Ascend Capital, LLC v. Emily MUHLEMAN / Ascend Capital Partners
Claim Number: FA1711001757853
Complainant is Ascend Capital, LLC (“Complainant”), represented by Gene S. Winter of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Emily MUHLEMAN / Ascend Capital Partners (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ascendcapitalmgmt.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 9, 2017; the Forum received payment on November 9, 2017.
On November 10, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ascendcapitalmgmt.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 November 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2017 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@ascendcapitalmgmt.com. Also on November 16, 2017, 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 December 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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, Ascend Capital, LLC, is currently the owner of the following Trademark Registrations for ASCEND CAPITAL marks in the United States, Canada and Europe (collectively referred to herein as the “ASCEND CAPITAL mark”):
U.S. Registration No. 3739264 for ASCEND CAPITAL for “capital investment services; hedge fund investment services” first use: April 18, 1999; application filing date: May 28, 2009; registration date: January 19, 2010;
Canadian Registration No. TMA882870 for ASCEND CAPITAL for “private placement and venture capital investment services, capital investment fund management services; Hedge fund investment services; and Insurance and financial services”; application filing date: November 5, 2012; registration date: July 25, 2014; and
EU Registration No. 011179066 for ASCEND CAPITAL for “capital investment services; hedge fund investment services”; application filing date: September 11, 2012; registration date: May 31, 2013.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
Complainant has been using the ASCEND CAPITAL mark in interstate commerce in the U.S. since at least April 18, 1999 in connection with capital investment services and hedge fund services. Complainant registered the domain ASCENDCAPITAL.COM on April 18, 1999.
Complainant has made substantial and exclusive use of the mark ASCEND CAPITAL in the field of capital investment services and hedge fund investment services, and therefore, is entitled to substantial protection in the specified and related fields.
As set forth above, Complainant, Ascend Capital, LLC has been using the ASCEND CAPITAL mark in commerce for more than 18 years in connection with capital investment services and hedge fund services. Further, Complainant is the owner of a family of U.S. and International Trademark Registrations for the mark ASCEND CAPITAL under U.S. Reg. No. 3739264 registered on January 19, 2010; Canadian Registration No. TMA882870 registered on July 25, 2014; and EU Registration No. 011179066 registered on May 31, 2013.
Respondent registered the disputed domain name, ASCENDCAPITALMGMT.COM on or around April 26, 2017.
The disputed domain was registered by Respondent well after Complainant obtained the domain ASCENDCAPITAL.COM in April 1999 and well after Complainant obtained U.S. and International Trademark Registrations for the trademark ASCEND CAPITAL under U.S. Reg. No. 3739264 registered on January 19, 2010; Canadian Registration No. TMA882870 registered on July 25, 2014; and EU Registration No.
011179066 registered on May 31, 2013.
Respondent’s LinkedIn page links directly to the Disputed Domain. A screenshot of Respondent’s LinkedIn page linking to the Disputed Domain is attached as Exhibit 6.
In 2014, Respondent
and owner of the LinkedIn Page, Emily S. Muhleman a/k/a Emma Muhleman, applied
for a job at Complainant’s firm. Ms. Muhleman was rejected for the position at
Complainant’s firm.
From April 26, 2017 through present, Respondent has used the domain name ASCENDCAPITALMGMT.COM for the advertisement of capital investment services and hedge fund services.
Respondent intentionally sought to pass off as Complainant’s firm and/or working for Complainant’s firm. Respondent is not associated with Complainant’s firm and never has been. The web page under the Dispute Domain claims that Respondent’s company “Ascend began as a long/short equity focused hedge fund years ago…” Such claim on Respondent’s web pages is false as Respondent’s company was just organized in January 2017. Attached is a copy of the record on file with the Secretary of State Office showing that Respondent’s company was just created in January 2017. Respondent’s domain was recently registered in April 2017.
On October 19, 2017, Complainant, through its attorneys, sent a letter to Respondent with a claim of trademark infringement and informed Respondent of Complainant’s prior trademark rights. In the letter, counsel requested a transfer of the domain. Respondent has not responded to Complainant’s cease and desist letter. Nor has Respondent complied with the request to transfer the domain.
