DECISION

 

Farallon Capital Management, L.L.C. v. Name Redacted

Claim Number: FA2409002114256

PARTIES

Complainant is Farallon Capital Management, L.L.C. ("Complainant"), represented by Christopher Dolan of Barnes & Thornburg LLP, Illinois, USA. Respondent is Name Redacted¹.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <faralloncapitol.com>, registered with Cloudflare, Inc.

 

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.

 

Sozos-Christos Theodoulou as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 5, 2024; Forum received payment on September 5, 2024.

 

On September 6, 2024, Cloudflare, Inc. confirmed by e-mail to Forum that the <faralloncapitol.com> domain name is registered with Cloudflare, Inc. and that Respondent is the current registrant of the name. Cloudflare, Inc. has verified that Respondent is bound by the Cloudflare, 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 September 6, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 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@faralloncapitol.com. Also on September 6, 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.

 

A timely Response was received and determined to be complete on September 25, 2024.

 

On September 25, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sozos-Christos Theodoulou 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.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUES: CONSENT TO TRANSFER

In a situation that seldom occurs, the Respondent has given his consent to the transfer remedy sought by the Complainant. Here is what the Respondent has written in his response:

 

"The Respondent respectfully requests that the Administrative Panel:

1.       Rule in favor of the Complainant and order the transfer of the domain "FARALLONCAPITOL.COM" to the Complainant.

2.       Acknowledge that the Respondent has acted in good faith throughout the process, offering full cooperation and expressing a willingness to resolve the matter amicably.

3.       Consider the Respondent's privacy concerns and redact personal contact details from public documentation." 

 

While the third point will be examined in the next section, and the second point will be dealt with during the main part of the decision, the consent of the Respondent for the transfer of the Disputed Domain Name to the Complainant will be analyzed here.

 

Paragraph 4.10 of the WIPO Jurisprudential Review 3.0 sheds some light to this rare scenario. Indeed, past panels have faced such behavior from respondents, based on various motives. According to WIPO "many panels will order the requested remedy solely on the basis of such consent", as happened for example in WIPO Case No. D2000-0207, Williams-Sonoma, Inc. v. EZ-Port, where the panel decided as follows:

"Because Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim. I am left to decide the appropriate procedure to conclude the case in a situation not directly addressed by the Rules. Several provisions provide guidance. Rule 10(a) gives the Panel the discretion to conduct the proceeding in such manner as it deems appropriate under the Policy and the Rules. Rule 10(c) requires the Panel to "ensure that the proceeding takes place with due expedition." Rule 12 permits the Panel to require further statements from the parties. Rule 17 requires the Panel to terminate the proceeding when the parties have agreed to a settlement.

Here, although Respondent has consented to the requested relief, the parties have not agreed to a formal settlement and terminating the proceeding would not effect the parties intent. Under Rules 10 and 12, the Panel appears to have authority to delay the decision and permit the parties time to submit confirmation that they have agreed to a settlement. That procedure, however, would delay this proceeding and impose unnecessary cost on both the parties and WIPO. Under the circumstances, I believe the better course is to enter an order granting the relief requested by the Complainant so that the transfer may occur without further delay."

So, the Panel could decide as above and deliver a short decision. However, the same Paragraph 4.10 of the WIPO Jurisprudential Review 3.0 – citing a good volume of case law - further indicates that, in some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. One of the cases when this occurs is "where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith", which in fact seems to be the case in the present dispute.

Therefore, the Panel decides in its sole discretion to proceed to a substantive decision on the merits. 

 

REQUEST FOR REDACTION OF RESPONDENT'S PERSONAL INFORMATION

This is another rare request. In his response the Respondent has evoked some privacy concerns and has then written: "Given these privacy concerns, the Respondent respectfully requests that personal contact information be redacted in accordance with Forum's Supplemental Rules and the Panel's discretion." 

 

The Panel has examined all relevant texts and has traced the following legal basis:

 

Forum Supplemental Rules

15.  Communication of Decision to Parties; Publication of Decision.

(b) All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is Submitted before the Panel's decision is published.

 

UDRP Policy

4(j). Notification and Publication. The Provider shall notify us of any decision made by an Administrative Panel with respect to a domain name you have registered with us. All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.

 

UDRP Rules

16. Communication of Decision to Parties

(b) Except if the Panel determines otherwise (see Paragraph 4(j) of the Policy), the Provider shall publish the full decision and the date of its implementation on a publicly accessible web site. In any event, the portion of any decision determining a complaint to have been brought in bad faith (see Paragraph 15(e) of these Rules) shall be published.

 

Further, the Panel has looked at applicable case law and has found recent WIPO Case No. D2022-4622, The Swatch Group AG, Swatch AG v. Name Redacted, in which the panel decided indeed to redact the name of the respondent, although for a reason different than the one presented by the Respondent in the present dispute. The panel there decided that in all the circumstances this is an exceptional case and that it is appropriate to redact the registrant's name and information from the Panel's decision. See also Lutosa v. Name Redacted, WIPO Case No. D2021-0809; Accenture Global Services Limited v. Domains by Proxy, LLC / Name Redacted, WIPO Case No. D2013-2099; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788; and Siemens AG, Siemens Trademark GmbH & Co. KG v. NAME REDACTED, WIPO Case No. D2022-1632. 

