Cerberus Capital Management, L.P. v. Peter Kozlovsky
Claim Number: FA1502001604884
Complainant is Cerberus Capital Management, L.P. (“Complainant”), represented by Scott Kareff of Schulte Roth & Zabel LLP, New York, USA. Respondent is Peter Kozlovsky (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cerberuscapitalmanagement.com>, registered with Nicco Ltd.
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 February 12, 2015; the Forum received payment on February 18, 2015. The Complaint was received in both Russian and English.
On February 20, 2015, Nicco Ltd. confirmed by e-mail to the Forum that the <cerberuscapitalmanagement.com> domain name is registered with Nicco Ltd. and that Respondent is the current registrant of the name. Nicco Ltd. has verified that Respondent is bound by the Nicco Ltd. 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 February 26, 2015, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of March 18, 2015 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@cerberuscapitalmanagement.com. Also on February 26, 2015, the Russian language 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 March 26, 2015, 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 owns the CERBERUS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No.3,208,822, registered Feb. 13, 2007). Complainant uses the CERBERUS mark in connection with its investment management firm, which offers financial services such as private equity investment. The <cerberuscapitalmanagement.com> domain name is confusingly similar to Complainant’s CERBERUS mark. The domain name contains the Complainant’s mark in its entirety, adds the generic words “capital” and “management,” and adds a generic top-level domain (“gTLD”) “.com” to the registered mark.
(ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. In addition, Complainant has not authorized Respondent to use Complainant’s trademark. Further, Respondent lacks rights or legitimate interests in the <cerberuscapitalmanagement.com> domain name, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a “parked” website, which features competing hyperlinks to third-party business that offer competing services. See Compl., at Attached Ex. B.
(iii) Respondent has engaged in bad faith registration and use of the <cerberuscapitalmanagement.com> domain name. First, Respondent has demonstrated bad faith, as evidenced through its generic offer to sell the disputed domain name. Further, Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Next, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Finally, Respondent had actual and/or constructive knowledge of Complainant’s mark at the time of registration, which is additional evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a response. The Panel notes that this <cerberuscapitalmanagement.com> domain name was registered June 29, 2012.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings in Russian. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings shall be conducted in English.
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(e), 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 (Nat. Arb. 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 asserts that it owns the CERBERUS mark through its registration with the USPTO (e.g., Reg. No. 3,208,822, registered Feb. 13, 2007). Complainant states that it uses the CERBERUS mark in connection with its investment management firm, which offers financial services such as private equity investment. The Panel recalls that registration with a federal trademark agency sufficiently demonstrates a complainant’s rights to the mark, despite any evidence that the respondent may live in another country. The Panel concludes that Complainant’s valid registration of the CERBERUS mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i), even though Respondent reportedly resides in Russia. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant contends that the <cerberuscapitalmanagement.com> domain name is confusingly similar to Complainant’s CERBERUS mark. The domain name contains the Complainant’s mark in its entirety, adds the generic words “capital” and “management,” and adds a gTLD “.com” to the registered mark. Past panels have found that the addition of generic words and a gTLD to a registered mark are insufficient to distinguish the disputed domain name from a complainant’s mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Therefore, this Panel determines that the disputed domain name is confusingly similar to Complainant’s CERBERUS 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 (Nat. Arb. 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 (Nat. Arb. 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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Complainant urges that Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name lists “Peter Kozlovsky” as the registrant of record. In addition, Complainant has not authorized Respondent to use Complainant’s trademark. The Panel agrees that these contentions sufficiently establish Respondent’s lack of rights to the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant asserts that Respondent lacks rights or legitimate interests in the <cerberuscapitalmanagement.com> domain name, as evidenced by Respondent’s use of competing hyperlinks on its resolving web page. Respondent’s disputed domain name resolves to a “parked” website, which features competing hyperlinks to third-party business that offer competing services. See Compl., at Attached Ex. B. Past panels have found that the use of competing hyperlinks on a parked webpage is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel agrees that Respondent has no rights or legitimate interests in respect to the disputed domain name under Policy ¶¶ 4(c)(i) or (c)(iii).
Complainant asserts that Respondent has demonstrated bad faith, as evidenced through its generic offer to sell the disputed domain name. The resolving website includes an offer to sell the disputed domain name, stating, “The owners of the <cerberuscapitalmanagement.com> domain name are accepting offers from interested parties willing to obtain ownership rights over the domain name.” See Compl., at Attached Ex. B. Such evidence has been viewed as bad faith registration by previous panels. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). The Panel finds bad faith registration and use under Policy ¶ 4(b)(i).
Complainant asserts that Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website to its own website, which features third-party links to Complainant’s competitors. The Panel recalls that some of the listed hyperlinks include “Private Equity Funds” and “Capital Advisors.” Past panels have found bad faith under Policy ¶ 4(b)(iii) when respondent’s website contains commercial links to websites of complainant’s competitors. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel concludes that Respondent’s use competes with Complainant, and thus this Panel finds bad faith registration and use under Policy ¶ 4(b)(iii).
Further, Complainant contends that Respondent intentionally attracts, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s mark. Complainant asserts that Respondent has commercially benefited by consumers’ confusion as to the source, sponsorship, or affiliation of Respondent’s website, products, or services. Past panels have agreed that using competing pay-per-click hyperlinks, presumably for financial gain, are illustrative of bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Consequently, this Panel finds that Respondent has engaged in bad faith according to Policy ¶ 4(b)(iii).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant’s mark at the time of registration. Complainant urges that actual knowledge here is evidenced by Respondent’s use of the disputed domain name in conjunction with a website that advertises competing services. Further, Complainant argues that Respondent had at least constructive knowledge of Complainant’s rights in the CERBERUS mark because of Complainant’s registration of the mark with the USPTO. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel infers that, due to the fame of Complainant's mark and the content advertised on Respondent’s website, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject 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 <cerberuscapitalmanagement.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 6, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page