As set forth below, Respondent has registered and used, without authorization, the domain name ASCENDCAPITALMGMT.COM to redirect, i.e., divert, customers, consumers and Internet users to Respondent’s website which offers identical services that compete with Complainant’s services; and to pass herself off as Complainant’s company. Complainant has attempted to resolve this matter by notifying Respondent of Complainant’s rights in and to the mark ASCEND CAPITAL and seeking a transfer of the domain name to Complainant.
Complainant has not replied.
Complainant respectfully requests that the following factual and legal grounds be considered and the disputed domain name be transferred.
[a.] The
domain ASCENDCAPITALMGMT.COM is confusingly similar to Complainant’s mark
ASCEND CAPITAL and Complainant’s Domain ASCENDCAPITAL.COM.
ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).
As set forth above, Complainant owns substantial Federal and common law trademark rights in the mark ASCEND CAPITAL which rights commenced as of April 18, 1999 and federal registration rights commenced as of January 19, 2010.
The Disputed Domain ASCENDCAPITALMGMT.COM is confusingly similar to Complainant’s mark ASCEND CAPITAL and Complainant’s Domain ASCENDCAPITAL.COM. As set forth above, Complainant owns substantial Federal and common law rights in the ASCEND CAPITAL mark dating to April 18, 1999. Complainant has submitted evidence in the form of registration certificates for the ASCEND CAPITAL mark which establish that the mark has been duly registered and that Complainant is the owner of record of the registrations. Therefore, Complainant has established its rights to the mark by registering it with the United States Patent and Trademark Office (“USPTO”). See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶4(a)(i)”); see also Microsoft Corp. v. Burkes, FA 652743 (Forum, April 17, 2006) (finding that Microsoft has established rights in the MICROSOFT mark through registration of the mark with the USPTO).
The disputed domain name ASCENDCAPITALMGMT.COM is substantively identical to Complainant’s ASCEND CAPITAL mark, because it incorporates all elements of Complainant’s ASCEND CAPITAL mark followed by MGMT.
Accordingly, the ASCENDCAPITALMGMT.COM domain is identical and/or confusingly similar to Complainant’s registered trademark ASCEND CAPITAL and Complainant’s domain ASCENDCAPITAL.COM.
The domain <ASCENDCAPITALMGMT.COM> is confusingly similar to Complainant’s mark ASCEND CAPITAL because it incorporates all elements of Complainant’s mark.
The record shows that this case against Respondent reflects the same bad faith tactics. See: Davis + Henderson, Limited Partnership v. Whois Privacy Protection Service, Inc./Demand Domains Inc., D2008-1162 (WIPO Sept. 5, 2008) finding that “the Domain Name was in all likelihood registered precisely because it was the name and trade mark of Complainant and with knowledge of the likely heavy traffic that it would attract to Respondent’s site and did in fact attract to that site. Respondent relied upon the fact that Internet users would be visiting the site to which the Domain Name was connected, because they would be hoping to reach a site of or authorized by Complainant. The same tactics apply to this case.
The Disputed Domain Name is confusingly similar to such marks which indicates that the Disputed Domain Name was registered primarily for the purpose of disrupting the business of Complainant, and appears to be intended to take advantage of the goodwill associated with Complainant's federally registered trademarks and Complainant’s prior domain and reputation.
Respondent is clearly trying to exploit the goodwill of Complainant and its trademarks by diverting customers of Complainant from Complainant's website to Respondent's website for commercial gain or malicious purposes by creating a likelihood of confusion with Complainant's ASCEND CAPITAL Mark.
Respondent is intentionally creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website, instead of Complainant's official and authorized website.
Accordingly, the <ASCENDCAPITALMGMT.COM> domain is identical and/or confusingly similar to Complainant’s registered trademark ASCEND CAPITAL and Complainant’s Domain ASCENDCAPITAL.COM.
