection with a website comprised of sponsored advertising links, including links to competitors of Complainant”); Allstate Ins. Co. v. Martens, FA 1390542 (Forum June 27, 2011) (finding that “using the confusingly similar disputed domain name to operate a pay-per-click link directory is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)”).
Importantly, following the transfer of the Domain to Owner, the Domain has not been used to make a bona fide offering of goods or services or a legitimate noncommercial use. Any initial bona fide use by Respondent does not permit the current nonlegitimate use of the Domain, which, upon information and belief, began after Respondent ceased to exist and the Domain was transferred to Owner in 2008. See The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services, D2007-1438 (WIPO Dec. 18, 2007) (“[T]he general rule established by panels is that a subsequent acquirer of a domain name is held to have ‘registered’ that domain name for purposes of the Policy as of the date of acquisition of the registration rights.”).
In sum, Owner is using the Domain and Complainant’s Marks to profit from pay-per-click advertising which advertises the services of Complainant’s competitors. Therefore, Owner’s behavior does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial use under Policy ¶ 4(c)(iii). See Capital One Financial Corp. v. michal restl c/o Dynadot, FA1610001696469 (Forum Nov. 2, 2016)(“Respondent registered a domain name combining Complainant's mark with a generic term relating to Complainant's business, and its only apparent use has been to display what presumably are pay-per-click links, including links to competitors of Complainant. Such use does not give rise to rights or legitimate interests under the Policy.”).
Finally, upon information and belief, Owner is not known as a business or in any other manner by the Domain, or by the name “CAPTECH” generally, under Policy ¶ 4(c)(ii). Based on the evidence discussed above, the WHOIS information for the Domain is incorrect and does not reflect accurate information for Owner. Further, Complainant has not authorized the use of the Marks, including the CAPTECH term, by Owner. See Navistar International Corporation v. N Rahmany, FA1505001620789 (ForumJune 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration)
Based on the foregoing, Owner has no rights or legitimate interests in the Domain or Complainant’s Marks. Complainant respectfully submits that it has satisfied Policy ¶ 4(a)(ii).
[c.] BAD FAITH REGISTRATION AND USE OF DOMAIN (UDRP Rule
3(b)(ix)(3); UDRP Policy ¶ 4(a)(iii)).
Owner registered and uses the Domain in bad faith pursuant to Policy ¶ 4(b)(iv) because Owner is intentionally and for commercial gain disrupting Complainant’s business and attempting to attract consumers to the website at the Domain by creating a likelihood of confusion with Complainant’s Marks.
Notably, past panels have found that using a domain name to redirect consumers to a website featuring click-through advertising constitutes bad faith use and registration under Policy ¶4(b)(iv). See Workday, Inc. v. Vaguine, FA1702001716531 (Forum March 15, 2017)(finding bad faith where the confusingly similar domain contained pay-per-click advertisements for the complainant’s competitors and other third parties); Quicken Loans Inc. v. UDRP Account / P.D.R Solutions FZC, FA1701001712213 (Forum Mar. 15, 2017) (finding bad faith where “Respondent used the disputed domain names to commercially benefit as click through websites, redirecting users to websites in direct competition with Complainant”); Geisinger Clinic v. Pham Dinh Nhut, FA1611001704942 (Forum Jan. 10, 2017) (“Complainant has provided a screenshot of the resolving page to demonstrate that Respondent is purportedly using the website to divert consumers seeking Complainant towards other companies offering health care services for profit. The Panel finds this evidence sufficient to show that Respondent is attempting to profit through confusion, and thus it finds that Respondent registered and uses the domain name in bad faith.”); Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)); Staples, Inc. and Staples the Office Superstore, LLC v. Hanna El Hin / dtaples.Com, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Further, through Owner’s use of a domain name identical to Complainant’s Marks, discussed above, Internet users could easily mistake Owner’s website as one affiliated with or authorized by Complainant. See Oklahoma State Fair, Inc. v. VistaPrint Tech. Ltd., FA1508001635616 (Forum Oct. 10, 2015). The intent to profit from such consumer confusion is evidence of bad faith. Id. (“Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion.”). In addition, as Owner has no legitimate rights or interests in Complainant’s Marks, the only reason for Owner to register and use the Domain is to attempt to trade off of the goodwill of Complainant’s Marks by confusing consumers as to source, sponsorship, affiliation, and/or endorsement. See Carrefour v. VistaPrint Tech. Ltd., D2015-0769 (WIPO June 19, 2015) (“There is substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use.”).
Moreover, although the Domain may have been created and originally used in good faith by its initial owner, upon information and belief, the Domain was transferred to Owner on or about June 2008, and Owner’s subsequent creation of a website listing pay-per-click advertisements of competing services constitutes bad faith use and registration of the Domain. See Justin.tv, Inc. v. Amador Holdings Corp / Alex Arrocha, FA1203001436777 (Forum May 17, 2012) (“It is also reasonably well-established in Policy jurisprudence that, even if a domain name had originally been registered in good faith, this fact does not provide protection for subsequent bad faith transferees. When assessing bad faith registration, one normally need only trace the registration date back to the most recent transfer of the domain name.”)
