Farallon Capital Management, L.L.C. v. Farallon Capital Asia (Hong Kong) International
Claim Number: FA1409001579916
Complainant is Farallon Capital Management, L.L.C. (“Complainant”), represented by Christopher M. Dolan of Brinks Gilson & Lione, Illinois, USA. Respondent is Farallon Capital Asia (Hong Kong) International (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <faralloncapitalhk.com>, registered with Xin Net Technology Corporation.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2014; the National Arbitration Forum received payment on September 16, 2014. The Complainant was received in both English and Chinese.
On September 16, 2014, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <faralloncapitalhk.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 17, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@faralloncapitalhk.com. Also on September 17, 2014, the Chinese language 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 October 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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
i. Policy ¶ 4(a)(i). Complainant owns the FARALLON mark through registrations with numerous trademark agencies, including the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,512,788 registered Nov. 27, 2001) and Hong Kong’s Trade Marks Registry Intellectual Property Departments (Reg. No. 300,772,371 registered Dec. 4, 2006). Complainant also holds registrations for the FARALLON CAPITAL MANAGEMENT mark (e.g., U.S. Reg. No. 2,598,071 registered July 23, 2002). Complainant has used the FARALLON and related marks since the 1980s for asset and investment management services. The <faralloncapitalhk.com> domain name is confusingly similar to the FARALLON mark, as the added term “capital” is descriptive of Complainant’s business, and the added letters “hk” serve as a geographic abbreviation for “Hong Kong.”
ii. Policy ¶ 4(a)(ii). Respondent has no rights or legitimate interests in the disputed domain name. Respondent has never been known by the <faralloncapitalhk.com> name, and Complainant has no relationship to Respondent. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to impersonate Complainant and its services at the resolving website. The resolving page contains information relating to financial services, and contains Complainant’s copyrighted content.
iii. Policy ¶ 4(a)(iii). Respondent has engaged in bad faith use and registration. Respondent is attempting to mislead Internet users as to Complainant’s affiliation with the disputed domain name in hopes of attaining sensitive personal information via the impersonating website. Respondent had actual knowledge of Complainant’s rights in the FARALLON mark as demonstrated by Respondent’s use of copyrighted content belonging to Complainant on page resolving from the <faralloncapitalhk.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on February 26, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings shall be conducted in English.
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.”).
Complainant claims rights in the FARALLON mark through registrations with numerous trademark agencies, including the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,512,788 registered Nov. 27, 2001) and Hong Kong’s Trade Marks Registry Intellectual Property Departments (Reg. No. 300,772,371 registered Dec. 4, 2006). Complainant also cites to registrations for the FARALLON CAPITAL MANAGEMENT mark (e.g., U.S. Reg. No. 2,598,071 registered July 23, 2002). Complainant has used these FARALLON and related marks since the 1980s for asset and investment management services. Complainant argues that these valid trademark registrations satisfy the required rights showing of Policy ¶ 4(a)(i). Prior panels have consistently found that valid trademark registrations demonstrate rights in the mark for purposes of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). Accordingly, the Panel agrees that Complainant’s valid registrations with the USPTO and Hong Kong’s Trade Mark Registry are sufficient to establish rights in the FARALLON mark under Policy ¶ 4(a)(i).
Complainant argues the <faralloncapitalhk.com> domain name is confusingly similar to the FARALLON mark, as the added term “capital” is descriptive of Complainant’s business, and the added letters “hk” serve as a geographic abbreviation for “Hong Kong.” The Panel recalls that Respondent operates under the “Farallon Capital Management LLC” name, and serves the Hong Kong region. The Panel notes that the addition of the generic top-level domain (“gTLD”) is irrelevant to the Policy ¶ 4(a)(i) analysis as gTLDs are a required element of all domain names. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Regarding the relevant alterations, in Vans, Inc. v. qian xiaofeng a/k/a li junhan, FA 1400122 (Nat. Arb. Forum Sept. 6, 2011), the panel found the <vansshoesuk> domain name confusing similar to the VANS mark as the additions of the descriptive term “shoes,” and the the geographic abbreviation “uk” did not affect the essential character of the mark. Consistent with prior decisions, the Panel agrees that Respondent’s additions of the descriptive term “capital,” and the geographic abbreviation “hk” fail to distinguish the domain name from the wholly incorporated FARALLON mark, and therefore, finds the domain name confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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 disputed domain name. First, Complainant argues Respondent has never been known by the <faralloncapitalhk.com> name, and Complainant has no relationship to Respondent. The Panel notes the WHOIS record identifies “Farallon Capital Asia (Hong Kong) International” as the registrant. While the WHOIS recognizes an apparent nexus between Respondent and the <faralloncapitalhk.com> name, prior panels have required additional affirmative evidence beyond the WHOIS record before finding the respondent commonly known by the listed name. See, e.g., Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). In light of the available record, which is not supported by a response from Respondent, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), despite the apparent WHOIS nexus.
Next, Complainant argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor for a legitimate noncommercial or fair use. Instead, Complainant urges that Respondent uses the disputed domain name to impersonate Complainant and its services at the resolving website. Specifically, Complainant claims the resolving page contains information relating to financial services, and contains Complainant’s copyrighted content. See Compl., at Attached Ex. Q. The Panel compares Respondent’s offerings through the disputed domain found in Complainant’s Exhibits P, Q and S, with Complainant’s offerings found in Exhibits O and R. Given the apparent similarities, the Panel agrees that Respondent is attempting to pass itself off as Complainant. Prior Panels have determined that attempts at passing off are taken as strong evidence that the respondent lacks rights and legitimate interests in the disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Accordingly, the Panel agrees that Respondent’s impersonation of Complainant evinces neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent has engaged in bad faith use and registration. Specifically, Complainant urges that Respondent is attempting to mislead Internet users as to Complainant’s affiliation with the disputed domain name in hopes of attaining sensitive personal information via the impersonating website. Complainant maintains that Respondent has copied major portions of Complainant’s own website in furtherance of this scheme. See Compl., at Attached Exs. P-S. In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel found that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark.” Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith given Respondent’s attempts to pass itself off as Complainant by duplicating Complainant’s website.
To further drive home the point, Complainant urges that Respondent must have had actual knowledge of Complainant’s rights in the FARALLON mark as demonstrated by Respondent’s use of copyrighted content belonging to Complainant on page resolving from the <faralloncapitalhk.com> domain name. The Panel agrees that Respondent had actual knowledge of Complainant’s mark given Respondent’s efforts to impersonate Complainant and its website via the <faralloncapitalhk.com> domain name, and use this to support an additional finding of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <faralloncapitalhk.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 21, 2014
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