WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fermat Capital Management LLC v. Mechir Macdonat / Moniker Privacy Services
Case No. D2011-2314
1. The Parties
Complainant is Fermat Capital Management LLC of Westport, Connecticut, United States of America, represented by Edwards Wildman Palmer LLP, United States of America.
Respondent is Mechir Macdonat of Park city, Alabama, United States of America / Moniker Privacy Services of Pompano Beach, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <fcm.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2011. On January 3, 2012, the Center transmitted by e-mail to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On January 4, 2012, Moniker Online Services, LLC transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on January 6, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 6, 2012.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on January 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 31, 2012.
The Center appointed Robert A. Badgley as the sole panelist in this matter on February 3, 2012. 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.
4. Factual Background
Complainant is an investment management firm which has operated under the name “Fermat Capital Management” and “FCM”. The record shows substantial use of the mark FERMAT CAPITAL MANAGEMENT by Complainant, but less extensive use of FCM as a mark.
In 2007, Complainant acquired the Domain Name and began using it as its main web address to market Complainant’s investment services. On December 23, 2011, Complainant’s technical contact for the Domain Name, M. Seo, received an e-mail purportedly sent from Complainant’s registrar company, GoDaddy.com, but in fact sent from a party unrelated to GoDaddy. The e-mail asked Seo to “log in and reactivate your account.” Seo did so, and unwittingly provided his contact information to Respondent, who is alleged to have “hacked” into Complainant’s GoDaddy account between December 23 and 25, 2011. Respondent then transferred the Domain Name to himself.
On December 26, 2011, Complainant’s customers began to complain that their e-mails to the FCM accounts were being returned as undeliverable. Complainant filed a police report and took other actions, including the initiation of this proceeding under the Policy.
Since its acquisition by Respondent, the Domain Name resolves to a website providing links inter alia to Complainant’s competitors.
5. Parties’ Contentions
Complainant’s main factual assertions are set forth in the previous section. Complainant maintains that it has fulfilled each of the three elements under the Policy, and seeks transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is some evidence in the record that Complainant has used FCM as a mark in commerce to identify and distinguish its investment services. The record also contains evidence that the media recognize FCM as an identifier for Complainant’s services. The Domain Name is identical to this service mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). See Louis De Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122. Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174, correctly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not effectively rebut any of Complainant’s assertions.
There is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services.
It has been alleged that Respondent acquired the Domain Name fraudulently through a “phishing” scam, and Respondent has not denied this. The allegation is plausible and unrebutted, and hence the Panel finds it as a fact in this proceeding.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Respondent is in “bad faith” under paragraph 4(b)(iv) of the Policy. Respondent’s bad faith registration is an inescapable conclusion here in view of the finding, noted above, that Respondent acquired the Domain Name through fraudulent means. Respondent’s bad faith use of the Domain Name is likewise clear on this record. By pointing the Domain Name to a website containing hyperlinks to inter alia the competitors of Complainant’s business, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion between Complainant’s mark and the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <fcm.com> be transferred to Complainant.
Robert A. Badgley
Dated: February 12, 2012