The Complainant is Caliburn Capital Partners LLP of London, United Kingdom of Great Britain and Northern Ireland, represented by Kilpatrick Stockton LLP, United States of America.
The Respondents are Caliburn Capital, LLC of San Antonio, Texas, United States of America and Kevin Covey of San Antonio, Texas, United States of America, represented by Bozada P.C., United States of America.
The disputed domain names <caliburn-capital.com> and <caliburncap.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2010. On March 12, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On March 14, 2010 GoDaddy.com, Inc. transmitted by email to the Center its verification response that Caliburn Capital, LLC is the registrant of the domain name <caliburn-capital.com> and that Kevin Covey is the registrant of the domain name <caliburncap.com>. GoDaddy.com, Inc confirmed that the Administrative and Technical Contacts for both disputed domain names is Kevin Covey. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on March 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2010. The Response was filed with the Center on April 6, 2010.
The Center appointed Andrew F. Christie as the sole panelist in this matter on April 19, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On April 15, 2010 the Complainant transmitted by email to the Center a reply to the Respondents' Response. On April 16, 2010 the Respondents transmitted by email to the Center a Provisional Rebuttal to the Complainant's Reply. On May 3, 2010, the Panel issued a Procedural Order admitting the Complainant's Reply and inviting the Respondents to submit a Rebuttal thereto. Pursuant to the Procedural Order, the Respondents submitted a Rebuttal on May 6, 2010. An unsolicited Sur-Rebuttal was submitted by the Complainant on May 10, 2010.
Caliburn Capital Partners LLP was founded in 2005 and provides asset management, financial consultation, investment, and monetary exchange services under the mark CALIBURN and has done business on a global basis under the name CALIBURN CAPITAL. It has offices in London, Geneva and Singapore and has attracted investors from around the world and made investments in numerous countries. Since 2006 it has publicized and promoted its services online at “www.caliburncapital.com”. It obtained a United States of America service mark registration for CALIBURN on March 27, 2007, in class 36 in respect of “financial services, namely, financial consultation, investment of funds for others and monetary exchange services”.
The disputed domain name <caliburn-capital.com> was registered by the first Respondent, Caliburn Capital, LLC, on October 22, 2008. The disputed domain name <caliburncap.com> was registered by second Respondent, Kevin Covey, on October 21, 2008. The first Respondent is engaged in the business of distressed asset acquisition and management, including the purchase of mortgage notes and debts. The first Respondent invests the personal financial resources of the second Respondent and of Paul Covey, but does not raise money from outside clients and investors.
The Complainant served a copy of the Complaint in this matter on the Respondents on March 11, 2010. On March 12, 2010, the first Respondent filed an application for United States of America service mark registration of CALIBURN CAPITAL in class 36 in respect of “investment management; management of a capital investment fund”. This application asserted that the mark was first used at least as early as May 31, 2008 and first used in commerce at least as early as July 1, 2008.
The Complainant contends that the disputed domain names are confusingly similar to the Complainant's CALIBURN mark because each adopts the CALIBURN mark exactly and in its entirety, differing only by adding “capital” or “cap”, thereby referring both to the very name and mark under which the Complainant conducts business, “Caliburn Capital”, and the very type of business for which the Complainant is known and respected.
The Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain names because the Complainant's first use of the CALIBURN mark predates by more than three years any use the Respondents made of <caliburn-capital.com> or “caliburn cap” as a trade name, domain name or mark. The Respondents had knowledge of the Complainant's prior rights in the CALIBURN mark because it was issued before the Respondents registered the disputed domain names. Whilst the Respondents registered “Caliburn Capital, LLC” as a business name in 2008 they do not appear to have done business under that name, and in any event, the business name registration post-dates the Complainant's trademark rights.
