The Capital Group Companies, Inc. v. Patricia Straus
Claim Number: FA2303002035269
Complainant is The Capital Group Companies, Inc. (“Complainant”), represented by Kaleigh P. Morrison of Nixon Peabody LLP, New York. Respondent is Patricia Straus (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitalgrp.us>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on March 9, 2023; Forum received payment on March 9, 2023.
On March 10, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <capitalgrp.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2023 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@capitalgrp.us. Also on March 10, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, 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 contends as follows:
Complainant, The Capital Group Companies, Inc., offers asset management services.
Complainant has rights in the CAPITAL GROUP mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <capitalgrp.us> domain name is confusingly similar to Complainant’s mark because it incorporates the CAPITAL GROUP mark in its entirety, removes the letters “o” and “u”, and adds the “.us” country-code top-level domain (“ccTLD”)
Respondent has no legitimate interests in the <capitalgrp.us> domain name. Respondent does not own a trademark identical to the at-issue domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not authorized or licensed Respondent any rights in the CAPITAL GROUP mark. Additionally, Respondent does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses an email address incorporating the domain name to pass itself off as Complainant in furtherance of a phishing scheme. The disputed domain name resolves to Complainant’s own website.
Respondent registered and uses the <capitalgrp.us> domain name in bad faith. Respondent registered the at-issue domain name in order to pass itself off as Complainant for commercial gain. Respondent registered the at-issue domain name in order to facilitate phishing. Finally, Respondent registered the domain name with constructive/actual knowledge of Complainant’s rights in the CAPITAL GROUP mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, Respondent asserted via email to Complainant that it was not aware of the at-issue domain name, did not register it, and does not use it without offering any evidence supporting its assertions.
Complainant has rights in the CAPITAL GROUP trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the CAPITAL GROUP trademark.
Respondent uses the at-issue domain names to pass itself off as Complainant and address Complainant own website in furtherance of phishing.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration, along with multiple other national trademark registrations, for its CAPITAL GROUP trademark. Any of such registrations is sufficient to demonstrate Complainant’s rights in the CAPITAL GROUP mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also, Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
Respondent’s <capitalgrp.us> domain name consists of Complainant’s CAPITAL GROUP trademark less its domain name impermissible space and with its second term abbreviated as “grp” with all followed by the “.us” top-level domain name. The differences between Respondent’s domain name and Complainant’s trademark fail to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel concludes that Respondent’s <capitalgrp.us> domain name is confusingly similar to CAPITAL GROUP pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”); see also Am. Express Co. v. McWIlliam, FA 268423 (Forum July 6, 2004) (holding that the ccTLD “.us” does not negate confusing similarity under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Patricia Straus” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <capitalgrp.us> domain name. The Panel therefore concludes that Respondent is not commonly known by <capitalgrp.us> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Additionally, Respondent uses the confusingly similar <capitalgrp.us>domain name to host email to pass itself off as Complainant by posing as Complainant’s employee so that it might deceive third parties. Here, Complainant’s shows that Respondent has contacted at least one party offering employment with Complainant. Cloaked as Complainant Respondent may further its phishing activities by obtaining confidential information or funds from deceived employment seekers (or others) in the name of establishing employment with Complainant (or otherwise). Respondent’s use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”).
Respondent’s phishing endeavor in itself discounts Respondent as having either rights or legitimate interests in respect of the <capitalgrp.us> domain name. See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 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).”).
Furthermore, Respondent’s redirection of the at-issue domain name to Complainant’s own website additionally demonstrates Respondent’s lack of rights or legitimate interests in <capitalgrp.us> under Policy ¶ 4(a)(ii). See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”). Indeed, Respondent redirection of the domain name to Complainant’s genuine website supports Complainant’s email ruse by heightening the appearance that Respondent’s email-hosting confusingly similar at-issue domain name is sponsored by Complainant.
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
Respondent’s <capitalgrp.us> domain name was registered and used in bad faith. As discussed below without being exhaustive, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses its confusingly similar domain name to pass itself off as Complainant. Using email from <capitalgrp.us>, Respondent pretends to be an employee of Complainant so that it may trick third parties into mistakenly giving up confidential information and/or funds to Respondent. Notably, using the <capitalgrp.us> domain name to pass itself off as Complainant to feign an affiliation between Complainant and Respondent so that Respondent may commercially benefit, is disruptive to Complainant’s business and demonstrates Respondent’s bad faith registration and use of the at-issue domain name under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use); see also Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Moreover, Respondent registered <capitalgrp.us> knowing that Complainant had trademark rights in the CAPITAL GROUP mark. Respondent’s actual knowledge of Complainant’s CAPITAL GROUP trademark is evident from the notoriety of Complainant and its trademark and from Respondent’s use of <capitalgrp.us> to pass itself off Complainant as discussed elsewhere herein. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <capitalgrp.us> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitalgrp.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 6, 2023
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