TI Capital Management, LLC v. Albert Odessky
Claim Number: FA1903001836457
Complainant is TI Capital Management, LLC (“Complainant”), represented by Michael E. Bubman of Mirman, Bubman & Nahmias, LLP, Los Angeles, CA, USA. Respondent is Albert Odessky (“Respondent”), Lithuania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ticapitai.com>, registered with NameCheap, Inc..
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 28, 2019; the Forum received payment on March 28, 2019.
On March 29, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <ticapitai.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2019 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@ticapitai.com. Also on April 2, 2019, 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 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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
Complainant does project management and consulting services in the oil and gas, power, energy, architectural, and water sectors. Complainant has rights in the TI CAPITAL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,487,299, registered Sep. 11, 2001). See Compl. Annex 2. Respondent’s <ticapitai.com> domain name is identical or confusingly similar to Complainant’s mark as it merely changes the letter “l” in Complainant’s mark to the letter “i,” removes the space, and appends the “.com” gTLD.
Respondent has no rights or legitimate interests in the <ticapitai.com> domain name. Respondent uses the disputed domain name to impersonate Complainant in furtherance of fraud. Additionally, Respondent does not make active use of the disputed domain name.
Respondent registered and uses the <ticapitai.com> domain name in bad faith. Respondent used the disputed domain name to impersonate Complainant and commit various frauds posing as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <ticapitai.com> domain name on March 15, 2019.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that the disputed domain name, <ticapitai.com>, is confusingly similar to Complainant’s valid and subsisting trademark, TI CAPITAL. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely changing the “l” in Complainant’s mark to a “i,” deleting the space, and adding the “.com” gTLD. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the dispute domain name is confusingly similar to Complainant’s trademark.
The Panel also finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the dispute domain name.
The disputed domain name was registered two days before Respondent hacked into Complainant’s Network Solutions account and made changes to the credentials for the account and further routed emails to Respondent’s addresses at the <ticapitai.com> domain for the sole purpose of impersonating Complainant to commit fraud.
Additionally, Complainant asserts that Respondent fails to make active use of the <ticapitai.com> domain name. Failure to actively use a disputed domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”).
As such, the Panel finds that Respondent lacks any rights or legitimate interests in and to the disputed domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the dispute domain name. Respondent registered and uses the <ticapitai.com> domain name in bad faith as Respondent disrupts Complainant’s business by using the disputed domain name to pass off as Complainant via email in furtherance of fraud. Use of a disputed domain name to send fraudulent emails supports a finding of bad faith registration and use under Policy ¶ 4(b)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant asserts that Respondent used the email address associated with the disputed domain name to pass off as Respondent and attempt to change the registrar credentials for Complainant’s own domain name, redirecting emails to Respondent’s email address. See Amend. Compl. Annexes 4 and 5. Respondent then apparently attempted to purchase goods or services while impersonating Complainant. See Compl. Annex 6. As such, the Panel finds that Respondent’s actions constituted bad faith per Policy ¶ 4(b)(iii).
The Panel also finds that, given the totality of the circumstances, Respondent must have had actual knowledge of Complainant’s prior rights in and to its trademark.
As such, the Panel finds that Respondent engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <ticapitai.com> domain name TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: April 27, 2019
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