Cerberus Capital Management, L.P. v. NEL JAY / UNC DOMD / gee four / geefour holdings
Claim Number: FA1605001675273
Complainant is Cerberus Capital Management, L.P. (“Complainant”), represented by Scott Kareff of Schulte Roth & Zabel LLP, New York, USA. Respondent is NEL JAY / UNC DOMD / gee four / geefour holdings (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cerberusicapital.com> and <cerberuscapital-vip.com>, registered with Enom, Inc., and <cerberuscapital.online>, registered with NameCheap, 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 May 16, 2016; the Forum received payment on May 18, 2016.
On May 18, 2016, Enom, Inc. confirmed by e-mail to the Forum that the <cerberusicapital.com> and <cerberuscapital-vip.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. 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 May 19, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <cerberuscapital.online> 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 May 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@cerberusicapital.com, postmaster@cerberuscapital-vip.com, postmaster@cerberuscapital.online. Also on May 24, 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 June 22, 2016, 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 names be transferred from Respondent to Complainant.
Complainant
Complainant asserts rights in the CERBERUS CAPITAL MANAGEMENT, L.P. trademark per its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,208,821, registered Feb. 13, 2007). The mark is used in connection with the provision of financial services, mainly private equity investment services. The <cerberusicapital.com>, <cerberuscapital-vip.com> and <cerberuscapital.online> domain names are confusingly similar to the CERBERUS CAPITAL MANAGEMENT, L.P. mark because all of the domain names contain a dominant portion of the mark, in addition to such minor alterations like the addition of a hyphen, the generic phrase “vip,” the generic top-level domain (“gTLD”) “.com,” and the top-level domain “.online.”
Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known as any of the disputed domain names, nor is Respondent a licensee of Complainant. Furthermore, Respondent is using the domain names to run a phishing scheme, and therefore Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has engaged in bad faith registration and use of the domain names. By attempting to commercially profit from a likelihood of confusion, Respondent has engaged in bad faith under Policy ¶ 4(b)(iv). The aforementioned phishing scheme is also evidence of generic bad faith under Policy ¶ 4(a)(iii). Due to the fame and notoriety of Complainant’s mark, Respondent registered domain names with actual and/or construct knowledge of Complainant’s trademark rights.
Respondent
Respondent did not submit a Response in this proceeding.
Complainant alleges that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that all three domain names were registered close in time and for the same purpose of operating a common phishing scheme.
The Panel finds that Complainant has sufficiently presented uncontested evidence demonstrating that the listed entities are jointly controlled, and the Panel will proceed with the instant proceeding. Respondents are collectively referred to herein as “Respondent.”
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <cerberusicapital.com>, <cerberuscapital-vip.com> and <cerberuscapital.online> domain names.
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.”).
Complainant asserts rights in the CERBERUS CAPITAL MANAGEMENT, L.P. trademark per its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,208,821, registered Feb. 13, 2007). The mark is used in connection with the provision of financial services, mainly private equity investment services. The Panel finds that registration of the mark with the USPTO is sufficient to establish Complainant’s rights under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Complainant asserts that the <cerberusicapital.com>, <cerberuscapital-vip.com> and <cerberuscapital.online> domain names are confusingly similar to the CERBERUS CAPITAL MANAGEMENT, L.P. mark. All of the domain names contain the dominant portion of the mark, in addition to making minor alterations, including the addition of a hyphen, the generic phrase “vip,” the single letter “i,” the generic top-level domain (“gTLD”) “.com,” and the top-level domain “.online.” Panels have found the addition of the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Panels have also found that top-level domains consisting of words that could conceivably be construed as generic or descriptive terms such as “online” cannot distinguish a domain name from the mark at issue. See Citigroup Inc. v. Nicholas Bonner, FA 1604916 (Nat. Arb. Forum Mar. 18, 2015) (finding that the “.technology” gTLD was irrelevant to Policy ¶ 4(a)(i) analysis when assessing the confusing similarity between the <citigroup.technology> domain name and the CITIGROUP trademark). Panels have routinely determined that the addition of a descriptive term such as “vip” to a mark does not distinguish a domain name from a registered mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). ). Panels have also found that the addition of a single letter to a mark in a disputed domain name does not sufficiently distinguish a domain name from a registered mark under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Panels have also found that a hyphen does not differentiate a disputed domain name from a registered mark. See State Farm Mutual Automobile Insurance Company v. New Ventures Services, Corp, FA 1647714 (Forum Dec. 17, 2015) (finding that adding the common name “John” to complainant’s STATE FARM mark was insufficient to overcome a determination of confusing similarity.). Therefore, the Panel finds that the <cerberusicapital.com>, <cerberuscapital-vip.com> and <cerberuscapital.online> domain names are confusingly similar to Complainant’s CERBERUS CAPITAL MANAGEMENT, L.P. mark.
Complainant has proved 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 (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.”).
Complainant asserts that Respondent is not commonly known by any of the disputed domain names, nor is Respondent in possession of licensing rights that would allow it to use Complainant’s mark in domain names. The WHOIS information lists “gee four” as the registrant of record for the <cerberuscapital.online> domain name, “UNC DOMD” as the registrant of record for the <cerberuscapital-vip.com> domain name, and “NEL JAY” as the registrant of record for the <cerberusicapital.com> domain name. The record is devoid of any evidence to indicate that Respondent is either commonly known by the disputed domain names or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that Respondent is using the domain names in connection with a phishing scheme aimed at obtaining the personal information of unsuspecting Internet users. The Panel therefore finds Respondent does not have rights or legitimate interests in the domain names under Policy ¶ 4(a)(ii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum February 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Complainant has proved this element.
Complainant argues that Respondent has engaged in bad faith registration and use of the disputed domain names. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to profit from a likelihood of confusion. Complainant argues that the manner in which the domain names are used (for a phishing scheme) will cause Internet users to believe the resolving webpages are sponsored by or affiliated with Complainant. The Panel finds that a likelihood of confusion results from Respondent’s conduct, and Respondent is profiting, and therefore finds bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Complainant argues that Respondent is using the domain names to run a phishing scheme, and such behavior is indicative of bad faith under Policy ¶ 4(a)(iii). Complainant has submitted images from the webpages resolving from the disputed domain names. The Panel finds that a phishing scheme is present, and that this is evidence of bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum August 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)).
Complainant also contends that in light of the fame and notoriety of its mark, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proved 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 <cerberusicapital.com>, <cerberuscapital-vip.com>, <cerberuscapital.online> domain names be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 28, 2016
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