DECISION

 

CCO Group, LLC v. J.Moynahan Larmore / Cole Capital

Claim Number: FA2401002078079

 

PARTIES

Complainant is CCO Group, LLC ("Complainant"), represented by Daniel E. Sineway of Morris, Manning & Martin, LLP, Georgia, USA. Respondent is J.Moynahan Larmore / Cole Capital ("Respondent"), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <colecapitalfunds.com> ("Domain Name"), registered with Godaddy.Com, Llc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 8, 2024; Forum received payment on January 8, 2024.

 

On January 8, 2024, Godaddy.Com, Llc confirmed by e-mail to Forum that the <colecapitalfunds.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 January 9, 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@colecapitalfunds.com. Also on January 9, 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 Nicholas J.T. Smith 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a prominent real estate investment firm founded in 1994. Complainant asserts rights in the COLE CAPITAL mark based upon registration with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 4,494,090, registered March 11, 2014). The <colecapitalfunds.com> domain name is identical or confusingly similar to Complainant's mark because the Domain Name consists of the entirety of the COLE CAPITAL Mark, together with the generic word "funds" as well as the generic top level domain ("gTLD") ".com".

 

Respondent lacks rights or legitimate interests in the <colecapitalfunds.com> domain name. Respondent, a former executive of Complainant, is not commonly known by the Domain Name, nor has Respondent been authorized by Complainant to use the COLE CAPITAL mark. Additionally, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services. Rather, Respondent is passing off as Complainant in order to offer competing services.

 

Respondent registered and uses the <colecapitalfunds.com> domain name in bad faith. Respondent is passing off as Complainant to confuse Internet users while it purports to offer competing services.  Respondent had actual knowledge of Complainant's rights in the COLE CAPITAL mark at the time of registration. Respondent is a former executive of Complainant and the website located at the Domain Name ("Respondent's Website") expressly links the Respondent to the Complainant (i.e ("Cole Capital Funds' roots trace back to the high standards established in 1979 when Christopher H. Cole founded Cole Companies.") and purports to trade from an address that is directly opposite Complainant's physical address.  

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the COLE CAPITAL mark.  The Domain Name is confusingly similar to Complainant's COLE CAPITAL mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

DISCUSSION

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 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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the COLE CAPITAL mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,494,090, registered March 11, 2014). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i).  See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).

 

The Panel finds that the <colecapitalfunds.com> domain name is confusingly similar to Complainant's COLE CAPITAL mark because it wholly incorporates Complainant's COLE CAPITAL mark while adding the descriptive word "funds" and the ".com" gTLD to form the Domain Name. These changes are insufficient to distinguish the Domain Name from the COLE CAPITAL 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)."); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name.  In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.").  The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the COLE CAPITAL mark.  Respondent presently has no relationship, affiliation, connection, endorsement or association with Complainant. J. Moynahan Laramore is a former executive of Complainant, however this status does not provide him with any rights to any name or mark corresponding to the COLE CAPITAL mark.  WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.  See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  

 

The WHOIS lists "J.Moynahan Larmore / Cole Capital" as registrant of record.   However there is no affirmative evidence that the Respondent is actually commonly known under the Cole Capital name as opposed to simply registering the Domain Name under a name for the purpose of asserting rights or legitimate interests.  Even if a respondent appears from the WHOIS record to be known by the domain name, without additional affirmative evidence, it can be concluded that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Google Inc. v. S S / Google International, FA 1625742 (Forum Aug. 4, 2015) ("Respondent did identify itself as 'Google International' in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information.  However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent's registration thereof."); see also Hewlett-Packard Co. v. HP Supplies, FA 282387 (Forum July 22, 2004) ("The Panel finds, because of the prominence of the HP mark, that Respondent's registration under the 'HP Supplies' name does not establish that Respondent is commonly known by the <hpsupplies.com> domain name.").  Given the lack of evidence that the Respondent is actually known under a name corresponding to the Domain Name, and Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).  

 

The Domain Name resolves to the Respondent's Website where Respondent purports to offer real estate investment services in the United States in direct competition with Complainant under the COLE CAPITAL mark.  The use of a confusingly similar domain name to redirect to a competing website does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) or (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).").  

 

The Panel's finding that Respondent's use of the Domain Name is not a bona fide offering of goods or services is further supported by the fact the website to which the Domain Name resolved displays, as its business address, an address directly across the street from Complainant's physical address and contains various statements which expressly assert that Respondent is the Complainant or a related entity of the Complainant (neither of which is the case, notwithstanding J. Moynahan Laramore being a former executive) indicating that Respondent seeks to pass itself off as Complainant.

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds that, at the time Respondent registered the Domain Name, March 1, 2023, Respondent had actual knowledge of Complainant's COLE CAPITAL mark as Respondent was a former executive of Complainant.  The Respondent offers services from the Domain Name that wholly incorporates the COLE CAPITAL mark that are in direct competition to the Complainant's services.  Furthermore, the website at the Domain Name purports to offer services across the street from Complainant's physical address and makes various claims of association with Complainant, further indicating actual knowledge of Complainant and its COLE CAPITAL mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses the Domain Name to redirect Internet users to Respondent's own website where Respondent purports to real estate investment services in direct competition with Complainant while passing off as Complainant. Using a confusingly similar domain name to divert Internet users to a respondent's competing website can show bad faith registration and use per Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA 1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant's business by diverting Internet users from the complainant's website to the respondent's website where it offered competing printer products).   Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iii). 

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

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

 

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

 

 

 

Nicholas J.T. Smith, Panelist

Dated: January 30, 2024