 

For all the reasons presented by the Respondent, the Panel finds that there would be no harm to the Complainant if the Respondent's request were satisfied and, thus, decides to redact Respondent's name and information from the Panel's Decision.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant contends that the Disputed Domain Name is confusingly similar to its FARALLON and FARALLON CAPITAL trademarks, as it fully incorporates these trademarks. This last element is sufficient to support the finding that the disputed domain name is confusingly similar to the Complainant's trademarks. Indeed, the mere misspelling of the word "capital" as "capitol" does not change the overall impression of a most likely connection with the trademarks FARALLON and FARALLON CAPITAL of the Complainant. As to the gTLD ".com", the Complainant suggests that it should be disregarded, as per the usual practice.

The Complainant maintains that the Respondent lacks rights or legitimate interests in the Disputed Domain Name because the Respondent is not known by the Disputed Domain Name, the Complainant is not affiliated with nor has it ever authorized the Respondent to register its trademark as a domain name, the Complainant has no business with the Respondent, and the Respondent has not used the Disputed Domain Name with a bona fide offering of goods and services. The concealment of the Respondent's identity through a privacy service has also been noted by the Respondent. 

According to the Complainant, given the distinctiveness and reputation of the FARALLON and FARALLON CAPITAL trademarks, the Respondent typosquatted and registered the Disputed Domain Name with constructive, if not actual, knowledge of the Complainant's trademarks, and this is sufficient evidence of the fact that the Disputed Domain Name was registered in bad faith. The mere misspelling in the word "capitol" does not change this view.

With respect to use in bad faith, the Complainant points out – among others - that the Respondent has passively held the Disputed Domain Name as an inactive website, which in combination with the well-known character of the Complainant's trademarks may be considered as a clear indication of bad faith.

For all these reasons, the Complainant concludes that the Respondent registered and used the Disputed Domain Name in bad faith.

 

B. Respondent

On the other hand, the Respondent, while not putting in doubt Complainant's rights over the Disputed Domain Name and while requesting himself the transfer of the Disputed Domain Name to the Complainant, contends that he has not acted in bad faith, and even requests that the Panel acknowledges this. As a matter of fact, Respondent claims that he "registered this domain solely for personal academic research purposes, specifically to study real-world trends in domain resolution and misspelled domains".

 

FINDINGS

In these proceedings Complainant relies on Common Law trademark rights, generated through extensive use of its marks since the 1980s, as well as on several registered US trademarks – the oldest, since 2001 - for "FARALLON", "FARALLON CAPITAL…" and other related trademarks that include the word element "FARALLON".

 

Complainant has also owned and used the almost identical to the Disputed Domain Name <faralloncapital.com> since July 26, 1996.

 

The Disputed Domain Name <faralloncapitol.com> was registered on August 27, 2024 by the Respondent (as confirmed by the Registrar).

 

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.

 

Identical and/or Confusingly Similar

The disputed domain name consists of the Complainant's whole trademark (FARALLON / FARALLON CAPITAL), written in a misspelled way. Indeed, the mere replacement of the letter "A" by the letter "O" in the second word of the Complainant's trademark is not sufficient to escape the finding that the Disputed Domain Name is confusingly similar to the trademark of the Complainant. Respondent has not denied the above.

As far as the gTLD ".com" is concerned, it is generally recognized that top level domains do not have any bearing in the assessment of identity or confusing similarity, according to paragraph 4(a)(i) of the Policy.

Hence, the Panel is satisfied that the first requirement under the Policy is met.

 

Rights or Legitimate Interests

Since proving a negative fact is almost impossible, Panelists in UDRP proceedings have generally agreed that it is sufficient for the Complainant to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the Respondent.

In the case at issue, the Complainant argued that it had never authorized the Respondent to register the FARALLON / FARALLON CAPITAL trademark in a domain name, and that it had never licensed its trademark to the Respondent.

Furthermore, the Respondent has not demonstrated any use of the disputed domain name in connection with a bona fide offering of goods and services or a legitimate non-commercial or fair use of the disputed domain name.

Finally, there is no other evidence in the case file that could demonstrate that the Respondent has been commonly known by the Disputed Domain Name.

In view of the foregoing, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. In order to rebut the Complainant's arguments, the Respondent had the possibility to make his own defense. However, the Respondent's Response, alleging good faith based on academic research, has not convinced the Panel, as Respondent could have at least requested Complainant's prior authorization for registering the Disputed Domain Name, which he had not done.

Therefore, the Panel is satisfied that also the second requirement under the Policy is met.

 

Registration and Use in Bad Faith

As far as registration in bad faith is concerned, given the reputation of the Complainant's trademark in the financial field and the fact that the Disputed Domain Name fully incorporates this trademark, it is rather clear that, at the time of the registration of the Disputed Domain Name, the Respondent was well aware of the Complainant's trademark. The registration as domain name of a third party's well-known trademark with full knowledge of the fact that the rights over this trademark belong to a third party amounts to registration in bad faith. After all, Respondent has expressly admitted that he knew of Complainant's trademark.

With respect to use in bad faith, the disputed domain name resolves to an inactive website. For this Panel, such behavior (passive holding) combined to the well-known character of the Complainant's trademark is clearly sufficient to conclude use in bad faith. Therefore, it is impossible for this Panel to conceive any plausible active use of the Disputed Domain Name by the Respondent that would be legitimate.

Therefore, the Panel finds it clear that the Disputed Domain Name was used in bad faith. 

For all circumstances mentioned above, the Panel is satisfied that also the third requirement under the Policy is satisfied.

 

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 <faralloncapitol.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sozos-Christos Theodoulou, Panelist

Dated: September 29, 2024