DECISION

 

CLI Capital v. CLI  CAPITOL / CLICAPITAL

Claim Number: FA1912001874817

 

PARTIES

Complainant is CLI Capital (“Complainant”), represented by Christian D. Stewart of Burdett Morgan Williamson & Boykin, LLP, Texas, USA.  Respondent is CLI  CAPITOL / CLICAPITAL (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <clicapitol.com>, registered with Tucows Domains Inc..

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 12, 2019; the Forum received payment on December 12, 2019.

 

On December 12, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <clicapitol.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 December 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2020 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@clicapitol.com.  Also on December 17, 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 January 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, CLI Capital, provides real estate financing to specialty borrowers who pursue limited use real estate projects such as charter schools, churches, non-profit organizations and senior living facilities. Complainant has rights in the trademark CLI CAPITAL based upon its use in commerce since 2011 and its registration with the United States Patent Office (“USPTO”) in 2014. Respondent’s <clicapitol.com> domain name, registered on April 18, 2019, is confusingly similar to Complainant’s mark as Respondent incorporates the entire CLI CAPITAL mark, merely replaces the letter “a” with the  letter “o” and appends the “.com” generic top-level domain (“gTLD”).

 

Respondent does not have rights or legitimate interests in the <clicapitol.com> domain name. Respondent is not licensed or authorized to use Complainant’s CLI CAPITAL mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the <clicapitol.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to impersonate Complainant in furtherance of a fraudulent, phishing scheme.

 

Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to disrupt Complainant’s business by impersonating Complainant as part of an email phishing scheme. Furthermore, Respondent had actual knowledge of Complainant’s mark when it registered the <clicapitol.com> domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;

(2) Respondent has no rights to or legitimate interests in respect of the domain name; and

(3) the disputed domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the CLI CAPITAL mark based upon its registration with the USPTO.  Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides a copy of its’ USPTO registration certificate for the CLI CAPITAL mark. Therefore, the Panel finds that Complainant has rights in the CLI CAPITAL mark per Policy ¶ 4(a)(i).

 

Next, Complainant asserts that the <clicapitol.com> domain name is confusingly similar to the CLI CAPITAL mark as it contains the mark in its entirety, merely replacing the letter “a” with the letter “o” and adding the “.com” gTLD. Misspelling of a complainant’s mark, either by adding or removing letters, and adding a gTLD may not sufficiently mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Jcdecaux SA v. Robert Smets, XPO Screens B.V., D2019-2158 (WIPO Oct. 13, 2019) (“Regarding the use of the letter ‘w’ to replace the first letter ‘j’ of the Complainant’s [JCDECAUX] trademark, the Panel notes that this is a typical case of a deliberate misspelling of a mark (so-called ‘typo-squatting’), by adding, deleting, substituting or reversing the order of letters in a mark, where numerous panels in the past have found similarity to be present.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that the <clicapitol.com> domain name is confusingly similar to Complainant’s CLI CAPITAL mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).

 

Complainant argues that Respondent has no rights or legitimate interests in the <clicapitol.com> domain name. Specifically, Complainant argues that Respondent is not licensed or authorized to use the CLI CAPITAL mark and is not commonly known by the disputed domain name. In considering this issue, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.) Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (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). The WHOIS information of record identifies Respondent as “CLI  CAPITOL / CLICAPITAL,” but, in light of its fraudulent use of the disputed domain name for a phishing scheme and the lack of any Response or submission by the Respondent, the Panel finds it more likely than not that Respondent submitted false information to its registrar for use in this WHOIS record. There is no other evidence to suggest that Respondent is known by the name “CLI Capitol” or that it is authorized to use the CLI CAPITAL mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Moreover, Complainant argues that Respondent is not using the <clicapitol.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to impersonate Complainant as part of a fraudulent email phishing scheme. Use of an email address associated with the disputed domain name to pass oneself off as a complainant in furtherance of a phishing scheme is not indicative of rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy  ¶ 4(c)(iii)”). Here, Complainant claims Respondent uses an email address associated with the disputed domain name to impersonate Complainant’s Vice President/Loan Administration & Operations, and sends phishing e-mails that claim to offer financial loans but which are actually are designed to solicit payment information under false pretenses. To add to the air of legitimacy, these emails also copy Complainant’s postal address. Complainant provides copies of emails sent by Respondent concerning this alleged phishing scheme. Thus, the Panel finds that Respondent’s use of the domain name in the manner above described indicates that it lacks rights and legitimate interests in the name per Policy ¶¶ 4(c)(i) and (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered the <clicapitol.com> domain name with actual knowledge of Complainant’s rights in the CLI CAPITAL mark. Registering a domain name with knowledge of another’s rights therein may be indicative of bad faith under Policy ¶4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Here, Complainant argues that Respondent’s knowledge of Complainant’s mark prior to registering the <clicapitol.com> domain name is apparent from the use of the disputed domain name to impersonate Complainant. The Panel agrees and finds that Respondent registered the <clicapitol.com> domain name with actual knowledge of Complainant’s CLI CAPITOL mark, thus creating a foundation upon which to make out a case of bad faith per Policy ¶4(a)(iii).

 

Complainant further argues that Respondent has registered and uses the <clicapitol.com> domain name in bad faith. Specifically, Complainant alleges that Respondent attempts to disrupt Complainant’s business by attempting to impersonate Complainant as part of an email phishing scheme, presumably for commercial gain. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme constitutes bad faith pursuant to Policy ¶¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). As previously mentioned, Complainant provides evidence that Respondent uses email addresses associated with the disputed domain name to impersonate Complainant and its employee and sends phishing e-mails presumably designed to solicit information under false pretenses. Therefore, the Panel finds that Respondent has registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <clicapitol.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Steven M. Levy, Esq., Panelist

Dated:  January 13, 2020

 

 

 

 

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