[b.] Respondent
has no rights or legitimate interests in respect of the domain
ASCENDCAPITALMGMT.COM
UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
Respondent has no rights or legitimate interest in ASCENDCAPITALMGMT.COM because Respondent is not authorized by Complainant to use Complainant’s ASCEND CAPITAL mark in its domain name. Respondent was not commonly known by, or conducted business as, the domain name or any term incorporated therein. Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.14, 2000) (finding no rights or legitimate interests where respondent was not commonly known by the mark and never sought a license or permission from complainant to use the trademarked name).
It is clear that Respondent has acquired the domain primarily for the purpose of passing off on Complainant’s well known ASCEND CAPITAL mark and divert Internet users to service offerings that are in direct competition with Complainant; and to pass Respondent off as Complainant.
It is clear that Respondent has acquired the domain primarily for the purpose of passing off on Complainant’s well known trademark and company.
Respondent’s LinkedIn page links directly to the Disputed Domain.
In 2014, Respondent
and owner of the LinkedIn Page, Emily S. Muhleman a/k/a Emma Muhleman, applied
for a job at Complainant’s firm. Ms. Muhleman was rejected for the position at
Complainant’s firm.
From April 26, 2017 through present, Respondent has used the domain name ASCENDCAPITALMGMT.COM for the advertisement of capital investment services and hedge fund services.
Respondent intentionally sought to pass off as Complainant’s firm. The web page under the Dispute Domain claims that Respondent’s company “Ascend began as a long/short equity focused hedge fund years ago…” Such claim on Respondent’s web pages is false as Respondent’s company was just organized in January 2017. Respondent’s company was created in January 2017.
Respondent’s domain was subsequently created in April 2017.
Respondent’s website and web pages under the Disputed Domain do not list any personal names, officer names, addresses or business number so as to keep Respondent anonymous. Respondent uses her LinkedIn Profile to link directly to the Disputed Domain to pass off as Complainant’s company and to make it appear that she worked for Complainant’s company.
Respondent’s website lists one phone number, which is a cell phone number for Emma Muhleman. Ms. Muhleman uses her LinkedIn Page to link to the Disputed Domain which includes her personal cell number.
Respondent's website is misleading, Respondent may also use it in connection with various phishing or other fraudulent activities.
On October 19, 2017, Complainant, through its attorneys, sent a letter to Respondent with a claim of trademark infringement and informed Respondent of Complainant’s prior trademark rights. In the letter, counsel requested a transfer of the domain. Respondent has not complied with the request to transfer the domain or responded to the cease and desist letter.
As set forth below, Respondent has registered and used, without authorization, the domain name ASCENDCAPITALMGMT.COM to redirect, i.e., divert, customers, consumers and Internet users to Respondent’s website which advertises identical services that compete with Complainant’s services.
Bad faith registration of a domain name can be found when Respondent "knew or should have known" about the existence of Complainant's trademarks, especially where Complainant's marks are well-known or in wide use at the time the domain name was registered.
Respondent is responsible for the content appearing on the website associated with the Disputed Domain Name, which states that Respondent “Ascend began as a long/short equity focused hedge fund years ago” despite the fact that Respondent recently formed the company and Disputed Domain within the last several months. Such language is used to pass Respondent off as Complainant’s company.
Respondent has no legitimate rights or interests in ASCENDCAPITALMGMT.COM, nor has it used the domain name in any bona fide manner or made any legitimate fair use of the same.
[c.] Respondent registered and is using the domain ASCENDCAPITALMGMT.COM in bad faith.
1. Use of Domain Name to Divert Internet Users and Commercially Benefitting
Respondent’s use and registration of the ASCENDCAPITALMGMT.COM domain name satisfies the bad faith element set forth in Policy ¶4(b)(iv) for the following reasons:
Respondent’s use of the domain name containing Complainant’s mark to pass off as Complainant.
It is clear that Respondent has acquired the domain primarily for the purpose of passing off on Complainant’s well known trademark and company and services.
Respondent’s LinkedIn page links directly to the Disputed Domain.
In 2014, Respondent
and owner of the LinkedIn Page, Emily S.