The Complainant contends that the domain names were registered in bad faith because the Respondent would have been aware of the Complainant's CALIBURN mark due to its advertising and marketing around the world, including in Texas where the Respondents are located, and that the Complainant's <caliburncapital.com> site would have appeared in any search conducted on the Internet for “Caliburn” and “Capital”. The Respondents are not making any legitimate noncommercial or fair use of the disputed domain names because they have posted two different versions of holding page websites at the disputed domain names. The Respondents are trying to attract Internet users to their sites for commercial gain by creating a likelihood of confusion with the Complainant's CALIBURN mark and “www.caliburncapital.com” website, as to source, sponsorship, affiliation, or endorsement of the Respondents' website. The first Respondent's filing of an application for service mark registration of CALIBURN CAPITAL, to cover the exact same services as covered by the Complainant's service mark registration of CALIBURN, one day after receiving notification of the Complaint demonstrates the Respondents' bad faith intent.
The Respondents contend the Complainant has not provided any evidence that the disputed domain names are confusingly similar to the Complainant's CALIBURN service mark or how that confusion would occur. The United States Patent and Trademark Office has granted trademark status to the word mark CALIBURN two additional times since the Complainant received its CALIBURN service mark registration, and that there are at least 24 domain name registrations with the term “caliburn”.
The Respondents contend they have rights and legitimate interests in the disputed domain names because: (i) they had no knowledge of the Complainant's CALIBURN service mark prior to registering the disputed domain names; (ii) the second respondent incorporated the first Respondent, a Limited Liability Company, and conducted a piece of business under that company's name in January 2008; (iii) the first Respondent executed a 12 month contract for outdoor bulletin advertising in June 2008, and executed a ten year lease for a commercial office in August 2008, in both instances using its name Caliburn Capital, LLC; (iv) since October 2008 the disputed domain names have resolved to webpages maintained by the Respondents containing their name, logo and contact information, apart from a brief period in December 2009 when the hosting for the web pages changed; and (v) the second Respondent chose the name “Caliburn Capital” for the first Respondent based on his history studies and its suitability to describe a financial company.
The Respondents contend that the disputed domain names are not being used in bad faith as the Complainant and Respondents are not competitors and do not offer similar goods and/or services. The first Respondent's application for service mark registration of CALIBURN CAPITAL in respect of “investment management; management of a capital investment fund” accurately describes the Respondents' activities. They undertake management of investments solely composed of the personal financial resources of the first Respondent's Managing Members, Kevin Covey (who is the second Respondent) and Paul Covey. The Respondents do not manage the investment of funds for others. The Complainant has not provided any evidence that the Respondents wanted to sell or rent the disputed domain names to the Complainant, to prevent the Complainant from reflecting the CALIBURN service mark in a corresponding domain name, or to create confusion amongst Internet users. The Respondents had no actual knowledge of the Complainant's service mark prior to receipt of the Complaint on March 11, 2010.
This Complaint has been brought in respect of multiple domain names where the registrant of each domain name is prima facie not the same person. According to paragraph 3(c) of the Rules provides: “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” The issue of who is the “holder” of a domain name for the purpose of this Rule was considered in detail in Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim, WIPO Case No. D2009-1345. The Panel in that case concluded that “at least for the purposes of determining if a single complaint has been properly brought in respect of multiple domain names, a “holder” of a disputed domain name is any person who has such an interest in the domain name that provides it with apparent or actual control over the domain name. It follows that a single complaint will be properly brought in respect of multiple domain names where there is a common person holding an interest in those domain names.” The Panel in Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim identified various situations in which it could be said that there is a common person holding an interest in multiple domain names, even though the registrant of those domain names is not the same person.
Applying the principle and approach of Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim to the facts of this case, this Panel finds that there is a common person who holds an interest in the disputed domain names. The common person is the second Respondent, Kevin Covey. He has the requisite interest in both of the disputed domain names by virtue of: (i) his registration of one of the disputed domain names, <caliburncap.com>; and (ii) his incorporation of and control over the registrant (the first Respondent) of the other disputed domain name, <caliburn-capital.com>. Accordingly, this Panel finds that this single Complaint is properly brought against both of the disputed domain names, despite the fact that the listed registrant of record for each domain name is facially different.
