L Catterton Management Limited v. Renae Mueller
Claim Number: FA1806001794140
Complainant is L Catterton Management Limited (“Complainant”), represented by Grace H Stanton of Perkins Coie LLP, USA. Respondent is Renae Mueller (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lcattertonlp.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 June 27, 2018; the Forum received payment on June 27, 2018.
On July 2, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lcattertonlp.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 July 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 2018 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@lcattertonlp.com. Also on July 9, 2018, 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 August 3, 2018, 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, L Catterton Management Limited, is a U.K. company and parent to a U.S.-based company that together with other related companies operates the largest and most global consumer-focused private equity group in the world under the CATTERTON and L CATTERTON marks. See Amend. Compl. Ex. D. Complainant established rights in the CATTERTON mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,666,253, registered Jan. 6, 2015 ) See Amend. Compl. Ex. E1. Complainant also claims common law rights in the L CATTERON mark. Respondent’s <lcattertonlp.com> is confusingly similar to Complainant’s mark as Respondent incorporates the entire L CATTERTON mark, merely adds, the descriptive term “LP”, and appends the “.com” generic top-level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in the <lcattertonlp.com> domain name. Respondent is not licensed or authorized to use Complainant’s L CATTERTON mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the <lcattertonlp.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to impersonate Complainant’s CEO in furtherance of a fraudulent, phishing scheme.
iii) Respondent registered and is using the disputed domain name in bad faith. Respondent used an email to impersonate Complainant as part of a fraudulent scheme. In addition, Respondent had actual knowledge of the L CATTERTON mark when it registered and subsequently used the <lcattertonlp.com> domain name.
B. Respondent
Respondent did not submit a Response.
1. Respondent registered the <lcattertonlp.com> domain name on May 5, 2018.
2. Complainant established its rights through its USPTO registrations for the CATTERTON mark (e.g., Reg. No. 4,666,253, registered Jan. 6, 2015).
3. Complainant together with other related companies operates a global consumer-focused private equity group in the world under the L CATTERTON marks, and its services are used by millions of people.
4. Complainant is the recipient of numerous awards and accolades.
5. Complainant established common law rights in the L CATTERTON mark.
6. An email address built from the disputed domain name impersonates Complainant’s Co-CEO, and fraudulently solicits money from various Complainant’s portfolio companies.
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 rights in the CATTERTON mark based upon its registration with the USPTO. Registration with USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the CATTERTON mark (e.g., Reg. No. 4,666,253, registered Jan. 6, 2015). See Amend. Compl. Ex. E1. The Panel also notes Complainant has provided a copy of its USPTO application for the L CATTERTON mark (e.g., Ser. No. 88009474, filed Jun. 21, 2018). See Amend. Compl. Ex. E4. Therefore, the Panel finds that Complainant has rights in the CATTERTON mark per Policy ¶ 4(a)(i).
Since the <lcattertonlp.com> domain name was created before Complainant’s USPTO filing date of the L CATTERTON mark, Complainant’s claims common law rights in the L CATTERTON mark dating back to at least 2016. Common law rights are typically found through a showing that a secondary meaning under Policy ¶ 4(a)(i). See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”); see also Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant claims together with other related companies that it operates the largest and most global consumer-focused private equity group in the world under the L CATTERTON marks, and its services are used by millions of people. See Amend. Compl. Ex. D, McPherson Decl. ¶¶ 3-7. In addition, Complainant is the recipient of numerous awards and accolades, further indicating recognition of the L CATTERTON mark as identifying Complainant as the source of the services. See Amend. Compl. Ex. D, McPherson Decl. ¶ 9. As the Panel finds Complainant’s contentions to be sufficient, the Panel concludes that Complainant has established common law rights in the L CATTERTON mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that the <lcattertonlp.com> domain is identical or confusingly similar to the L CATTERTON mark as it contains the mark in its entirety and adds the “LP” common abbreviation for “limited partnership” as well as the gTLD “.com.” Additions of descriptive words or common abbreviations may not sufficiently distinguish the domain name from the mark incorporated therein under Policy ¶ 4(a)(i). See Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Universal Nutrition, FA 1510186 (Forum Aug. 28, 2013) (concluding that the “<uniprotein.com> domain name is, as alleged in the Complaint, an amalgamation of a common abbreviation of Complainant’s UNIVERSAL trademark and the term ‘protein,’ which describes an aspect of Complainant’s business, plus the generic Top Level Domain (‘gTLD’) ‘.com.’”). Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that <lcattertonlp.com> domain name is confusingly similar to the L CATTERTON and CATTERTON marks per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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 an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in <lcattertonlp.com> domain name. Specifically, Complainant argues Respondent is not licensed or authorized to the CATTERTON or L CATTERTON marks and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 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). The WHOIS information of record identifies Respondent as “Renae Mueller”. See Amend. Compl. Ex. A. Additionally, Complainant argues that Respondent was not authorized to use Complainant’s marks and there is no evidence in the record to suggest Respondent was authorized to use the L CATTERTON or CATTERTON marks. The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Moreover, Complainant argues that Respondent is not using the <lcattertonlp.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to impersonate Complainant as part of a fraudulent scheme. Use of a domain name to pass off as a complainant in order to conduct a fraudulent scheme is not indicative of rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Here, Complainant claims Respondent registered the <lcattertonlp.com> domain name and used an email address built from the disputed domain name to impersonate Complainant’s Co-CEO, Scott Dahnke, and fraudulently solicit money from various Complainant’s portfolio companies. See Amend. Compl. Exs. D and D3. Thus, the Panel agrees that Respondent’s use of the domain name indicates it lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent has registered and uses the <lcattertonlp.com> domain name in bad faith. Complainant alleges Respondent is attempting to impersonate Complainant in order to conduct a fraudulent scheme for commercial gain. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith pursuant to Policy ¶ 4(b)(iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). As previously mentioned, Complainant claims Respondent registered the <lcattertonlp.com> domain name and used an email address built from the disputed domain name to impersonate Complainant’s Co-CEO, Scott Dahnke, and fraudulently solicit money from various Complainant’s portfolio companies. See Amend. Compl. McPherson Decl. ¶ 10, Ex. D3. Therefore, the Panel may find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Complainant asserts that Respondent’s use of the disputed domain name to impersonate Complainant and fraudulently solicit money from Complainant’s portfolio companies shows that Respondent had actual knowledge in Complainant’s marks. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the L CATTERTON and CATTERTON marks when it registered and subsequently used <lcattertonlp.com>, thereby supporting a finding of bad faith under 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 <lcattertonlp.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 7, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page