Muhleman a/k/a Emma Muhleman, applied for a job at Complainant’s firm. Ms.
Muhleman was rejected for the position at Complainant’s firm.
From April 26, 2017 through present, Respondent has used the domain name ASCENDCAPITALMGMT.COM for the advertisement of capital investment services and hedge fund services.
Respondent intentionally sought to pass off as Complainant’s firm. The web page under the Dispute Domain claims that Respondent’s company “Ascend began as a long/short equity focused hedge fund years ago…” Such claim on Respondent’s web pages is false as Respondent’s company was just organized in January 2017. Respondent’s company was just created in January 2017. Respondent’s domain was recently registered in April 2017.
Respondent’s web pages under the Disputed Domain do not list any personal names, officer names, address or business number so as to keep Respondent anonymous. Respondent uses her LinkedIn Profile to link directly to the Disputed Domain to pass off as working for Complainant’s company. Respondent’s website lists one phone number, which is a cell phone number for Emma Muhleman. Ms. Muhleman uses her LinkedIn Page to link to the Disputed Domain which includes her personal cell number.
Thus, consumers and customers searching for Complainant’s website and company are taken to Respondent’s website where the only contact is to call Ms. Muhleman’s cell phone number or email Ms. Muhleman directly.
Respondent's website is misleading, Respondent may also use it in connection with various phishing and fraudulent activities.
2. Respondent had Actual and Constructive Notice of Complainant’s Marks
Additionally, Respondent’s actual and/or constructive notice of Complainant’s rights in the mark ASCEND CAPITAL is further evidence of bad faith registration of ASCENDCAPITALMGMT.COM. In this regard, it is well established that ownership of a United States trademark registration confers upon its owner a right priority to the mark as of the application filing date – in this case May 28, 2009. 15 U.S.C. §1057. Moreover, the registration confers constructive knowledge on anyone attempting to use a federally registered or applied-for mark. 15 U.S.C. §1072. Because Complainant’s registration for ASCEND CAPITAL was allowed by the U.S. Patent and Trademark Office before Respondent’s creation date in for the disputed domain name in April 2017, ‘Respondent is charged with constructive notice of the prior rights of Complainant.’ See Orange Glo Int’l v. Blume, FA 118313 (Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”)
In addition to constructive notice of Complainant’s rights, Respondent applied for a job at Complainant’s company in 2014 confirms that Respondent had actual notice of Complainant’s rights in ASCEND CAPITAL, further evidencing bad faith registration of <ASCENDCAPITALMGMT.COM>.
In addition to constructive notice of Complainant’s rights, Respondent’s registration of the disputed domain name, incorporating Complainant’s mark suggests that Respondent had actual notice of Complainant’s rights in ASCEND CAPITAL, further evidencing bad faith registration of <ASCENDCAPITALMGMT.COM>.
Respondent responded to Complainant after this Complaint was initially filed. Respondent states that Respondent will cease all use of the infringing trademark and will release the domain for transfer to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue – Consent to Transfer
In Complainant’s Amended Complaint, Complainant provides an exhibit with email correspondent from Respondent which might be construed as consenting to transfer the <ascendcapitalmgmt.com> domain name to Complainant. At the initiation of this proceeding, GoDaddy.com, LLC placed a hold on Respondent’s account (although the parties can stipulate to remove the hold for the purposes of effectuating a transfer from Respondent to Complainant). Clearly, this transfer was never done for reasons not known to this Panel.
Respondent did not make the “sort of” offer to transfer the domain name until this proceeding was commenced. Respondent claimed not to know how to make the transfer and asked for directions. For the reasons discussed below, this Panel is not willing to forego the UDRP analysis in light of the deliberateness of Respondent’s actions. The “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
The Panel will analyze the case under the elements of the UDRP.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has registrations for the ASCEND CAPITAL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,739,264, registered Jan. 19, 2010) and the Canadian Intellectual Property Office (“CIPO”) (e.g., No. TMA882870, registered Jul. 25, 2014). Registration with a governmental trademark agency, such as the CIPO or the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark even if Respondent is located in another country (regarding the CIPO registration). See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Complainant has adequately demonstrated its rights in the ASCEND CAPITAL pursuant to Policy ¶4(a)(i).