Finally, a recent panel found that, as Owner initially did here, “using a ‘privacy’ registration service in a commercial web hosting context raises a rebuttable presumption of bad faith registration and use.” Sensa Products, LLC v. WhoisGuard Protected / WhoisGuard, FA1203001433215 (ForumApr. 16, 2012).
Because Owner registered and uses the Domain purely to divert Complainant’s customers to the Domain in order to profit from pay-per-click advertising, Owner’s actions constitute bad faith registration and use of the Domain in accordance with Policy ¶ 4(b)(iv). Complainant respectfully submits that it has satisfied Policy ¶ 4(a)(iii).
B. Respondent
The full text of the Response reads as follows:
Regarding the domain dispute: www.captech.com - I have owned this website since 1994 with my first business – capital technologies. Although that business has long been sold, I wish to continue to own this url and I believe that because I was in use of this website for over 25 years, I have the legal authority to continue to own this url. Currently the url is not in use and is pending possible new business developments. Because the url is not in use and currently has no possible relation to what I believe the complainant’s business is, I don’t believe that there is any legal claim that it is confusing or infringing on Complainant’s business interests.
Complainant’s CAPTECH Mark was registered by the USPTO on January 18, 2005. Complainant alleges that it enjoys common law trademark rights through continuous use of the CAPTECH Mark in commerce since approximately April,1997.
The disputed domain name, <captech.com>, was registered on January 10, 1994.
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.
The domain name at issue is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the CAPTECH mark under Policy ¶ 4(a)(i) through registration of such mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
The disputed domain name, <captech.com>, is identical to Complainant’s CAPTECH registered Mark, except for the inclusion of the top-level domain “.com”, which is of no relevance here. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of a disputed domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Complainant has submitted records from the Delaware and California Secretaries of State reflecting that the original registrant, CapTech Partners, LLC, ceased to exist in June 2005. Complainant additionally relies on screenshots from the Internet Archive to support its allegations “upon information and belief”, that because the website to which the disputed domain name resolves was unavailable beginning in June 2008, the original registrant of the Domain no longer owned the Domain. Based on this evidence, Complainant concludes that the Domain was transferred to the new owner on or about June 2008 “when the current website with the pay-per-click advertising was established.”
Complainant asserts, this evidence demonstrates both that the Domain is no longer owned by the party that originally registered it in 1994 and that the WHOIS information for the Domain is incorrect and has not been updated to reflect the June 2008 transfer. The new owner to whom the Domain was transferred will be referred to throughout the remainder of this Complaint as “Owner.”
The Panel notes that the WHOIS information lists the “Registrant Email” as robert@captechpartners.com and that the Response and various email replies to communications from The Forum were submitted by one “Robert” at this same email address, who provided a telephone number with a +1 (510) area code. The “Admin Name” provided is “Robert Fanini”, along with phone and fax numbers using the +1 (510) area code.
The Response recites: “I have owned this website since 1994 with my first business – capital technologies. Although that business has long been sold, I wish to continue to own this url and I believe that because I was in use of this website for over 25 years, I have the legal authority to continue to own this url.”
The facts of this case are somewhat unique. Based on the evidence, it does not appear that any of the circumstances set forth in paragraph 4(c) of the Policy demonstrating rights or legitimate interests is applicable. Nevertheless, the Panel concludes that Respondent does have a right or legitimate interest in the Domain, as the original Registrant who registered the Domain in the name of one or more now defunct business entities, including CapTech Partners, LLC.
Complainant correctly asserts that the WHOIS registration data should be corrected and updated to ensure that it is accurate and accords with the Policy. However, for the reasons set forth below in connection with the “bad faith” element, in the view of the Panel, Respondent’s failure to do so should not allow Complainant to seize from Respondent the disputed Domain Name. Indeed, it appears to the Panel that the inaccuracies were the result of inadvertence rather than any intent to deceive and are generally inconsequential.
Respondent’s prior registration and use of the disputed domain name foils any prima facie case Complainant may have had showing Respondent’s lack of rights and interests. Complainant has thus failed to establish that Respondent has no rights or legitimate interests in respect of the domain name as required by Policy Paragraph 4(a)(ii).
Complainant is required to prove that Respondent both registered and used the disputed domain name in bad faith. The Panel concludes that Respondent’s principal, directly or indirectly through CapTech Partners, LLC., or others, registered the Domain in 1994, well before Complainant began its business in 1997 using the CAPTECH mark. “Generally speaking, … when a domain name is registered by the respondent before the complainant’s relied-upon trademark rights are shown to have been first established …, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.” See WIPO Overview
of WIPO Panel Views on Selected UDRP Questions (Second Edition), § 3.1 and cases cited therein. While the evidence indicates that Respondent CapTech Partners, LLC ceased to exist in June 2005, the evidence also indicates that Respondent’s principal has exercised, and continues to exercise, effective control over the disputed domain name, which he first registered in 1994, several years before Complainant first began use of the CAPTECH mark. Under such circumstances, it would exalt form over substance to conclude that the disputed domain name was registered in bad faith.
Complainant has failed to show that Respondent registered the Domain in bad faith and has not satisfied the requirement of Policy Paragraph 4(a)(iii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <captech.com> domain name REMAIN WITH Respondent.
David L. Kreider, as the Chair,
Jeffrey M. Samuels and
Paul M. DeCicco, the Panel.
Dated: May 24, 2017
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