Silver Point Capital, L.P. v. Alex Kennedy / SilverPoint LP
Claim Number: FA1901001827982
Complainant is Silver Point Capital, L.P. (“Complainant”), represented by Scott Kareff of Schulte Roth & Zabel LLP, New York, USA. Respondent is Alex Kennedy / SilverPoint LP (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <silverpointlp.com> (the “Domain Name”), registered with Omnis Network, LLC.
The undersigned certifies that they have acted independently and impartially and, to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.
Clive Lincoln Elliott QC (Chair); Honorable Karl V. Fink, (Ret.) and Carol Stoner, Esq., as Panelists.
Complainant submitted a Complaint to the Forum electronically on January 31, 2019; the Forum received payment on February 7, 2019.
On February 15, 2019, Omnis Network, LLC confirmed by e-mail to the Forum that the Domain Name is registered with Omnis Network, LLC and that Respondent is the current registrant of the name. Omnis Network, LLC has verified that Respondent is bound by the Omnis Network, 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 February 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 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@silverpointlp.com. Also on February 21, 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 March 20, 2019, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed: Clive Lincoln Elliott QC (Chair); Honorable Karl V. Fink, (Ret.) and Carol Stoner, Esq., as Panelists.
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 is a prominent SEC-registered investment advisor founded in 2002, focused on special situations, specialty credit, and distressed opportunities investments. Complainant has rights in the SILVER POINT mark (“Complainant’s Mark”) through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,739,107, registered Jan. 19, 2010). See Compl. Annex A. Respondent’s <silverpointlp.com> domain name (the “Domain Name”) is identical or confusingly similar to Complainant’s mark as it consists of the entire mark and adds “lp,” a generic corporate suffix.
Complainant argues that Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use Complainants Mark. Respondent also does not use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Complainant submits that Respondent uses the Domain Name to pass off as Complainant to trick users into believing Respondent is affiliated with Complainant to commercially benefit from a fraudulent phishing scheme. See Compl. Annex E.
Complainant argues that Respondent registered and uses the Domain Name in bad faith. Respondent disrupts Complainant’s business by using the Domain Name to mislead members of the public as part of a phishing scheme to fraudulently obtain private personal or financial information by creating the false pretense that Respondent is Complainant. See Compl. Annex E. Further, Complainant contends that Respondent clearly had actual and/or constructive knowledge of Complainant’s rights in Complainant’s Mark given Respondent’s prior solicitation and knowledge of Complainant, the inclusion of Complainant’s investment strategies, color scheme and locations from which it conducts business or has employees on the website.
B. Respondent
Respondent failed to submit a response in this proceeding. Respondent registered the Domain Name on June 1, 2017.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant claims rights in the SILVER POINT mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,739,107, registered Jan. 19, 2010). See Compl. Annex A. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.... Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in Complainant’s Mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that the Domain Name is identical or confusingly similar to Complainant’s Mark as it consists of the entire mark and adds “lp,” a generic corporate suffix. The removal of spaces, and the addition of generic terms and/or gTLDs generally fail to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). They are irrelevant in determining whether the Domain Name is confusingly similar. The Panel therefore finds that the Domain Name is confusingly similar to Complainant’s Mark under Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant is required to establish a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii). If it does so the burden shifts to Respondent to show it does in fact have rights or legitimate interests.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Where a response is lacking, as in this case, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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). In the present case the WHOIS identifies “Alex Kennedy / SilverPoint LP” as the registrant.
Further, Complainant convincingly argues that Respondent has never been legitimately affiliated with Complainant, has never been known by the Domain Name prior to its registration, and Complainant has not given Respondent permission to use Complainant’s Mark in any manner. Accordingly, the Panel accepts that Respondent is not commonly known by the Domain Name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the Domain Name to pass off as Complainant to trick users into believing Respondent is affiliated with Complainant to commercially benefit from a fraudulent phishing scheme. It is well established that passing off as a complainant to further a phishing scheme can evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
Complainant provides a screenshot of the resolving webpage associated with the Domain Name, which displays the message “Silver Point, LP is a leading middle market specialty finance company specializing in real estate lending alternative investments, credit and special situations investments” on the home page and purports to allow users to submit applications for loans. See Compl. Annex E. Complainant has offered credible evidence that Respondent allows users to submit applications to fraudulently acquire personal and/or financial information from Internet users. As such, the Panel concludes that Respondent’s use of the Domain Name to pass off as Complainant and in connection with a fraudulent phishing scheme fails to indicate a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant therefore, has met its burden to establish a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii). And because Respondent has not responded, Respondent has not met its shifted burden to show that it does have rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant claims that Respondent disrupts Complainant’s business by using the Domain Name to mislead members of the public as part of a phishing scheme to fraudulently obtain private personal or financial information by creating the false pretense that Respondent is Complainant. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)).
Complainant’s provided screenshot of the resolving webpage associated with the Domain Name displays the message “Silver Point, LP is a leading middle market specialty finance company specializing in real estate lending alternative investments, credit and special situations investments” on the home page and purports to allow users to submit applications for loans. See Compl. Annex E. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Finally, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s Mark at the time of registering the Domain Name. In the present case both Complainant and Respondent appear to operate in the same or similar field, and both appear to use the same or similar verbiage and coloration regarding their services. Further, Complainant alleges that Respondent solicited a loan from Complainant in prior years but supplies no evidence of such solicitation. Nevertheless, in the absence of any attempt to refute these allegations and on the basis of the evidence and submissions as a whole, the Panel is satisfied it can infer bad faith registration and use in these particular circumstances.
Knowledge can be inferred in this case given Respondent’s prior solicitation and knowledge of Complainant, the inclusion of Complainant’s investment strategies, color scheme and locations from which it conducts business or has employees on the website. The Panel therefore finds that Respondent had the requisite knowledge of Complainant’s mark, demonstrating 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 <silverpointlp.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Clive Lincoln Elliott QC (Chair)
The Honorable Karl V. Fink, (Ret.) and Carol Stoner, Esq., as Panelists.
Dated: March 29, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page