The Capital Group Companies, Inc. v. Tristen Mclaughlinwn
Claim Number: FA2208002007179
Complainant is The Capital Group Companies, Inc. (“Complainant”), represented by Kaleigh P. Morrison of Nixon Peabody LLP, New York, USA. Respondent is Tristen Mclaughlinwn (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalgroupsfx.org>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2022; the Forum received payment on August 4, 2022.
On August 4, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <capitalgroupsfx.org> 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 August 5, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 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@capitalgroupsfx.org. Also on August 5, 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 26, 2022, 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, The Capital Group Companies, Inc., offers financial investment services.
Complainant asserts rights in the CAPITAL GROUP mark based upon registration with the USPTO and other trademark agencies.
Respondent’s <capitalgroupsfx.org> is confusingly similar to Complainant’s CAPITAL GROUP trademark because it incorporates the mark in its entirety and adds the letters “sfx” and the generic top-level domain name (“gTLD”) “.org”.
Respondent does not have rights or legitimate interests in the <capitalgroupsfx.org> domain name. Respondent is not licensed or authorized to use Complainant’s CAPITAL GROUP mark and is not commonly known by the at-issue domain name. Respondent also does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts passing off as Complainant. Respondent uses the domain to compete with Complainant.
Respondent registered and uses the <capitalgroupsfx.org>
domain name in bad faith. Respondent registered and uses the domain
name as an attraction for commercial gain by attempting to pass off as
Complainant. Finally, Respondent had constructive and/or actual notice of
Complainant’s rights in the CAPITAL
GROUP mark prior to registration of the
disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CAPITAL GROUP trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the CAPITAL GROUP trademark.
Respondent uses the at-issue domain names to pass itself off as Complainant and address a website that competes with 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 confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration, along with multiple other national trademark registrations, for its CAPITAL GROUP trademark. Any of such registrations is sufficient to demonstrate Complainant’s rights in the CAPITAL GROUP mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also, Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
Respondent’s <capitalgroupsfx.org> domain name consists of Complainant’s entire CAPITAL GROUP trademark less its domain name impermissible space, followed by the characters or term “sfx” and with all followed by the “.org” top-level domain name. The letters “SFX” is an abbreviation for the cryptocurrency “Safex Cash.” The differences between Respondent’s domain name and Complainant’s trademark fail to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel concludes that Respondent’s <capitalgroupsfx.org> domain name is confusingly similar to CAPITAL GROUP pursuant to Policy ¶ 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”); see also 3M Company v. Kabir S Rawat, FA 1725079 (Forum May 9, 2017) (”Respondent’s <nexcare.org> domain name incorporates the NEXCARE mark and merely adds “.org.” This addition does not distinguish the disputed domain name from Complainant’s mark… Thus, the Panel finds that Respondent’s <nexcare.org> domain name is confusingly similar to Complainant’s NEXCARE mark.”).
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 at-issue 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 domain name’s registrant as “Tristen Mclaughlinwn” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <capitalgroupsfx.org> domain name or by CAPITAL GROUP. The Panel therefore concludes that Respondent is not commonly known by <capitalgroupsfx.org> for the purposes of Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also, Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Additionally, Respondent uses the confusingly similar <capitalgroupsfx.org> domain name pass itself off as Complainant and address a website that pretends to be affiliated with Complainant. Respondent’s <capitalgroupsfx.org> website is adorned with Complainant’s CAPITAL GROUP mark and address and purports to sell products that directly compete with Complainant’s offering. Respondent’s use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <capitalgroupsfx.org> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses its confusingly similar domain name to pass itself off as Complainant and misdirect internet users seeking Complainant to Respondent’s <capitalgroupsfx.org> website. The website pretends to be affiliated with Complainant. There Respondent further exploits the goodwill found in Complainant’s trademark by purporting to offer products or services that compete with Complainant’s offering. To register for an account on Respondent’s <capitalgroupsfx.org> website users are required to provide their BITCOIN Account ID as well as other personal data. Respondent may be collecting such personal information for improper purposes. Notably, using the <capitalgroupsfx.org> domain name to pass itself off as Complainant to feign an affiliation between Complainant and Respondent when there is none so that Respondent may commercially benefit is disruptive to Complainant’s business and demonstrates Respondent’s bad faith registration and use of the at-issue domain name under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
Moreover, Respondent registered <capitalgroupsfx.org> knowing that Complainant had trademark rights in the CAPITAL GROUP mark. Respondent’s actual knowledge of Complainant’s trademark is evident from the notoriety of Complainant and its trademark and from Respondent’s use of the CAPITAL GROUP trademark and Complainant’s physical address on Respondent’s <capitalgroupsfx.org> website, as mentioned elsewhere herein. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <capitalgroupsfx.org> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalgroupsfx.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 29, 2022
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