Contrarian Capital Management, L.L.C. v. Thomas Montgomery
Claim Number: FA1909001864233
Complainant is Contrarian Capital Management, L.L.C. (“Complainant”), represented by Mark J. Hyland of Seward & Kissel LLP, New York, USA. Respondent is Thomas Montgomery (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <contrariancapitalllc.com>, registered with LiquidNet 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 26, 2019; the Forum received payment on September 26, 2019.
On October 2, 2019, LiquidNet Ltd. confirmed by e-mail to the Forum that the <contrariancapitalllc.com> domain name is registered with LiquidNet Ltd. and that Respondent is the current registrant of the name. LiquidNet Ltd. has verified that Respondent is bound by the LiquidNet 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 October 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@contrariancapitalllc.com. Also, on October 7, 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 October 29, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 manages investment funds and accounts. Complainant has rights in the CONTRARIAN CAPITAL mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,207,736, registered Feb. 13, 2007). Respondent’s <contrariancapitalllc.com> domain name is identical or confusingly similar to Complainant’s CONTRARIAN CAPITAL mark because it wholly incorporates Complainant’s CONTRARIAN CAPITAL mark.
Respondent lacks rights or legitimate interests in the <contrariancapitalllc.com> domain name. Respondent is not authorized or licensed to use Complainant’s CONTRARIAN CAPITAL mark and there is no evidence to suggest that the Respondent listed in the WHOIS record is commonly known by the disputed domain name. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert users away from Complainant’s to Respondent’s website for commercial gain.
Respondent registered and uses the <contrariancapitalllc.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name by diverting users away from Complainant’s website. Respondent has failed to respond to Complainant’s cease-and-desist letters. Respondent also registered the disputed domain name under a privacy service. Finally, Respondent had actual knowledge of Complainant’s CONTRARIAN CAPITAL mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Contrarian Capital Management, L.L.C. (“Complainant”), of Greenwich, CT, USA. Complaint is the owner of the domestic registration for the mark CONTRARIAN CAPITAL, which it has used continuously since at least as early as 1995, in connection with its provision of investment management and consultations in the financial services realm.
Respondent is Thomas Montgomery (“Respondent”), of Frisco, TX, USA. Respondent’s registrar’s address is listed as London, United Kingdom. The Panel notes that the disputed domain name was registered on or about September 29, 2017.
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”).
Complainant asserts rights in the CONTRARIAN CAPITAL mark based upon registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Here, Complainant provides registrations for its trademarks (“USPTO”) (e.g., Reg. No. 2,207,736, registered Feb. 13, 2007). The Panel here finds that Complainant has rights in the CONTRARIAN CAPITAL mark per Policy ¶ 4(a)(i).
Respondent’s <contrariancapitalllc.com> domain name is identical or confusingly similar to Complainant’s CONTRARIAN CAPITAL mark because it wholly incorporates Complainant’s CONTRARIAN CAPITAL mark. The Panel notes, though Complainant does not argue it, that the disputed domain name also adds the generic or descriptive term “llc” to the mark, as well as the “.com” generic top-level domain. The addition of generic or descriptive terms and a gTLD to a complainant’s mark have been found insufficient to withstand a test of confusing similarity pursuant to Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel here finds that Respondent’s disputed domain name is identical or confusingly similar to the Complainant’s CONTRARIAN CAPITAL mark.
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <contrariancapitalllc.com> domain name as Respondent is not authorized by Complainant to use the CONTRARIAN CAPITAL mark and there is no evidence to suggest Respondent is commonly known by the disputed domain name. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Complainant provides WHOIS information for Respondent indicating that Respondent is known as “Thomas Montgomery” and no information in the record indicates that Respondent was authorized to use the Complainant’s CONTRARIAN CAPITAL mark. The Panel here finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Use of a disputed domain name to divert users to its own website for commercial gain is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See The Procter & Gamble Company v. Nathan Richardson / MonoFoil USA, FA 1719890 (Forum Apr. 11, 2017) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage, which redirects to a website for the “Business Credit Literacy Initiative.” The Panel here finds Respondent has failed to provide proof of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant also contends Respondent’s intentional use of the <contrariancapitalllc.com> domain name to create a likelihood of confusion with Complainant’s mark in order to attract Internet users for commercial gain is evidence of Respondent’s bad faith. Use of a confusingly similar domain name can indicate bad faith registration and use per Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). The Panel again notes that Complainant provides a screenshot of the disputed domain name’s resolving webpage, which redirects to a website for the “Business Credit Literacy Initiative.” Complainant further contends that Respondent’s use of this domain name is to either divert for commercial gain or hold the domain name hostage until it can sell the name and raise funds to transfer the content to a new URL. The Panel here finds the evidence indicates Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant asserts that Respondent registered and uses the <contrariancapitalllc.com> domain name in bad faith because Respondent had actual knowledge of Complainant’s CONTRARIAN CAPITAL mark prior to registering the disputed domain name. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a mark on a resolving webpage may demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting bad faith. Finex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant contends that Respondent had actual knowledge based upon Respondent’s use of Complainant mark in the disputed domain name. The Panel here finds the evidence sufficient to support the conclusion that Respondent had actual notice of Complainant’s rights in the CONTRARIAN CAPITAL mark thus registering and using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <contrariancapitalllc.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 12, 2019
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