Institutional Capital Network, Inc. v. Hope Lee
Claim Number: FA2211002019441
Complainant is Institutional Capital Network, Inc. (“Complainant”), represented by Jordan LaVine of Flaster Greenberg PC, Pennsylvania. Respondent is Hope Lee (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <icaptal.com>, registered with Dynadot, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on November 8, 2022; Forum received payment on November 8, 2022.
On November 08, 2022, Dynadot, LLC confirmed by e-mail to Forum that the <icaptal.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 November 9, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@icaptal.com. Also on November 9, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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, Institutional Capital Network, Inc., owns a financial technology company which connects advisors and their high-net-worth investors to leading
alternative investment managers. Complainant asserts rights in the trademark ICAPITAL based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,088,562, registered November 22, 2016) and its ownership of the <icapital.com> and <icapitalnetwork.com> domain names, which it uses to, among other things, advertise its services and provide research to the public. Respondent’s <icaptal.com> domain name, registered on November 6, 2022, is identical or confusingly similar to Complainant’s mark because it contains a misspelling of the ICAPITAL mark, merely removing the letter “i” from the word “capital” and adding the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
Respondent does not have any rights or legitimate interests in the <icaptal.com> domain name. Respondent is not licensed or authorized to use Complainant’s ICAPITAL mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services and it does not make a legitimate noncommercial or fair use of the domain name. Instead, Respondent fails to make active use of the disputed domain name and merely hosts advertisement links to unrelated third-parties.
Respondent registered and uses the <icaptal.com> domain name in bad faith. Respondent’s website hosts advertising links to unrelated third-parties and may possibly use its site to attract internet users for commercial gain in the future, perhaps for the purpose of impersonating Complainant through sending email using the domain. Additionally, Respondent does not make current active use of the disputed domain. Finally, Respondent has engaged in typosquatting by creating a mis-spelling of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has demonstrated that it owns rights in the ICAPITAL trademark and that Respondent’s <icaptal.com> domain name is confusingly similar to such mark;
- Respondent is not commonly known by the disputed domain name and its hosting of a pay-per-click link website at the <icaptal.com> address, displaying advertisements for third parties in the financial services field, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use; and
- Respondent’s hosting of a pay-per-click website through the use of a domain name that is a minor typographical variation of Complainant’s mark supports a finding of bad faith registration and use.
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 asserts rights in the ICAPITAL mark based upon registration with the USPTO. Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”); see also 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)). Since Complainant has provided evidence of its claimed registration of the ICAPITAL mark in the form of screenshots from the USPTO website, the Panel finds that it has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <icaptal.com> domain name is identical or confusingly similar to Complainant’s ICAPITAL mark. Misspelling a mark and adding a gTLD rarely distinguishes the disputed domain name from the mark incorporated therein per Policy ¶ 4(a)(i). See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.). The disputed domain name incorporates a misspelling of the ICAPITAL mark, deleting the “i” from the word “capital” and adding the gTLD “.com”. As these are very minor changes and insufficient to avoid confusing similarity with the ICAPITAL mark, the Panel finds that the disputed domain name meets the standard of 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 initially argues that Respondent does not have rights or legitimate interests in the <icaptal.com> domain name because Respondent is not commonly known by the disputed domain name. It is well accepted to look at the relevant WHOIS information when considering whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, a lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS information for the disputed domain name lists the registrant as “Hope Lee” and Respondent has not filed a Response or made any other submission in this case so it does not provide any evidence that it is licensed or otherwise authorized to use the ICAPITAL mark. Therefore, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <icaptal.com> domain name for any bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof. Rather, Respondent fails to make active use of the disputed domain name and merely hosts advertisement links to unrelated third parties. Non-use of a disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Likewise, using a confusingly similar domain name to host pay-per-click links is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Bloomberg Finance L.P. v. Syed Hussain / Domain Management, FA 1582912 (Forum Nov. 10, 2014) (concluding that the respondent’s use of the disputed domain name to host hyperlinks, unrelated to the complainant’s business, did not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)). Here, Complainant has provided screenshots of the disputed domain name’s resolving website, showing the only use for the domain is to host search terms and various pay-per-click links related to the field of financial services. As Complainant has made a prima facie showing which has not been rebutted by Respondent, the Panel finds, by a preponderance of the submitted evidence, that Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i) and that it does not make a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).
Complainant asserts that “Respondent could have only selected the domain name www.icaptal.com for the purpose of copying Complainant’s well-known trademark.” A foundational question under ¶ 4(a)(iii) is whether Respondent had knowledge of Complainant’s rights in its asserted mark at the time it registered the disputed domain name. Some attribution of knowledge of a complainant’s trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”). See also USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”) The Complaint implies that Respondent’s use of the ICAPITAL mark indicates that it had actual knowledge of Complainant’s rights therein at the time it registered the <icaptal.com> domain name. Complainant submits screenshots from its own website but otherwise does not provide any evidence that it’s mark is well-known. However, the Panel finds significant the fact that the disputed domain name is a single-letter typographical variation of the ICAPITAL mark and that Complainant uses the domain name <icapital.com> for its legitimate website and other online activities. Under the circumstances, the Panel finds sufficient evidence to conclude that it is more likely than not that Respondent had actual knowledge of Complainant’s mark at the time it registered the disputed domain name.
Next, Complainant argues that Respondent registered and uses the <icaptal.com> domain name in bad faith because Respondent hosts monetized links to unrelated third-parties. Using a disputed domain name to host advertisements and links may be evidence of bad faith under Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA 1543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”); see also Vivint, Inc. v. Online Management, FA 1549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). The Panel notes that screenshots of Respondent’s website, provided by Complainant, show the pay-per-click links to third-party websites offering financial services. Upon the evidence presented, the Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Additionally, Complainant contends that Respondent does not make any active use of the <icaptal.com> domain name. Failing to make an active use of a disputed domain name may be evidence of bad faith registration and use under Policy ¶ 4(a)(iii) through the theory of passive holding. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant points to the disputed domain name resolving to a site that only features search terms and unrelated advertisement links and Respondent has not participated in this case so it provides no explanation for its actions. As such, the Panel finds additional support for its conclusion of bad faith in accordance with Policy ¶ 4(a)(iii).
Furthermore, Complainant notes that Respondent has engaged in typosquatting. Typosquatting itself may be evidence of bad faith per Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, Complainant points to Respondent misspelling the ICAPITAL mark by deleting the letter “i” from the word “capital” in the disputed domain name. The Panel finds that Respondent has engaged in the practice of typosquatting, and thus, acted in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant asserts that Respondent will likely use its site to attract internet users for commercial gain in the future. Such conduct is also considered bad faith activity per Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). In support of this argument, Complainant points to the disputed domain having only been registered recently, and thus Respondent will be able to use it for other harmful purposes in the future. While Complainant’s point is well-taken, the Panel does not feel the need to indulge in speculation here, particularly as bad faith has been found on other grounds.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <icaptal.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: December 5, 2022
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