I Squared Capital Advisors (US) LLC v. Yuri Diaz / Yuricop
Claim Number: FA2002001884146
Complainant is I Squared Capital Advisors (US) LLC (“Complainant”), represented by Elizabeth Brenckman of Orrick, Herrington & Sutcliffe LLP, United States. Respondent is Yuri Diaz / Yuricop (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <isquaredcapitai.com>, registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2020; the Forum received payment on February 21, 2020.
On February 21, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <isquaredcapitai.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 February 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2020 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@isquaredcapitai.com. Also on February 26, 2020, 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 March 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <isquaredcapitai.com> domain name is confusingly similar to Complainant’s I SQUARED CAPITAL mark.
2. Respondent does not have any rights or legitimate interests in the <isquaredcapitai.com> domain name.
3. Respondent registered and uses the <isquaredcapitai.com> domain name in bad faith.
B. Respondent failed to file a Response in this proceeding.
Complainant, I Squared Capital Advisors (US) LLC, is a global infrastructure investment manager that holds a registration for the I SQUARED CAPITAL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,972,740, registered Jan. 28, 2020, with a first use in commerce in 2013).
Respondent registered the <isquaredcapitai.com> domain name on June 19, 2019, and uses it to pass off as Complainant in furtherance of a fraudulent scheme.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the I SQUARED CAPITAL mark based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant also asserts common law rights in the I SQUARED CAPTIAL mark based on its use of the I SQUARED CAPITAL mark and the <isquaredcaptical.com> domain name in United States commerce since 2012. The Panel notes that Complainant’s registration for the I SQUARED CAPITAL mark shows a first use date in 2012, with a first use in commerce in 2013. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i) dating back to at least 2013. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”); see also Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”)
Respondent’s <isquaredcapitai.com> domain name is nearly identical to Complainant’s mark since it incorporates the mark in its entirety, adding the letter “i” in place of the “l” at the end of the mark, and adding a gTLD. These changes do not sufficiently mitigate confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”). Thus, the Panel finds that Respondent’s <isquaredcapitai.com> domain name is confusingly similar to Complainant’s I SQUARED CAPITAL mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the <isquaredcapitai.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s I SQUARED CAPTIAL mark. The WHOIS information of record lists the registrant of the disputed domain name as “Yuri Diaz / Yuricop.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus Respondent has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name).
Complainant also argues that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make any active use the disputed domain name. Failure to make active use of a domain name does constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the disputed domain name, which resolves to an error message warning users about a security threat. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <isquaredcapitai.com> domain name in bad faith because Respondent uses the disputed domain name to pass off as Complainant in furtherance of a fraudulent scheme. Use of a domain name to impersonate a complainant for a fraudulent phishing scheme constitutes bad faith under Policy ¶ 4(a)(iii). See Airbnb, Inc. v. JAMES GRANT, FA1760182 (Forum December 28, 2017) (“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”). Complainant demonstrates that Respondent used email addresses associated with the disputed domain name to pass off as Complainant’s employees and solicit money transfers from third parties. The Panel finds that this use constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent’s failure to make an active use of the disputed domain name evinces bad faith. Inactive use of a disputed domain name may show bad faith under Policy ¶ 4(a)(iii). See Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014) (“Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant provides a screenshot of the disputed domain name’s resolving error message. Therefore, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Complainant claims that Respondent must have had knowledge of Complainant’s rights in the I SQUARED CAPTIAL mark based on its attempt to profit by passing itself of as Complainant. The Panel agrees and finds that Respondent registered and uses the <isquaredcapitai.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <isquaredcapitai.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 20, 2020
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