Complainant claims Respondent’s <ascendcapitalmgmt.com> domain name is confusingly similar to Complainant’s ASCEND CAPITAL mark. The disputed domain name is substantively identical to the mark followed by the term “mgmt.” Generally, adding generic or descriptive terms is insufficient changes to differentiate a disputed domain name from a mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶4(a)(i).). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See 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). Omitting a space is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits spaces. Respondent’s <ascendcapitalmgmt.com> domain name is confusingly similar to Complainant’s ASCEND CAPITAL mark for the purposes of Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests in a domain name); see also 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.”).
Complainant claims Respondent has no rights or legitimate interests in the <ascendcapitalmgmt.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that Respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that Respondent was commonly known by the domain names, and Complainant had not authorized Respondent to register a domain name containing its registered mark). The WHOIS identifies “Emily MUHLEMAN / Ascend Capital Partners” as the registrant. Respondent registered the domain name after being considered (and rejected) for employment with Complainant. Respondent lists Complainant as her employer on LinkedIn. No evidence exists in the record to show that Respondent has ever been legitimately known by the ASCEND CAPITAL mark (and Respondent’s attempt to create an entity with a confusingly similar name to claim rights is not persuasive). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that Respondent was not commonly known by the disputed domain name where Complainant had never authorized Respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Respondent is not commonly known by the <ascendcapitalmgmt.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent does not use the <ascendcapitalmgmt.com> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the disputed domain name is to pass off as Complainant to advertise competing capital investment and hedge fund services. Using a disputed domain name to pass off as a complainant by offering competing services does not create any rights or legitimate interests in a disputed domain name. See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding Respondent’s use of the disputed domain name to pass itself off as Complainant in order to advertise and sell unauthorized products of Complainant was not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(iii)). Respondent’s <ascendcapitalmgmt.com> domain name advertises financial, capital, and hedge fund services in the same field as Complainant, while using a similar phraseology as Complainant’s own website. Respondent attempts to pass herself off as Complainant by advertising competing services, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii).
Respondent registered the disputed domain name using a WHOIS privacy service. This means Respondent has done nothing to publicly associate herself with the disputed domain name. This means Respondent cannot acquire any rights to the domain name simply by registering and putting a website up.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the disputed domain name in bad faith by attempting to pass off as Complainant by offering competing capital investment and hedge fund services. Using a disputed domain name to pass off as a complainant and offer competing goods or services for commercial gain constitutes bad faith under Policy ¶4(b)(iv). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that Respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that Complainant endorsed and sponsored Respondent’s website); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶4(b)(iv).”). Respondent lists Complainant as her employer on her LinkedIn profile (which is not true). Respondent attempts to pass off herself off as Complainant by advertising competing services in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent had actual knowledge of Complainant’s rights in the ASCEND CAPITAL mark. While Respondent claims this is all a coincidence, the Panel is not convinced. Respondent applied to work with Complainant in 2014. It would be difficult to claim Respondent didn’t know about Complainant’s business and mark. While Complainant didn’t hire Respondent, Respondent’s LinkedIn page shows she has worked for Complainant since January 2015. Clearly, that is wishful thinking at best. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting Respondent's contention that it did not register the disputed domain name in bad faith since the panel found that Respondent had knowledge of Complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondent’s web site uses similar phrases as Complainant’s web site. Respondent must have known of the ASCEND CAPITAL mark based Respondent application to work in Complainant’s company in 2014 (which was rejected). Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶4(a)(iii).
Finally, Respondent used a WHOIS privacy service to register the disputed domain name. In a commercial context, this raises a rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. Simply saying “it’s all a coincidence” does not constitute a satisfactory explanation. Therefore, this Panel is willing to find bad faith on these grounds alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <ascendcapitalmgmt.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, December 12, 2017
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