The Capital Group Companies, Inc. v. cg trust
Claim Number: FA2207002005194
Complainant is The Capital Group Companies, Inc. (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA. Respondent is cg trust (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalgrouptrust.com>, registered with 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 21, 2022; the Forum received payment on July 21, 2022.
On July 25, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <capitalgrouptrust.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the 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 July 26, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 2022 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@capitalgrouptrust.com. Also on July 26, 2022, 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 August 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, 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
i) Complainant provides investment services to individual investors, financial intermediaries, and financial institutions around the world through a broad range of products and services. Complainant claims rights in the CAPITAL GROUP mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,524,913, registered May 6, 2014). The disputed domain name is identical or confusingly similar to Complainant’s CAPITAL GROUP mark as it incorporates the mark in whole and adds the generic term “trust”, as well as the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent any rights in the CAPITAL GROUP mark. Respondent does not use the disputed domain name for any bona fide offering of good or services, nor for any non-commercial or fair use. Respondent uses the disputed domain name in an attempt to pass off as Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name’s resolving webpage to impersonate Complainant in an attempt to attract users. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CAPITAL GROUP mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on May 15, 2022.
2. Complainant has established rights in the CAPITAL GROUP mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,524,913, registered May 6, 2014).
3. The disputed domain name’s resolving website displayed Complainant’s logo, mark and Complainant’s color scheme.
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 claims rights in the CAPITAL GROUP mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,524,913, registered May 6, 2014). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). As Complainant provides evidence of its registration with the USPTO, the Panel finds Complainant has established rights in the CAPITAL GROUP mark under Policy ¶ 4(a)(i).
Complainant contends that the disputed domain name <capitalgrouptrust.com> is identical or confusingly similar to Complainant’s CAPITAL GROUP mark. Pursuant to Policy ¶ 4(a)(i), incorporating a mark in its entirety with the addition of a generic term is generally not sufficient in distinguishing a domain name from a protected mark. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity). Further, the addition of the gTLD “.com” is irrelevant when considering whether a disputed domain name is identical or confusingly similar to a protected mark under Policy ¶ 4(a)(i). The disputed domain name incorporates Complainant’s CAPITAL GROUP mark in its entirety, along with the generic term “trust” and the “.com” gTLD. The Panel thus finds the disputed domain name is confusingly similar to Complainant’s CAPITAL GROUP mark pursuant to 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), 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 contends that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in the CAPITAL GROUP mark. Respondent used a privacy service to shield its identity in the disputed domain name’s WHOIS information. The registrar identified “cg trust” as the domain name registrant. Additionally, there is no other evidence to suggest that Respondent was authorized to use Complainant’s CAPITAL GROUP mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Impersonating a complainant in a confusingly similar domain name’s resolving webpage is neither a bona fide offering of goods or services, nor a legitimate non-commercial or fair use. See Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offering [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant…”). Respondent uses the disputed domain name to impersonate Complainant by displaying its mark, logo, and color scheme on the resolving webpage. Complainant provides screenshots of the resolving website within its cease-and-desist letter. The Panel thus finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name to pass off as Complainant in bad faith. Past panels have found bad faith under Policy ¶ 4(b)(iv) where a respondent used a domain name’s resolving website in order to impersonate a complainant. 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.”). The Panel references that Respondent was using the disputed domain name’s resolving website in order to pass off as Complainant by displaying Complainant’s logo, mark and using Complainant’s color scheme. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant further argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CAPITAL GROUP mark. A respondent’s use of a disputed domain name to pass off as a complainant may demonstrate a respondent’s actual knowledge of a complainant’s rights. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the CAPITAL GROUP mark at the time of its registering the disputed domain name, which supports a finding of bad faith registration.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalgrouptrust.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: August 17, 2022
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