GOBI CAPITAL LLC v. Billy Thompson
Claim Number: FA2006001899519
Complainant is GOBI CAPITAL LLC (“Complainant”), represented by Gene S. Winter of St. Onge Steward Johnston & Reens LLC, Connecticut, United States. Respondent is Billy Thompson (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gobi-capital.com>, registered with Hosting Concepts B.V. d/b/a Openprovider.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 9, 2020; the Forum received payment on June 9, 2020.
On June 9, 2020, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <gobi-capital.com> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 June 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 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@gobi-capital.com. Also on June 11, 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 July 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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, a financial management and investment company, has rights in the GOBI CAPITAL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <gobi-capital.com> domain name is confusingly similar to Complainant’s mark.
Respondent lacks rights or legitimate interests in the <gobi-capital.com> domain name as Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent’s use of the GOBI CAPITAL mark. Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect Internet users to a website unrelated to Complainant, which targets investors who believe they are depositing money into a cryptocurrency trading platform associated with Complainant (a hedge fund). Respondent steals the money and does not return the money to the victim(s). Respondent shut down the website after Complainant sent cease and desist letters but may still be using email addresses associated with the domain name to continue illegal activities.
Respondent had knowledge of Complainant’s rights in the GOBI CAPITAL mark at the time of registration. Respondent registered the <gobi-capital.com> domain name in bad faith to pass itself off as Complainant’s company and uses it in order to steal money from victims. Complainant attaches screenshots of a transaction operated by Respondent directing a potential victim to make payment through the “www.gobi-capital.com” website. Complainant was also informed by another victim that the victim deposited thousands of dollars with which the victim was directed to make payment via that website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 has shown that it has rights in the GOBI CAPITAL mark, which it registered with the USPTO, Reg. No. 4,651,230, on December 9, 2014 in International Class 36 and US Classes 100, 101 and 102 for financial management; hedge fund investment services; and investment management.
It is well established that "essential" or "virtual" identity is sufficient for the purposes of the Policy: See The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; Minnesota Mining & Mfg. Co. v. Taylor, 21 F.Supp.2d 1003, 1005 (D.Minn. 1998) (“post-it.com” and “Post-It” are the same); and see Planned Parenthood Federation of America, Inc. v. Bucci, No. 97-0629, 1997 WL 133313, at *8 (S.D.N.Y. Mar. 24, 1997) (“planned-parenthood.com” and “Planned Parenthood” are essentially identical), aff’d, 152 F.3d 920 (2d Cir. 1998), cert. denied, 525 U.S. 834, 119 S.Ct. 90, 142 L.Ed.2d 71 (1998).
The Panel finds that Respondent’s <gobi-capital.com> domain name is virtually identical and, for that reason, also confusingly similar to Complainant’s mark, as it incorporates the mark in its entirety, merely adding a hyphen and the inconsequential “.com” generic top-level domain (“gTLD”), which may be disregarded.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The disputed domain name was registered on April 23, 2020. It does not presently resolve to a website but Complainant has shown that it did resolve to a website purporting to be that of Complainant, offering financial services in the name of Complainant.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect
of the disputed domain name.
This element requires Complainant to establish, on the balance of probability, that Respondent both registered the disputed domain name in bad faith and is using it in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The evidence provided by Complainant clearly establishes circumstances set out in the Policy, paragraph 4(b)(iv). The Panel has no reason to believe that, since the website was taken down following Complainant’s cease and desist letters, Respondent is no longer using the disputed domain name in bad faith, since its fraudulent conduct could continue via emails sent from the disputed domain name.
Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gobi-capital.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: July 9, 2020
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