Third Point LLC v. ELI S
Claim Number: FA2008001907107
Complainant is Third Point LLC (“Complainant”), represented by Stacy J. Grossman of Law Office of Stacy J. Grossman, New York, United States. Respondent is ELI S (“Respondent”), New York, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thirdpointgroup.com>, registered with Godaddy.Com, Llc; GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2020; the Forum received payment on August 3, 2020.
On August 5, 2020, Godaddy.Com, Llc; GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thirdpointgroup.com> domain name is registered with Godaddy.Com, Llc; GoDaddy.com, LLC and that Respondent is the current registrant of the name. Godaddy.Com, Llc; GoDaddy.com, LLC has verified that Respondent is bound by the Godaddy.Com, Llc; GoDaddy.com, LLC 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 August 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@thirdpointgroup.com. Also on August 10, 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 September 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Third Point LLC, is an investment adviser based in New York.
Complainant asserts rights in the THIRD POINT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) as well as other registrations worldwide.
Respondent’s <thirdpointgroup.com> domain name is confusingly similar to Complainant’s THIRD POINT mark, as it incorporates the mark in its entirety and merely adds the term “group” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <thirdpointgroup.com> domain name. Respondent is not commonly known by the at-issue domain name nor has Complainant authorized Respondent’s use of the THIRD POINT mark. Additionally, 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 pass itself off as Complainant. Respondent’s <thirdpointgroup.com> website pretends to be an official website of Complainant and displays Complainant’s trademark, when Respondent is not authorize to do so. The website offers services that are highly related to those services within the scope of Complainant’s trademark.
Respondent registered and uses the <thirdpointgroup.com> domain name in bad faith. Respondent targeted the THIRD POINT mark to create a likelihood of confusion between Complainant and Respondent. Additionally, Respondent had knowledge of Complainant’s mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in THIRD POINT.
Respondent is not affiliated with Complainant and is not authorized to use the THIRD POINT mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in THIRD POINT.
Respondent uses the at-issue domain name to divert internet users to a website that is designed to appear as an official website of Complainant and that offers products/services that compete with products/services offered by Complainant.
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”).
The at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant’s USPTO trademark registration for THIRD POINT is conclusive evidence of its rights in a mark under 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).”).
Respondent’s <thirdpointgroup.com> domain name contains Complainant’s entire THIRD POINT trademark less its impermissible space, suffixed by the term “group.” It concludes with the top-level domain “.com.” The differences between Complainant’s THIRD POINT trademark and Respondent’s at-issue domain name fail to distinguish the domain name from Complainant’s mark. Therefore, the Panel finds that Respondent’s <thirdpointgroup.com> domain name is confusingly similar to Complainant’s THIRD POINT trademark under 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).).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <thirdpointgroup.com> 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.
The WHOIS information for the at-issue domain name identifies the registrant of <thirdpointgroup.com> as “ELI S” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <thirdpointgroup.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally, Respondent uses the confusingly similar <thirdpointgroup.com> domain name to address Respondent’s <thirdpointgroup.com> website which displays Complainant’s trademark and to competes with Complainant by offering similar services. Respondent’s use of <thirdpointgroup.com> pass itself off as Complainant to facilitate Respondent in competing with Complainant constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and interests, Respondent uses the at-issue domain name to pass itself off as Complainant in furtherance of trading on Complainant’s mark by offering products/services competing with those offered by Complainant. Respondent’s use of the confusingly similar <thirdpointgroup.com> domain name indicates Respondent’s bad faith regarding the at-issue domain name under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”)
Additionally, Respondent had actual knowledge of Complainant’s rights in the THIRD POINT mark when it registered <thirdpointgroup.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s THIRD POINT trademark, from Respondent’s use of the website addressed by the at-issue domain name to display Complainant’s trademark, from Respondent’s overt attempt to pass itself off as Complainant, and from Respondent’s website offering of products/services that compete with those offered by Complainant. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s trademark rights in such domain name further indicates Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thirdpointgroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 2, 2020
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