Royal Wealth Management, Inc. D/B/A Ace Capital v. Development Services / Inventra, Inc.
Claim Number: FA1401001538731
Complainant is Royal Wealth Management, Inc. D/B/A Ace Capital (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Development Services / Inventra, Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <acecapital.com>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2014; the National Arbitration Forum received payment on January 13, 2014.
On January 13, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <acecapital.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 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2014 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@acecapital.com. Also on January 22, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 12, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
Policy ¶ 4(a)(i):
Policy ¶ 4(a)(ii):
Policy ¶ 4(a)(iii):
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Royal Wealth Management, Inc. d/b/a Ace Capital of Rustburg, VA, USA. Complainant was founded in 2008 and has continuously used the mark ACE CAPITAL since that time in connection with its provision of insurance, financial planning and retirement services.
Respondent is Development Services / Inventra, Inc. of Alviso, California, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The <acecapital.com> domain name appears to have been last updated on or about June 26, 2012.
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(e), 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 (Nat. Arb. 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); 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.”).
Although Complainant does not have a trademark registration for the ACE CAPITAL mark, Complainant may prevail under Policy ¶ 4(a)(i) if it is able to show that its claimed mark has acquired the requisite secondary meaning. See, e.g., Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant claims that it uses the ACE CAPITAL mark in connection with financial planning services. Complainant notes that it was founded on June 22, 2008, by Brian and Claude Royal. Complainant says that it has offered financial planning, insurance, and retirement services under the ACE CAPITAL mark since the first use of the mark. Complainant provides several pieces of evidence illustrating the use of the ACE CAPITAL mark going back to 2008. Previous panels have found that secondary meaning is established where an unregistered mark has been used to such an extent that consumers identify the mark with the source or origin of a particular good/service, and the consumer is not merely using the mark to identify the good/service in itself. See, e.g., Thomas Lawson Hewitt v. WhoisGuard, Inc. / WhoisGuard Protected, FA 1517472 (Nat. Arb. Forum Dec. 29, 2013) (“A complainant may gain common law rights in a mark through its continuous use of the mark in commerce for many years.”). The Panel finds that Complainant’s use of the ACE CAPITAL mark established sufficient rights as needed under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <acecapital.com> domain name is confusingly similar to the ACE CAPITAL mark. Complainant claims that Respondent adds the generic top-level domain (“gTLD”) “.com” to the domain name. The Panel finds that the domain name is identical to the mark, as the removal of the mark’s spacing and the addition of the gTLD do not sufficiently differentiate the domain name and the mark. See, e.g., Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013) (finding that the disputed domain name is confusingly similar to the complainants mark regardless of the omission of spaces in the mark and the addition a gTLD).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant claims that Respondent is not commonly known by this domain name. Complainant argues that Respondent has not been licensed, permitted, or authorized to use the ACE CAPITAL mark in domain names. The Panel notes that the most recent WHOIS query indicates that “Development Services / Inventra, Inc.” is listed as the registrant of this domain name. Prior panels have concluded that there is no basis for finding rights under Policy ¶ 4(c)(ii) when nothing in the record suggests that the respondent has ever been known by the domain name. See CollegeNET, Inc. v. Liheng / Just Traffic Supervision Consulting, FA 1534444 (Nat. Arb. Forum Jan. 27, 2014) (“Therefore, because Respondent was not authorized by Complainant to use the COLLEGENET mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <collegenet.biz> domain name under Policy ¶ 4(c)(ii).”). The Panel here finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant claims that Respondent’s use of the domain name to host competing advertisements is not a bona fide offering of goods or services. The Panel notes that the disputed domain name resolves to a website containing listings of competing financial services. The Panel finds that such competitive commercial hyperlinks do not give rise to a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, because the domain name serves no function beyond providing commercial advertising revenue vis-à-vis competitive advertisements. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims that Respondent offered to sell the <acecapital.com> domain name to Complainant, noting that he “paid less than $500” for the domain name. Complainant further claims that Respondent’s offer to Complainant was far greater than $500. The Panel notes that Complainant does not provide a copy of this correspondence between the parties. However, as Respondent has not otherwise responded to this proceeding the Panel accepts Complainant’s contentions and holds that Respondent’s conduct evidences an attempt to register and use the domain name in order to resell the domain name to Complainant. Prior panels have agreed that such conduct is in bad faith. See, e.g., Am. Animal Hospital Assoc. v. Domain Manager / Hog Advertising LLC, FA 1516145 (Nat. Arb. Forum Oct. 21, 2013) (“It is the Panel’s conclusion therefore that Respondent, having acquired the disputed domain name, was interested in selling it for a considerable sum . . . it is not the negotiations which amount to bad faith, but the offer to sell the name for as much as $18,000.”). The Panel here finds that Respondent registered the <acecapital.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant contends that Respondent uses the domain name to host competing hyperlinks to third-party businesses. The Panel again notes that the <acecapital.com> domain name presently resolves to a website wherein competing hyperlinks are explicitly promoted. In previous cases, panels have found that competing hyperlinks provide an inference that the respondent sought commercial advertising income by capitalizing on the likelihood that Internet users who entered the domain name’s website may associate its content with that of the complainant’s mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). The Panel here finds that Respondent’s conduct gives rise to Policy ¶ 4(b)(iv) bad faith as Respondent has monetized the domain name’s website with advertisements to competing financial service providers.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <acecapital.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 26, 2014
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