URS FINAL DETERMINATION

Capio AB v. Registration Private / Domains By Proxy, LLC et al.
Claim Number: FA2407002107022

DOMAIN NAME

<capio.app>

PARTIES

	Complainant: Capio AB of Göteborg, Sweden
	Complainant Representative: Abion AB of Göteborg, Sweden

	Respondent: ApplyBoard Inc. of Kitchener, ON, Canada

REGISTRIES and REGISTRARS

	Registries: Charleston Road Registry Inc.
	Registrars: GoDaddy.com, LLC

EXAMINER

	The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
	Honorable Charles Kuechenmeister (Ret.), as Examiner

PROCEDURAL HISTORY

	Complainant Submitted: July 19, 2024
	Commencement: July 22, 2024
	Response Date: August 12, 2024
	Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT

Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW

Clear and convincing evidence.

FINDINGS and DISCUSSION

Findings of Fact: Complainant alleges and furnishes evidence that it has rights in the CAPIO mark based upon its registration of that mark with the EUIPO and that it is currently using the mark in commerce. the domain name is confusingly similar to Complainant's mark. Complainant alleges that Respondent has no rights or legitimate interests in the domain name and that Respondent registered and is using the domain name in bad faith because because it resolves to a parking page displaying pay-per-click links to websites related to its business. Complainant also alleges that Respondent had actual knowledge of Complainant and its rights in the mark when it registered the domain name. Respondent alleges that Complainant cannot claim exclusive use of the CAPIO mark because other entities are already using it. Respondent further alleges that it purchased the domain name and plans to use it in connection with its planned business of facilitating international student mobility, that the previous pay-per-click features of the parking page were set up by GoDaddy, the registrar, that Respondent had no knowledge of that arrangement and that Respondent has directed GoDaddy to remove them from the parking page.

URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.

[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant

Complainant has rights in the CAPIO mark based upon its registration of that mark with the EUIPO, and it is currently using the mark (EUIPO registration certificate and screenshot of Complainant's website).

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant

Complainant has made out a prima facie case of no rights or legitimate interests. Respondent alleges that it purchased the domain name and intends to use it for a business wholly unrelated to that of Complainant but submitted no evidence or explanation as to how long it has owned the domain name, or evidence of exactly what preparations it has made to use it for the stated purposes, The Examiner accepts Respondent's allegations about the origin of the pay-per-click features of the parking page as true, but the lack of evidence on the matters above discussed lead the Panel to find that Respondent has no rights or legitimate interest in the domain name.

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Registrant's web site or location or of a product or service on that web site or location.

Determined: Finding for Respondent

As stated above, the Panel accepts Respondent's allegation about the origin of the pay-per-click features of the parking page as true. There is no evidence as to the notoriety of Complainant's mark generally, and the Panel finds that the mark cannot reasonably be characterized as famous. Respondent does not state that it had no knowledge of Complainant and its mark when it purchased the domain name, but it does state that it intends to use the domain name in a market segment wholly different from and unrelated to that in which Complainant operates. This tends to demonstrate that Respondent did not purchase the domain name with the intent to trade on the goodwill of Complainant. Complainant has the burden of persuasion on this element of its case and it has failed to prove the requisite actual knowledge.

FINDING OF ABUSE or MATERIAL FALSEHOOD

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

The Complaint was neither abusive nor contained material falsehoods.

DETERMINATION

After reviewing the parties' submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be returned to the control of Respondent:

capio.app

Honorable Charles Kuechenmeister (Ret.)
Examiner
Dated: August 13, 2024

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