Both of the disputed domain names are confusingly similar to the Complainant's registered service mark CALIBURN. The disputed domain names incorporate wholly the Complainant's mark, and add only the descriptive word “capital” (preceded by a hyphen) or its abbreviation “cap”. The distinctive aspect of the disputed domain names is the Complaint's mark. This Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
In January 2008, the second Respondent obtained the incorporation of the first Respondent under a name – “Caliburn Capital” – that corresponds to the disputed domain names. Thereafter, the Respondents transacted business through, and in the name of, the first Respondent – in particular, the purchase of promissory notes for single-family residences (January 2008), the execution of a contract for outdoor bulletin advertising (June 2008), and the execution of a ten year commercial office lease (August 2008). These uses of the corresponding name will, pursuant to paragraph 4(c)(i) of the Policy, demonstrate that the Respondents have rights or legitimate interests in the disputed domain names if they amount to an offering of services that are both (i) prior to notice of this dispute, and (ii) bona fide.
The issue of when there is ‘notice of the dispute' was considered in some detail in Leap Real Estate Systems, LLC. v. BytePlay Limited, WIPO Case No. D2009-1290. The Panel in that case concluded that “it would be wrong to equate constructive notice of a registered trademark with “notice of the dispute” for the purposes of paragraph 4(c)(i) of the Policy. Something more is necessary. It seems to this Panel that it should only be said that the respondent has ‘notice of the dispute' when, at the very least, the respondent was, or reasonably should have been, aware both of the existence of the complainant's mark and of the other facts that are necessary for a complainant to have reasonable prospects of success in an action under the Policy.”
Applying the principle and approach of Leap Real Estate Systems, LLC. v. BytePlay Limited to the facts of this case, this Panel finds that the record before it does not disclose any facts that require a conclusion that the Respondents had notice of the dispute prior to receipt of the Complaint, on March 11, 2010. While this Panel recognizes the possibility that the second Respondent chose to incorporate the first Respondent under the name “Caliburn Capital” so as to benefit from the reputation of the Complainant's mark, this Panel also recognizes the possibility that the second Respondent was unaware of the Complainant's mark at the time of incorporation of the first Respondent. To determine which of these two possibilities is more likely to be the true state of affairs, it is necessary to weigh the evidence on the record. The Complainant asserted that its CALIBURN mark had “acquired a high degree of public recognition, fame, and distinctiveness throughout the United States and around the world”. However, the only evidence provided in support of this assertion of public recognition, fame and distinctiveness were copies of three articles about the Complainant, one in the hedgefund journal, one in Hedge Funds Review, and one in Financial Times. All three publications are specialist in nature; this being particularly true of the first two publications. This evidence alone, on balance, does not persuade this Panel that the Respondents were, or reasonably should have been, aware of the existence of the Complainant's mark prior to August 2008, by which time the second Respondent had incorporated the first Respondent and had engaged in business transactions through and in the name of the first Respondent. Accordingly, this Panel finds that the Respondents' use of the name “Caliburn Capital” in connection with purchase of promissory notes, outdoor advertising, and office leasing occurred prior to notice of this dispute.
This leaves for consideration the question of whether the Respondents' engagement in the transactions under the name “Caliburn Captial” was bona fide. As noted above, the evidence on the record before this Panel is insufficient to persuade this Panel that the Respondents were, or should have been, aware of the existence of the Complainant's mark prior to incorporation of the first Respondent and its engagement in business transactions. Furthermore, there is nothing in the evidence to suggest that these transactions involved any degree of mala fides. Therefore, it is not possible for this Panel to conclude that the Respondents' uses of the name “Caliburn Capital” prior to notice of the dispute were other than bona fide.
Accordingly, this Panel finds that, pursuant to paragraph 4(c)(i) of the Policy, the Respondents have demonstrated rights or legitimate interests in the disputed domain names.
Because of this Panel's finding on the issue of the Respondents' rights or legitimate interests in the disputed domain names, discussed above, it not necessary for the Panel to consider if the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Andrew F. Christie
Dated: May 11, 2010