The Capital Group Companies, Inc. v. Richard Martinez
Claim Number: FA1502001604417
Complainant is The Capital Group Companies, Inc. (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, United States. Respondent is Richard Martinez (“Respondent”), Florida, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thecapitalgroupinc.com>, registered with ENOM, INC.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2015; the Forum received payment on February 11, 2015.
On February 12, 2015, ENOM, INC. confirmed by e-mail to the Forum that the <thecapitalgroupinc.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2015 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@thecapitalgroupinc.com. Also on February 16, 2015, 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 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant uses the CAPITAL GROUP mark in connection with its investment management services, particularly in relation to mutual funds in the United States. Complainant owns the CAPITAL GROUP mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,278,544, registered Aug. 14, 2007), which establishes its rights in the mark. The <thecapitalgroupinc.com> domain name is confusingly similar to the CAPITAL GROUP mark because it adds the generic word “the” and the corporate identifier “inc.”
Respondent has no rights or legitimate interests in the <thecapitalgroupinc.com> domain name. Respondent is not commonly known by the disputed domain name or any variant thereof, nor has Respondent been given permission to use the CAPITAL GROUP mark by Complainant. Further, Respondent is not using the <thecapitalgroupinc.com> domain name in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use as the disputed domain name resolves to Complainant’s website.
Respondent is using the disputed domain name in bad faith. Respondent presumably profits from the use of click-through links to redirect Internet users to Complainant’s website. Further, Respondent’s actions suggest it had actual/constructive knowledge of Complainant’s mark.
Respondent
Respondent did not submit a response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 argues that the <thecapitalgroupinc.com> domain name is confusingly similar to the CAPITAL GROUP mark as the domain name simply adds the generic article “the” and the corporate identifier “inc” to the mark. Panels have agreed that such additions are not persuasive when conducting a Policy ¶ 4(a)(i) analysis. See Marriott Int’l, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb. Forum May 28, 2002) (“[T]he addition of the [article] ‘the’ to the beginning of the domain names fails to make them separate and distinct, as distinguishable from Complainant’s marks.”); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). The disputed domain name eliminates the space between the words “capital” and “group” and adds the generic top-level domain (“gTLD”) “.com” to the mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel agrees that such alterations do not distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
In arguing that Respondent has no rights or legitimate interests in the <thecapitalgroupinc.com> domain name, Complainant urges that Respondent is not commonly known by the disputed domain name or any variant of CAPITAL GROUP. Complainant asserts that it has never given Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks. The WHOIS information lists “Richard Martinez” as registrant. As Respondent has not provided a response for the Panel’s consideration, the Panel finds no basis in the available record to find that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); See also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant claims that Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor making a legitimate noncommercial or fair use. Complainant contends that the disputed domain name resolves to Complainant’s own website and Respondent presumably profits from the redirection. Past panels have found no bona fide offering of goods or services, nor a legitimate noncommercial or fair use when a respondent uses a confusingly similar domain name to redirect Internet users to a complainant’s own website to presumably commercially gain. See Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (by signing up for the complainant’s affiliate program upon registering the domain name, which was a misspelling of the complainant’s mark, the respondent intended to use the domain name to generate profit at the complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii)). The Panel agrees that Respondent’s behavior does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant argues that Respondent presumably profits through click-through revenue when Internet users type the disputed domain name and are redirected to Complainant’s website. Complainant argues that Respondent is using the disputed domain name in conjunction with Policy ¶ 4(b)(iv) bad faith registration and use. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program). The Panel agrees that the redirection to Complainant’s website through Respondent’s <thecapitalgroupinc.com> domain name to presumably gain profits constitutes bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the CAPITAL GROUP mark. Complainant argues that Respondent's <thecapitalgroupinc.com> domain name redirecting to Complainant's own website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although past panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent’s redirection of the domain name to Complainant’s website demonstrates actual knowledge of Complainant's mark and rights, and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Choice Hotels Int’l, Inc., FA 1477085 (Nat. Arb. Forum, 2013) (“The Panel finds . . . that Respondent had actual notice of Complainant’s rights in its mark, demonstrated by Respondent’s redirection of the domain names to Complainant’s website, and determines that such actual notice is proof of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii).”).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <thecapitalgroupinc.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: March 24, 2015
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