Kames Capital PLC v. Tom Harrison / Kames Capital Plc Limited
Claim Number: FA1604001671583
Complainant is Kames Capital PLC (“Complainant”), represented by Bruce A. McDonald of SMITH, GAMBRELL & RUSSELL, LLP, District of Columbia, USA. Respondent is Tom Harrison / Kames Capital Plc Limited (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kclfx.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 21, 2016; the Forum received payment on April 22, 2016.
On April 22, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kclfx.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 April 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2016 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@kclfx.com. Also on April 26, 2016, 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 May 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 is a specialist investment management business with principal offices in Edinburgh and London that manages approximately € 77 billion on behalf of United Kingdom and international clients. The KAMES CAPITAL mark has been registered by Complainant with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. UK00002581910, Reg. Date 2 Sept. 2011). Respondent’s <kclfx.com> domain name is confusingly similar to Complainant’s KAMES CAPITAL mark. The “kc” in the domain name are a reference to the first letters of KAMES CAPITAL mark. The Panel should consider Respondent’s use of the website to pose as Complainant in making its Policy 4(a)(i) decision that <kclfx.com> is confusingly similar.
Respondent lacks rights or a legitimate interest in the <kclfx.com> domain name. Respondent used the disputed domain name to pass itself off as Complainant in a phishing scheme to defraud Internet users.
The <kclfx.com> domain name was registered in bad faith. Respondent’s use of the disputed domain name to attempt to collect sensitive financial and personal data in a phishing scheme constitutes bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United Kingdom Public Limited Company engaged in a specialist investment management business.
2. Complainant registered the KAMES CAPITAL mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. UK00002581910, Reg. Date 2 Sept. 2011).
3. Respondent registered the <kclfx.com> domain name on January 11, 2015.
4. Respondent used the disputed domain name to pass itself off as Complainant in a phishing scheme to defraud Internet users.
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 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 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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant is a specialist investment management business with principal offices in Edinburgh and London that manages approximately € 77 billion on behalf of United Kingdom and international clients. Complainant’s Exhibit B has been provided as proof that the KAMES CAPITAL mark has been registered by Complainant with the UKIPO (Reg. No. UK00002581910, Reg. Date 2 Sept. 2011). Registration with UKIPO establishes a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Citigroup Inc. v. Kevin Goodman, FA 1623939 (Forum July 11, 2015) (holding, “Complainant’s ownership of UKIPO trademark registrations for the CITI trademark demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The second issue that arises is whether the disputed <kclfx.com> domain name is identical or confusingly similar to Complainant’s KAMES CAPITAL mark. Complainant asserts that Respondent’s <kclfx.com> domain name is confusingly similar to Complainant’s KAMES CAPITAL mark. Complainant submits that the “kc” in the domain name are a reference to the first letters of KAMES CAPITAL mark. Panels have shown great reluctance in granting a complainant exclusive rights to acronyms in the absence of registration with a trademark authority. See National Automotive Experts, L.L.C. v. Domain Administrator / Vertical Axis Inc., FA 1603505 (Forum Mar. 17, 2015) (“NAE is the combination of three letters in the English language, which can be an acronym for more than one entity. While the Panel acknowledges that Complainant and others may refer to Complainant as NAE, it notes that the USPTO has not yet declared that Complainant has the right to monopolize the three letters NAE. Thus, the Panel declines to find that Complainant has trademark rights in the acronym NAE.”). In the present case, however, the letters “kc” would be more likely than not to be taken by clients and potential clients of Complainant to refer to Complainant, particularly since the reference to “fx” is a standard reference to foreign exchange, one of the principal activities of Complainant. The domain name is likely, therefore, to be read as referring to the foreign exchange activities of Complainant, probably in London, where Complainant has one of its offices.
Complainant has also cited precedent that it contends allows the Panel to consider Respondent’s use of the website to pose as Complainant in making its Policy ¶ 4(a)(i) analysis. See Royal Bank of Scotland Group PLC v. BTCGroup, D2012-2096 (WIPO Jan. 14, 2013) (“The Panel believes that, in this specific case of fraudulent activities such as phishing scams, such grounds do exist, and that the content of the website should be taken into account to appraise the likelihood of confusion, as such content is highly relevant in the overall impression surrounding the domain name, its registration and use.”). However, in the preceding sentence the panel in Royal Bank of Scotland Group PLC v. BTCGroup, D2012-2096 (WIPO Jan. 14, 2013) notes that “The content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP, although such content may be regarded as highly relevant to assessment of intent to create confusion (e.g., within a relevant market or language group) under subsequent UDRP elements (i.e., rights or legitimate interests and bad faith).” Id. Having regard to prior UDRP decisions the Panel finds that It has some, although limited, discretion in determining whether or not to consider the content of the resolving webpage in making a Policy ¶ 4(a)(i) decision. Having regard to all the circumstances of the instant case, including the evidence of the fraudulent activities for which the domain name has been used, the Panel finds that it may have regard to the contents of the website and having done so finds that the disputed domain name is confusingly similar to Complainant’s trademark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s KAMES CAPITAL mark and to use it in its domain name and has added only the letters “lfx” which do not detract from the confusing similarity that is present but probably enhance it;
(b) Respondent registered the disputed domain name on January 11, 2015;
(c) Respondent has used the disputed domain name to pass itself off as Complainant in a phishing scheme to defraud Internet users;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant and Complainant has adduced evidence to that effect which the Panel accepts;
(e) Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant makes no argument concerning Respondent being commonly known by the disputed domain name or any variant of the KAMES CAPITAL mark. The Panel notes that the WHOIS information lists “Tom Harrison” as registrant and that Respondent has failed to submit any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name);
(f) Complainant submits that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Complainant argues that Respondent has been using the disputed domain name to impersonate Complainant and defraud Complainant’s customers. Specifically, Complainant provides Exhibit C, which it claims shows the resolving webpages for Respondent’s <kclfx.com> domain. The screen captured webpages appear to include “applications” which gather sensitive financial data (E-mail, Phone, Personal Office Password, PIN code). Panels have agreed that a respondent has not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent intentionally attempts to phish for personal information from a complainant’s customers. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds that Respondent is not using the disputed domain name in connection with 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and used the disputed domain name in bad faith by intentionally attracting, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark pursuant to Policy ¶ 4(b)(iv). Specifically, Complainant contends that Respondent attempted to have Complainant’s customers provide it with sensitive account information presumably for commercial gain. Panels have agreed with such arguments. See HOPE worldwide, Ltd. v. Jin, FA 320379 (Forum Nov. 11, 2004) (holding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates); see also Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients). As the Panel accepts Complainant’s argument that Respondent’s use imputes an attempt to gain commercially, the Panel concludes that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant alleges that Respondent is engaged in the practice of phishing, whereby Respondent attempts to capitalize on Complainant’s well-known mark to have Complainant’s customers provide it with sensitive account information. Past panels have found evidence of bad faith where a respondent’s disputed domain name redirects Internet users to a website that imitates the complainant’s website and is used to acquire personal information fraudulently from the complainant’s clients. See Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients). The Panel agrees that such phishing behavior via the disputed domain name lends additional evidence to support a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <kclfx.com> domain name using the KAMES CAPITAL mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kclfx.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 20, 2016
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