The Capital Group Companies, Inc. v. GLOBAL COIN CLUB
Claim Number: FA1704001729526
Complainant is The Capital Group Companies, Inc. (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA. Respondent is GLOBAL COIN CLUB (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thecapital-group.com>, registered with eNom, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 28, 2017; the Forum received payment on April 28, 2017.
On May 1, 2017, eNom, LLC confirmed by e-mail to the Forum that the <thecapital-group.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 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@thecapital-group.com. Also on May 4, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 uses the CAPITAL GROUP mark to provide investment management services, particularly in relation to mutual funds, in the United States. Complainant is one of the world’s most successful and experienced management organizations in the world. Complainant registered its CAPITAL GROUP mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,278,544, registered Aug. 14, 2007), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <thecapital-group.com> domain name is identical or confusingly similar to Complainant’s mark because it merely prepends the mark with the generic term “the”, adds a hyphen between the terms “capital” and “group” and appends the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its CAPITAL GROUP mark in any fashion, nor does the WHOIS information indicate that Respondent is commonly known by the disputed domain name. Respondent fails to use the disputed domain name in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, upon initial registration of the disputed domain name, Respondent used it to pass off as Complainant, presumably in attempts to obtain personal or financial information from Complainant’s customers. Further, while the website was still up, Respondent offered competing services to Complainant. After the website was taken down due to the alleged phishing scheme, Respondent failed to make an active use of the resolving webpage.
Respondent registered and uses the <thecapital-group.com> domain name in bad faith. Respondent uses the disputed domain name in attempt to attract Internet traffic and commercially benefit from the goodwill of the CAPITAL GROUP mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Similarly, Respondent attempted to phish for information by passing itself off as Complainant through use of displaying Complainant’s marks on the resolving page and attempting to obtain personal or financial information through the webpage and emails using the disputed domain. Further, after Respondent had the content on its webpage taken down, Respondent failed to make an active use of the disputed domain name, further evincing bad faith. Finally, Respondent must have actual or constructive knowledge of Complainant’s rights in the CAPITAL GROUP mark as shown by Respondent prominently displaying Complainant’s marks and designs on the resolving webpage and purporting to offer competing financial services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 it registered its CAPITAL GROUP mark with the USTPO (Reg. No. 3,278,544, registered Aug. 14, 2007), and has rights in the mark under Policy ¶ 4(a)(i). Registration of a mark with the USPTO sufficiently confers rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). The Panel finds that Complainant has rights in the CAPITAL GROUP mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <thecapital-group.com> is identical or confusingly similar to Complainant’s mark because it simply prepends the mark with the generic term “the”, includes a hyphen between the terms “capital” and “group,” and appends the gTLD “.com” to the fully incorporated mark. Similar changes have not sufficiently distinguished domain names from a complainant’s mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel holds that <thecapital-group.com> is identical or confusingly similar to Complainant’s CAPITAL GROUP mark.
Complainant has proved this element.
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 (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 (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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its CAPITAL GROUP mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See 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). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The <thecapital-group.com> WHOIS information lists “GLOBAL COIN CLUB” as the registrant. Therefore, the Panel holds that Respondent is not commonly known as <thecapital-group.com>.
Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because Respondent has attempted to pass itself off as Complainant by imitating Complainant’s website. Such use is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use of a domain name. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Complainant has offered screenshot evidence of Respondent’s original resolving webpage that imitates Complainant’s business. Further, through the use of the nearly identical website, Complainant alleges that Respondent offered competing services. Using a confusingly similar domain name to offer competing services does not provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel holds that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain.
Respondent also uses the disputed domain in connection with a phishing scheme. Respondent used an email address with the disputed domain name for the purpose of luring Internet users into giving away personal information. Such use cannot be viewed as a bona fide offering of goods or services or any legitimate noncommercial or fair use. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Complainant provided screenshot evidence of an email sent from CSC Digital Brand Services reporting Respondent’s phishing scheme. On this evidence, the Panel holds that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Complainant contends Respondent has registered and uses the <thecapital-group.com> in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of Complainant’s CAPITAL GROUP mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds Respondent’s conduct is prohibited by Paragraph 4(b)(iv) of the Policy.”). Here, Complainant has provided screenshots of the <thecapital-group.com> resolving webpage which Complainant claims lures Internet users to divulge personal information on the mistaken belief that the site is associated with Complainant. As such, the Panel concludes that Respondent created a likelihood of confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant’s CAPITAL GROUP mark, it is inconceivable that Respondent could have registered the <thecapital-group.com> domain name without actual or constructive knowledge of Complainant’s rights in the mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name can adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s CAPITAL GROUP mark has created significant good will and consumer recognition around the world and has been in use by Complainant since 2007. Respondent’s prominent use of Complainant’s marks and designs on the resolving webpage further evinces actual knowledge. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights when <thecapital-group.com> was registered and subsequently used in bad faith.
Complainant further contends that Respondent used the disputed domain name in connection with a phishing scheme. Phishing for Internet user’s information under the guise of an affiliate of a complainant is evidence of bad faith under Policy ¶ 4(a)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Here, Complainant has provided email correspondence containing evidence of Respondent’s attempts to phish for Internet users’ personal banking information. The Panel finds that Respondent engaged in a phishing scheme and, therefore, acted in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant alleges that after the <thecapital-group.com> domain name was removed from the Internet, Respondent failed to make an active use of the domain name. Inactive holding of a confusingly similar domain can evince bad faith under Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). The screenshot provided by Complainant provides that the website contains the message “ERROR - Connection Error – The server connection could not be established or was terminated early.” The Panel agrees that inactive holding of a confusingly similar domain name supports a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thecapital-group.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 31, 2017
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