DECISION

 

I Squared Capital Advisors (US) LLC v. Sammi Wilhi / LNG Group Pty Ltd

Claim Number: FA2002001884148

 

PARTIES

Complainant is I Squared Capital Advisors (US) LLC (“Complainant”), represented by Elizabeth Brenckman of Orrick, Herrington & Sutcliffe LLP, United States. Respondent is Sammi Wilhi / LNG Group Pty Ltd (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <isquaredcapitals.com>, registered with NameCheap, Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 21, 2020; the Forum received payment on February 21, 2020.

 

On February 21, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <isquaredcapitals.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 February 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 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@isquaredcapitals.com.  Also on February 26, 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 March 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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

1.    Complainant, I Squared Capital Advisors (US) LLC., is an independent global infrastructure investment manager focusing on energy, utilities, telecom, and transport in the Americas, Europe, and Asia. Complainant has rights in the I SQUARED CAPITAL mark based upon registration with multiple registries including the United States Patent Office (“USPTO”) (e.g., Reg. No. 5,972,740, registered Jan. 28, 2020). See Amend. Compl. Ex. 5. Complainant also has common law rights in the I SQUARED CAPITAL mark through its continuous use of the mark in commerce since 2012. Respondent’s <isquaredcapitals.com> domain name is confusingly similar to Complainant’s I SQUARED CAPITAL mark as Respondent incorporates the mark in its entirety and adds an “S” to the end of the mark.

2.    Respondent has no rights or legitimate interests in the <isquaredcapitals.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use its I SQUARED CAPITAL mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name resolves to a webpage that that shows an error message.

3.    Respondent registered and uses the <isquaredcapitals.com> domain name in bad faith as Respondent has been subject to previous UDRP decisions. Respondent attempts to impersonate Complainant in furtherance of an email fraud scheme. Furthermore, Respondent fails to make an active use of the disputed domain name. Lastly, Respondent had actual knowledge of Complainant’s rights in the I SQUARED CAPITAL mark as Respondent registered the disputed domain name seven years after Complainant started using the mark in commerce.

 

B.   Respondent

1.    Respondent failed to submit a response to this proceeding.

 

FINDINGS

1.    Respondent’s <isquaredcapitals.com> domain name is confusingly similar to Complainant’s I SQUARED CAPITAL mark.

2.    Respondent does not have any rights or legitimate interests in the <isquaredcapitals.com> domain name.

3.    Respondent registered or used the <isquaredcapitals.com> domain name 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 I SQUARED CAPITAL mark based upon its registration with multiple registries including 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 copies of its’ USPTO registration for the I SQUARED CAPITAL mark (e.g., Reg. No. 5,972,740, registered Jan. 28, 2020). See Amend. Compl. Ex. 5. Therefore, the Panel finds that Complainant has rights in the I SQUARED CAPITAL mark per Policy ¶ 4(a)(i).

 

Since the <isquaredcapitals.com> domain name was created before Complainant’s USPTO filing date, Complainant claims common law rights in the I SQUARED CAPITAL mark through its long-standing use of the mark in commerce. Long standing use of a mark in commerce may be sufficient to establish common law rights in a mark per Policy ¶ 4(a)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“Complainant’s demonstration of continuous use in commerce and accompanying promotion and media recognition are adequate to sustain its claim of common law rights in the MELLO and MELLO SOLAR marks.”). Here, Complainant argues that since 2012, Complainant adopted and began to use in commerce the I SQUARED CAPITAL mark for its private equity and investment services and has continuously used this mark in United States commerce since that time. Complainant has used the domain name <isquaredcapital.com> for employee email addresses and a customer facing website serving its domestic and international investors, through which it advertises, promotes, and renders its investing services under the I SQUARED CAPITAL mark. See Compl. Ex.3. therefore the Panel agrees and finds that Complainant has shown common law rights in the I SQUARED CAPITAL mark per Policy ¶ 4(a)(i). 

 

Complainant claims that Respondent’s <isquaredcapitals.com> domain name is confusingly similar to Complainant’s I SQUARED CAPITAL mark. Registration of a domain name that contains a mark in its entirety and adds a single letter does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Baylor University v. Frank Evans c/o baylorw, FA 1412001594975 (Forum Jan. 21, 2015) (“A domain name differing from a mark by only the addition of a single letter does not sufficiently distinguish a domain name from a mark and the affixation of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis.”). Here, Complainant argues that Respondent incorporates the mark in its entirety and adds an “S” on the end. The Panel notes that the disputed domain name also adds the “.com” generic top-level domain. Therefore, the Panel agrees and finds that Respondent’s <isquaredcapitals.com> domain name is confusingly similar to Complainant’s 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), 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”).

 

Complainant argues Respondent lacks rights or legitimate interest in the <isquaredcapitals.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the I SQUARED CAPITAL mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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 indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Sammi Wilhi / LNG Group PTY LTD” and there is no other evidence to suggest that Respondent was authorized to use the I SQUARED CAPITAL mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name resolves to a webpage that that shows an error message. Failure to make an active use of a domain name is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Here, Complainant has provided the Panel with a screenshot of Respondent’s resolving domain name’s webpage that shows the “Site is blocked due to a security threat.” See Compl. Ex. 6. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent has registered and uses the <isquaredcapitals.com> domain name in bad faith. Specifically, Complainant argues that Respondent has been involved in previous UDRP decisions. Prior adverse UDRP cases against a respondent may be evidence of a pattern of bad faith per Policy ¶ 4(b)(ii). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (finding bad faith per Policy ¶ 4(b)(ii) where the complainant provided evidence the respondent owned various domain names infringing on famous third-party marks; and also that the respondent had been ordered to transfer domain names in previous UDRP decisions). Here, Complainant has provided the Panel with previous cases where Respondent was involved in adverse UDRP decisions. See Compl. Ex. 8. Therefore, the Panel finds that Respondent has engaged in a pattern of bad faith per Policy ¶ 4(b)(ii).

 

Next, Complainant argues Respondent is 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 may constitute 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). Here, Complainant has provided screenshots of emails received from accounts associated with the disputed domain name where Respondent attempts to confuse recipients that they are communicating with Complainant. The emails request that recipients sign a document and remit payment to a new “dividend clearing account” in the United Arab Emirates. Complainant has received complaints from clients who have received these fraudulent emails and who nearly transferred the payments to these fraudulent accounts as requested.  See Compl. Ex. 7. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).

 

Furthermore, Complainant argues that Respondent fails to make an active use of the <isquaredcapitals.com> domain name. Failure to make an active use of a disputed domain name may be evidence of bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant has provided the Panel with a screenshot of Respondent’s resolving domain name’s webpage that shows the “Site is blocked due to a security threat.” See Compl. Ex. 6. Therefore, the Panel agrees and finds that Respondnet registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

 

Lastly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the I SQUARED CAPITAL mark prior to registration of the disputed domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name 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 disputed domain name that contains a mark in hopes to trade on the good will of the mark may be evidence of actual knowledge per Policy ¶ 4(a)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”). Here, Complainant argues that Respondent registered its domain name well after Complainant started using the mark and attempts to pass off as Complainant in order to conduct a phishing scheme. Therefore, the Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to the registration of the disputed domain name which constitutes bad faith per Policy ¶ 4(a)(iii).

 

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 <isquaredcapitals.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  April 3, 2020