WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Winfield Capital Corp. v. DASC, Inc.

Case No. D2000-0349

 

1. The Parties

Complainant is Winfield Capital Corp. ("Winfield"), a New York corporation, with a principal place of business located at 237 Mamaroneck Avenue, White Plains, New York 10605 USA.

Respondent is DASC, Inc. ("DASC"), a California corporation with a mailing address of P.O. Box 5043, Irvine, California 92612 USA

 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is <winfieldcapital.com>. The registrar is Network Solutions, Inc. (the "Registrar") 505 Huntmar Park Drive, Herndon, Virginia 20170-5139 USA.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant on April 28, 2000. The Complainant paid the required fee.

On May 2, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. Also on May 2, 2000, the Center sent to the Registrar a request for verification of registration data. On May 3, 2000, the Registrar confirmed, inter alia, that it is the registrar of the domain name in dispute and that <winfieldcapital.com> is registered in the Respondent's name.

On May 5, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On May 5, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On May 26, 2000, the Center advised the Respondent that it was in default. No Response has been received by the Center.

On May 29, 2000 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page, Esq. (the "Presiding Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Presiding Panelist.

 

4. Factual Background

Founded in 1972, Winfield is a non-diversified company that elects to be regulated as a business development unit, a type of closed-end investment company. Using Small Business Administration ("SBA") funds, Winfield lends to and makes investments in small businesses. Winfield has been listed on the NASDAQ exchange since 1995 under the ticker symbol WCAP. As of June 21, 1999, Winfield had a market capitalization of $96.4 million with 5,255, 904 shares outstanding and over 3,100 beneficial owners, all of whom know Complainant as "Winfield Capital."

Complainant owns the service mark WINFIELD CAPITAL, which has been used continuously since 1972 in conjunction with financial services offered to small business concerns throughout the United States.

Since 1972, Complainant has prominently displayed its WINFIELD CAPITAL mark on all materials advertising, promoting, or describing its services, including its annual report as well as customer brochures. The WINFIELD CAPITAL mark has become an indicator of source of Complainantís services as well as the associated goodwill which Complaint has painstakingly cultivated for the past 28 years that it has been in business.

Respondent registered <winfieldcapital.com> on June 1, 1999. The domain name does not link to a website or other online presence.

On or about July 1999, Complainant received a letter by facsimile from Jay Aguilar, Respondentís listed administrative contact. This letter, which was personally read by Complainantís Chairman and CEO, Paul A. Perlin, cannot be located. According to Mr. Perlin, who recalls Mr. Aguilarís letter vividly, Mr. Aguilar introduced himself in the letter as a web developer and shareholder of Winfield. Mr. Aguilar further stated that he was aware that Winfield did not have a website of its own and indicated that he wanted Winfield to engage his services to develop its website.

On March 2, 2000, Complainant, through counsel, wrote to Mr. Aguilar. This letter, which was sent both via overnight U.S. mail and facsimile to the addresses that Respondent provided to the domain name Registrar, informed Mr. Aguilar that the domain name registration was unlawful and demanded that Mr. Aguilar execute a domain name transfer agreement. The copy of this letter sent via U.S. mail was returned to Complainant with the message "box closed, no order," indicating the listed address is not correct. Neither Respondent nor Mr. Aguilar acknowledged receipt of Complainantís counselís facsimile transmission of this letter. Moreover, the registers of company names and business names in California do not disclose a registration of a company name or business name for DASC, Inc., making it impossible for Complainant to contact Respondent via mail.

 

5. Partiesí Contentions

A. Complainant contends that the domain name <winfieldcapital.com> is identical with and confusingly similar to the WINFIELD CAPITAL service mark pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the domain name <winfieldcapital.com> pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the domain name <winfieldcapital.com> in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondent presented no evidence contesting that the domain name <winfieldcapital.com> is identical with or confusingly similar to the WINFIELD CAPITAL service mark.

Respondent presented no evidence contending that it has rights or legitimate interest in the <winfieldcapital.com> domain name.

Respondent presented no evidence contending that it has registered and used the <winfieldcapital.com> domain name in good faith.

6. Discussion and Findings

Even though Respondent has filed no Response and has offered no evidence attacking the contentions of Complainant, the Presiding Panelist hereby reviews the evidence before him to determine whether the Complainant has supported each of the required elements in its contentions within the existing record.

Identity or Confusing Similarity.

Complainant is the sole and exclusive owner of the WINFIELD CAPITAL service mark. The domain name <winfieldcapital.com> contains the identical phrase "Winfield Capital." Respondent does not contest that the phrase is identical. Therefore, the Presiding Panelist finds that the domain name <winfieldcapital.com> is identical with and confusingly similar to the service mark WINFIELD CAPITAL pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

The evidence demonstrates that since registering the domain name on June 1, 1999, Respondent has not used <winfeildcapitala.com> to link to a website or to any other online presence. Respondent has not shown any demonstrable evidence of an intent to use the domain name <winfieldcapital.com> for its own purposes prior to the dispute arising with Complainant. Therefore, the Presiding Panelist finds that Respondent has no rights or legitimate interest in the domain name <winfieldcapital.com> pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

The Presiding Panelist has found that Respondent has not used or intended to use the domain name <winfieldcapital.com> for its own purposes prior to the dispute arising with Complainant.

Complainant has offered the testimony of its Chairman and CEO, Paul A. Perlin, regarding the contents of a letter Complainant received from Jay Aguilar as Respondentís listed administrative contact. Neither the original nor a copy of the letter can be located. Therefore, Mr. Perlinís testimony is the best evidence of the letterís existence and content. Furthermore, Respondent has not contested either the existence or the content of the letter.

According to Mr. Perlinís recollection, the July 1999 letter to Complainant from Mr. Aguilar, offered Mr. Aguilarís services to Complainant for development of a website. Mr. Aguilar asserted he was a shareholder of Winfield at the time he made this offer. Mr. Aguilar further stated that he was aware that Winfield did not have a website of its own.

Therefore, the Presiding Panelist finds that Respondent has registered and used the domain name <winfieldcapital.com> in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Presiding Panelist concludes (a) that the domain name <winfieldcapital.com> is identical with and confusingly similar to the service mark WINFIELD CAPITAL, (b) that Respondent has no rights or legitimate interest in the domain name and (c) that Respondent registered and used the domain name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <winfieldcapital.com> be transferred to Complainant Winfield Capital Corp.

 


 

Richard W. Page
Presiding Panelist

Dated: June 11, 2000