DECISION

 

Beacon Capital Partners, LLC v. C/O Private Ranger Limited / Registrant of beaconcapitals.com

Claim Number: FA2312002075845

PARTIES

Complainant is Beacon Capital Partners, LLC ("Complainant"), represented by Robert M. O'Connell, Jr. of Orrick, Herrington & Sutcliffe LLP, Massachusetts, USA. Respondent is C/O Private Ranger Limited / Registrant of beaconcapitals.com ("Respondent"), New Zealand.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <beaconcapitals.com>, registered with Instra Corporation Pty Ltd.

 

PANEL

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 19, 2023; Forum received payment on December 19, 2023.

 

On January 2, 2024, Instra Corporation Pty Ltd. confirmed by e-mail to Forum that the <beaconcapitals.com> domain name is registered with Instra Corporation Pty Ltd. and that Respondent is the current registrant of the name. Instra Corporation Pty Ltd. has verified that Respondent is bound by the Instra Corporation Pty Ltd. 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 8, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of January 29, 2024 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@beaconcapitals.com. Also on January 8, 2024, 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 January 30, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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 a Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a real estate development and management company, specializing in commercial office and life-science properties. It has rights in the BEACON CAPITAL PARTNERS mark based upon its registration of that mark with the United States Patent and Trademark Office (USPTO) and other governmental trademark agencies throughout the world. Respondent's <beaconcapitals.com> domain name is identical or confusingly similar to Complainant's mark. It incorporates the dominant BEACON CAPITAL element of Complainant's mark in its entirety, merely adding an "s" at the end of CAPITAL and the generic top level domain ("gTLD") ".com".

 

Respondent has no rights or legitimate interests in the domain name. It is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead was previously using it to attract internet traffic to its own website to promote its own business and is currently making no active use of it. Respondent has not been commonly known by the domain name and Complainant has not authorized or licensed Respondent to use any of its BEACON-formative marks.

 

Respondent registered and uses the domain name in bad faith. It is currently making no active use of the domain name and previously was using it for fraudulent purposes by purporting to offer services it did not actually provide, and it registered the domain name with a least constructive knowledge of Complainant and its mark.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 as true unless the evidence is clearly contradictory. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true). Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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"), WIPO Overview 3.0, at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case.").

 

The Panel finds as follows with respect to the matters at issue in this proceeding.

 

Identical and/or Confusingly Similar

The BEACON CAPITAL PARTNERS mark was registered to Complainant with the USPTO (Reg. No. 3,260,333) on July 10, 2007 (USPTO registration certificate included in Complaint Annex 5). Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). 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 <beaconcapitals.com> domain name is identical or confusingly similar to Complainant's mark. It incorporates the dominant BEACON CAPITAL element of Complainant's mark in its entirety, merely omitting a space and adding the letter "s" at the end of CAPITAL and the ".com" gTLD. These changes do not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i). The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term ("the") from Complainant's THE PROS CLOSET mark, eliminated spacing between words, and added the ".com" gTLD.). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain name.

 

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to the BEACON CAPITAL PARTNERS mark, in which Complainant has substantial and demonstrated rights. 

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)                      The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead was previously using it to attract internet traffic to its own website to promote its own business and is currently making no active use of it. Respondent has not been commonly known by the domain name and Complainant has not authorized or licensed Respondent to use any of its BEACON-formative marks.  These allegations are addressed as follows: 

 

Complaint Annex 6 contains a screenshot of the website resolving from the domain name as of December 11, 2023. It features the name "BEACON CAPITAL" in the banner at the top of the first page but otherwise contains no reference to Complainant, its mark or its business. Instead, the site advertises banking and credit union services under the name Nimbus Trust Credit Union. The only use made of the domain name and the BEACON CAPITALS name in the banner at the top of the home page appears to have been to attract Internet traffic to Respondent's website, where it conducted a business wholly unrelated to the property development and management business of Complainant. This is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name within the meaning of Policy ¶ 4(c)(iii).  Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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).").

 

Complaint Annex 7 is a screenshot of the parking page to which the domain name has pointed since December 11, 2023. The only substantive message appearing there reads "Hmmm…can't reach this page" and so forth. Respondent is currently making no active use of the domain name but instead is passively holding it. This is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("both Domain Names resolve to a web site that shows the words, 'Not Found, The requested URL / was not found on this server.'   Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).").

 

Complainant states that it has not licensed or authorized Respondent to use its mark, and that Respondent is not affiliated with it. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register Domain Name featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("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 furnished to Forum by the registrar lists "C/O Private Ranger Limited / registrant of beaconcapitals.com" as the registrant of the domain name. The first of these names bears no resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed Domain Name when the identifying information provided by WHOIS was unrelated to the Domain Name or respondent's use of the same), 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). The Panel is satisfied that "C/O Private Ranger Limited" has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).

