The Capital Group Companies, Inc. v. Evgeniy Semenchuk / Private Person
Claim Number: FA2001001878802
Complainant is The Capital Group Companies, Inc. (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, United States. Respondent is Evgeniy Semenchuk / Private Person (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capital-group.company>, registered with Tucows Domains Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically January 14, 2020; the Forum received payment January 14, 2020.
On January 14, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <capital-group.company> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. verified that Respondent is bound by the Tucows Domains Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 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@capital-group.company. Also on January 15, 2020, 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 February 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
Complainant, The Capital Group Companies, Inc., provides investment management services, particularly in relation to mutual funds in the United States. Complainant has rights in the CAPITAL GROUP mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,278,544, registered Aug. 14, 2007). See Amend. Compl. Ex. B. The domain Respondent registered, <capital-group.company> domain name is identical and/or confusingly similar to Complainant’s mark because it incorporates Complainant’s CAPITAL GROUP mark in its entirety, simply adding a dash and a top-level domain (“TLD”) to form the disputed domain name.
Respondent has no rights or legitimate interests in the <capital-group.company> domain name. Respondent is not licensed or authorized to use Complainant’s CAPITAL GROUP mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the website to offer services that compete with Complainant. Additionally, Respondent uses the domain to pass itself off as Complainant in connection with a phishing scheme.
Respondent registered and uses the <capital-group.company> domain name in bad faith. Respondent attempts to attract Internet users to its competing website for commercial gain. Additionally, Respondent uses the disputed domain name to pass itself off as Complainant in furtherance of a phishing scheme. Finally, Respondent has actual knowledge of Complainant’s rights in the CAPITAL GROUP mark.
(b) Respondent’s Response Allegations in this Proceeding:
Respondent did not submit a response. The Panel notes that Respondent registered the disputed domain name June 6, 2019. See Amend. Compl. Ex. J.
Complainant has rights to and legitimate interests in the mark contained within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark contained within the disputed domain name.
Respondent registered a disputed domain name containing Complainant’s protected mark that is also confusingly similar to Complainant’s protected mark.
Respondent registered and uses the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 or Confusingly Similar:
Complainant asserts rights in the CAPITAL GROUP mark based upon the registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the CAPITAL GROUP mark with the USPTO (e.g., Reg. No. 3,278,544, registered Aug. 14, 2007). See Amend. Compl. Ex. B. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <capital-group.company> domain name is identical and/or confusingly similar to Complainant’s mark because it incorporates Complainant’s CAPITAL GROUP mark in its entirety, simply adding a dash and a TLD to form the disputed domain name. The addition of a character and a TLD does not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (concluding that “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.”). Complainant notes that the only differences between the disputed domain name and the CAPTIAL GROUP mark are the replacement of the space with a dash and the addition of the “.company” TLD. Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name containing Complainant’s protected mark that is confusingly similar to that mark; Complainant satisfied the elements of ICANN 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), then the burden of proof shifts to Respondent to show it does have such 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 [relative] to 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 claims that Respondent does not have rights or legitimate interests in the <capital-group.company> domain name since Respondent is not licensed or authorized to use Complainant’s CAPITAL GROUP mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and … no prima facie evidence shows that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. 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). The WHOIS information of record lists “Evgeniy Semenchuk” as the registrant and no information suggests that Complainant has authorized Respondent to use the CAPITAL GROUP mark in any way. See Amend. Compl. Ex. J. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain and website to offer services that compete with Complainant. Use of a confusingly similar domain name to attract users to a competing website does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant provides a screenshot of Respondent’s webpage and contends that Respondent uses the webpage to offer the same type of services as those provided by Complainant. See Amend. Compl. Ex. H. Therefore, the Panel finds that Respondent is not using the domain name for 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).
Additionally, Complainant contends that Respondent attempts to pass itself off as Complainant as part of a phishing scheme. Use of a disputed domain name to mimic a complainant’s website is not indicative of a bona fide offering of goods or services or legitimate noncommercial or fair use. See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”). Further, use of a confusingly similar domain name in furtherance of a phishing scheme is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either 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).”).
Complainant provides screenshots from its own website and Respondent’s website to display the similarity between websites. See Amend. Compl. Exs. C & H. Complainant also contends that Respondent attempts to collect users’ personal information through the “Log In” portion of the webpage. Therefore, the Panel finds that Respondent is not using the domain name for 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 makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and uses the <capital-group.company> domain name in bad faith because Respondent attempts to attract Internet users to its competing website for commercial gain. Use of a disputed domain name to promote competing services for financial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent … used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). Complainant notes that Respondent is using the confusingly similar domain name to attract users to its website for the sale of either counterfeit financial services or directly competing financial services. Thus, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Additionally, Complainant claims that Respondent uses the <capital-group.company> domain name to pass off as Complainant in furtherance of a phishing scheme. Use of a domain name to confuse users into believing that a respondent is affiliated with the complainant is evidence of bad faith, especially when done in connection with a phishing scheme, under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Mihael, FA 605221 (Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”). Complainant contends that the “Log In” section of Respondent’s similar webpage is used to collect users’ personal information. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the CAPITAL GROUP mark as shown through Respondent’s use of Complainant’s content on Respondent’s own website. Actual knowledge of a complainant’s rights in a mark can be shown through the respondent’s use of that mark and the complainant’s information in connection with the domain name. 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 that this conduct is prohibited by Paragraph 4(b)(iv) of the Policy.”) Here, Complainant provides screenshots of its own website and Respondent’s website and argues that the similarities between the webpages are evidence of Respondent’s actual knowledge of Complainant’s rights in the CAPITAL GROUP mark. See Amend. Compl. Exs. C & H. The Panel agrees with Complainant, and finds bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to ICANN Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name containing Complainant’s protected mark in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii)
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capital-group.company> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 13, 2020.
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