Melvin Capital Management LP v. Don Kalorz
Claim Number: FA2101001929447
Complainant is Melvin Capital Management LP (“Complainant”), represented by Lowenstein Sandler LLP, New York, USA. Respondent is Don Kalorz (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <melvinfinance.com>, registered with Namecheap, Inc..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 22, 2021; the Forum received payment on January 22, 2021.
On January 25, 2021, Namecheap, Inc. confirmed by e-mail to the Forum that the <melvinfinance.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 January 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2021 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@melvinfinance.com. Also on January 28, 2021, 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 22, 2021, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Melvin Capital Management LP, is an investment management firm. Complainant has rights in the trademark MELVIN based upon use in commerce since 2014 and on registration with the United States Patent and Trademark Office (“USPTO”) in 2015. Complainant is also the owner of the <melvincapital.com> domain name since March 2014. Respondent’s <melvinfinance.com> domain name, registered on December 20, 2020, is confusingly similar to Complainant’s MELVIN mark since it consists of the mark with the mere addition of the generic term “finance” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <melvinfinance.com> domain name because Respondent is not commonly known by the disputed domain name and is not licensed to use Complainant’s MELVIN mark. Additionally, Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain to impersonate Complainant and phish for user’s personal information.
Respondent registered and uses the <melvinfinance.com> domain name in bad faith. Respondent uses the disputed domain name to deceive users seeking Complainant’s site. Further, Respondent had knowledge of Complainant’s rights in the MELVIN mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 domain name was registered and is being used by Respondent 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 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 and evidence 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 and supported 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 claims rights in the MELVIN mark based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per 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 evidence of its registration in the form of screenshots from the USPTO website. The Panel accepts this and finds that Complainant has rights in the MEVIN mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <melvinfinance.com> domain name is confusingly similar to Complainant’s MELVIN mark since it consists of the entirety of the mark with the mere addition of the generic term “finance” and the “.com” gTLD. The addition of a generic term and a gTLD to a mark is insufficient to distinguish a disputed domain name from that mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”) As the addition of the related generic word “finance” and the “.com” TLD to Complainant’s mark does not avoid the viewer’s focus on the mark itself, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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 does not have rights or legitimate interests in the <melvinfinance.com> domain name because Respondent is not commonly known by the disputed domain name and is not licensed to use Complainant’s MELVIN mark. In considering this issue, WHOIS information can support a finding that a respondent is or is not 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 be taken into consideration when deciding whether 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 lists the registrant as “Don Kalorz” and Complainant contends that it did not authorize Respondent’s use of the MELVIN mark. Respondent has filed to response or made any other submission in this case and so it does not speak on this issue. Therefore, the Panel finds no evidence that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent fails to use the <melvinfinance.com> domain name in connection with a bona fide offering of goods or services or that it makes a legitimate noncommercial or fair use thereof but, rather, uses the disputed domain to impersonate Complainant and phish for the personal information of those who visit its website. Use of a disputed domain name to pass oneself off as a complainant for one’s own benefit is not considered to be 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). 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); see also Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA 1600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant provides screenshots of the resolving webpage at the disputed domain, which displays Complainant’s MELVIN CAPITAL logo and its postal addresses and identifies itself as “among the biggest equity firm [sic] specializing in wealth management”. The website also contains a “Contact Us” page at which users are invited to input their name, email address, and a message. Finally, the footer of Respondent’s website contains a “Contact Us” section displaying the email address “admin@melvinfinance.net” which uses another domain name that is registered to Respondent. Complainant argues that Respondent displays such a webpage in order to phish for personal information from Complainant’s customers. Respondent has not disputed this and so it does not rebut the prima facie case presented by Complainant. Based upon a preponderance of the evidence before it, the Panel finds that Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services nor is it a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant claims that Respondent had knowledge of Complainant’s rights in the MELVIN mark prior to registration of the <melvinfinance.com> domain name. Under Policy ¶ 4(b)(iii), actual knowledge of a complainant’s rights in a mark can provide a solid foundation upon which to build a case of bad faith and may be shown by the fame of a mark and the use a respondent makes of it. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also 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 that which is prohibited by Paragraph 4(b)(iv) of the Policy.”) Complainant asserts that its mark “is well-known and recognized by consumers” and, in support, it submits evidence of its trademark registrations, a copy of its own <melvincapital.com> website, a copy of the entry for Melvin Capital at the website Wikipedia.org, and pages from the website <fintel.io>, an organization that reports on financial institutions. It further argues that Respondent’s knowledge is shown by Respondent’s use of the domain name and Complainant’s logo and postal addresses to impersonate Complainant. While the Panel declines to comment on Complainant’s claim that its mark is well-known and recognized by consumers, it determines that Respondent’s actual knowledge of the MELVIN mark is clearly shown by the content of the <melvinfinance.com> website.
Further, Complainant argues that Respondent registered and uses the <melvinfinance.com> domain name in bad faith because Respondent uses the disputed domain name to deceive users seeking Complainant’s site. Use of a disputed domain name to impersonate a complainant may evidence bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”) As previously noted, Complainant provides screenshots of the resolving webpage at the disputed domain, which displays Complainant’s marks and address and claims to be a financial management group. Complainant further claims that this intention to deceive is linked to a phishing attempt based upon gathering the personal information of users who visit its website. Respondent has not participated in this case or otherwise sought to explain its actions. As the Panel finds Complainant’s assertions to be reasonable and supported, by a preponderance of the evidence the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <melvinfinance.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: February 23, 2021
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