 

The second name in which the domain name is registered, "registrant of beaconcapitals.com," contains the domain name and this might suggest that the Respondent has been commonly known by that name. This is not conclusive, however, because as discussed above Respondent is not authorized to use Complainant's mark, and there is no evidence before the Panel indicating that Respondent used this name for any purpose other than to register the domain name and operate the resolving website, or that an entity named registrant of beaconcapitals.com even exists. Registering a domain name in a name that is similar or identical to the domain name is not, by itself, sufficient to demonstrate that the respondent "has been commonly known by" it for the purposes of Policy ¶ 4(c)(ii). There must be some evidence, independent of the registration and resolving website, that the respondent used the name in a business or some other legitimate undertaking, or that persons have by other means come to associate the respondent with that name. If a person could acquire rights or legitimate interests in a domain name under Policy ¶ 4(c)(ii) by the simple expedient of registering it in the name of an entity whose name is similar or identical to the domain name at issue, Policy ¶ 4(c)(iii) would be completely nullified. Augusta National, Inc. v. Ryan Carey, FA1758547 (Forum Dec. 21, 2017) ("If a respondent could acquire rights and legitimate interests in a domain name through Policy ¶ 4(c)(ii) by the simple expedient of incorporating the complainant's mark into the name of his business entity, the intent and purpose of the Policy would be completely frustrated."), Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as "Jessie McKoy / Ripple Reserve Fund" in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The Panel is satisfied that registrant of beaconcapitals.com has not been commonly known by the domain name for the purposes of Policy ¶ 4(c)(ii).

 

Complainant has made its prima facie case. On the evidence presented, and in the absence of any relevant evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration and Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's web site or location or of a product of service on the respondent's web site or location.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, by registering and using the confusingly similar domain name, Respondent was previously attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website. Notwithstanding the fact that Respondent was neither passing off as nor competing with Complainant, its registration and use of the domain name falsely implied an affiliation which did not exist, and the only possible purpose of its doing so was to attract Internet traffic to its own commercial website by trading off of Complainant's mark. Respondent's conduct thus fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use.

 

Moreover, Complainant states that a search of the U.S. Federal Deposit Insurance Corporation and National Credit Union Administration records disclosed no record of either "Beacon Capitals" or "Nimbus Trust Credit Union."  Complainant states that the documentary evidence of its search is included in Complaint Annex 9. No such annex was attached to the materials submitted to the Panel, but the allegation is not disputed or placed in question by any evidence before the Panel and is taken as true. The result is that Respondent cannot lawfully have offered the services it advertised and was thus engaged in fraudulent activity by falsely representing that it offered banking and credit union services.  The Panel notes also that Respondent's website invited the visitor to "create an account," which suggests an intent on its part to engage in phishing, which is a fraudulent attempt to obtain sensitive information such as usernames, passwords and credit card details by disguising oneself as a trustworthy entity in an electronic communication.  Information solicited by a bank or credit union from anyone seeking to open an account with it would necessarily include such sensitive private information and would eventually involve the transfer of funds. Respondent was using the Domain Name and the resolving website to engage in phishing and most likely using the information obtained in that fashion to defraud unsuspecting consumers of their money This fraudulent scheme qualifies in and of itself as evidence of bad faith registration and use. It does not fit within any of the circumstances listed in Policy ¶ 4(b), but that paragraph acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a confusingly similar domain name to phish for sensitive private information from others is bad faith registration and use. Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) ("Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii)."), McKinsey & Company, Inc., and McKinsey Holdings, Inc. v. Privacy Protection, report abuse to / Registrar: DELTA-X Ltd., FA1409001580883 (Forum Oct. 25, 2014) (holding that the respondent had engaged in phishing, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii), when the respondent used the disputed domain name in an attempt to obtain Internet users' personal information including their driver's license number and name), Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) ("[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.").

 

Although Complainant does not assert the argument, by registering the domain name with a subtle misspelling of Complainant's mark, i.e., adding an "s" at the end of the CAPTIAL element of Complainant's mark, Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of typing errors made by Internet users seeking the web sites of the owners of the mark. Respondent is guilty of typosquatting. Given the non-exclusive nature of Policy ¶ 4(b), typosquatting has also, in and of itself, been held to be evidence of bad faith registration and use. Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant's mark with small typographical errors introduced therein).

 

Next, Complainant asserts that Respondent had at least constructive knowledge of Complainant and its BEACON CAPTIAL mark when it registered the domain name. UDRP panels almost universally decline to find bad faith based upon constructive knowledge and this Panel does as well.  The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Nevertheless, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the domain name. Complainant's mark is unique and whimsical in nature, it is a coined term which has no meaning except for its association with Complainant. It would not normally be chosen by another person for inclusion in a domain name for any purpose other than to target Complainant. Additionally, while Respondent's previous website did not purport to offer services in the same industry as Complainant, the banking and credit union services it did purport to offer are generally related to and associated in people's minds with real estate. Complainant had been using its BEACON CAPTIAL PARTNERS mark at least since the January 1998 first use date stated in the USPTO registration certificate included in Complainant Annex 5. It is more likely than not that Respondent was aware of the mark in November 2023 when it registered the domain name. Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  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).

 

As also discussed above in the rights and legitimate interests analysis, Respondent is passively holding the domain name. Again, this does not fit within any of the circumstances set forth in Policy ¶ 4(b) but given the non-exclusive nature of Policy ¶ 4(b) passively holding a confusingly similar domain name can be evidence of bad faith registration for the purposes of Policy ¶ 4(a)(iii).  Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). In this case, Respondent's knowledge of Complainant and its BEACON CAPITAL PARTNERS mark continues after the registration, and it is obviously targeting Complainant's mark. There is no evidence of any actual or contemplated good faith use of the domain name by Respondent use and it is not possible to conceive of any plausible use of the Domain Name by Respondent that would not be illegitimate. Under these circumstances its continued passive holding of the domain name is in bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

 

For the reasons above set forth, the Panel finds that Respondent registered and is using the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <beaconcapitals.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Charles A. Kuechenmeister, Panelist

Dated: February 1, 2024