WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Capital IQ, Inc. v. Bincom ICT Solutions
Case No. D2012-0809
1. The Parties
The Complainant is Capital IQ, Inc. of New York, United States of America, represented by Proskauer Rose, LLP, United States of America.
The Respondent is Bincom ICT Solutions of Lagos, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <capital-iq.com> (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2012. On April 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 20, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar also informed the Center that the registration of the Domain Name was to expire on June 18, 2012. On April 23, 2012, the Respondent sent an email to the Center, in which it alleged that the Domain Name was registered by it on behalf of one of its clients, and that the Respondent had no intentions to renew the registration of the Domain Name. On April 24, 2012, both parties were invited by the Center to consider taking action for the renewal of the Domain Name. Neither of the parties responded to this invitation. Following a request by the Center to do so, the Complainant filed an amendment to the Complaint on April 26, 2012. to reflect the actual office of the Registrar for the purposes of mutual jurisdiction under Paragraph 3(b)(xiii) of the Rules.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on April 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on May 18, 2012. Following this notification, the Respondent sent a short message to the Center to inform that it did not intend to renew the registration of the Domain Name after June 18, 2012. Pursuant to the Complainant’s requests of May 22, 2012 and June 20, 2012, the proceedings were suspended for the period between May 22, 2012 and June 29, 2012. On June 19, 2012, the registration of the Domain Name was renewed by the Registrar until June 18, 2013. On June 29, 2012, following an unsuccessful attempt for a settlement of the dispute, the Complainant requested the Center to re-institute the proceedings. On June 30, 2012, the Respondent informed the Registrar that it cannot agree to the transfer the Domain Name to the Complainant without the consent of its client. The Respondent also stated its intention not to take any further actions for its defense in the proceeding and for the renewal of the Domain Name, and without going into details, denied the contentions of the Complainant. On July 2, 2012, the Center notified the parties of the re-institution of the proceedings.
The Center appointed Assen Alexiev as the sole panelist in this matter on July 4, 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
The Complainant is a global business with offices in New York, London, Paris, Milan, Frankfurt, Moscow, Dubai, Sao Paulo, Stockholm, Sydney, Toronto, Hong Kong and Tokyo. It has used the CAPITAL IQ trademark since 1999 for its financial research services. The Complainant provides services to over 4,500 clients, including investment banks, investment management firms, private equity firms, universities, consultants and various corporations.
The Complainant is the owner of the following trademark registrations (the “CAPITAL IQ” trademarks):
- The word mark CAPITAL IQ with registration number 2840643, registered in the United States on May 11, 2004 for services in International Classes 35 and 36;
- the Community word mark CAPITAL IQ with registration number CTM 009351214, registered on February 11, 2011 for goods and services in International Classes 9, 35, 36 and 42;
- the word trademark CAPITAL IQ with registration number 380898, registered in the Russian Federation on June 3, 2009 for services in International Classes 35 and 36;
- the word trademark CAPITAL IQ with registration number 1380550, registered in Australia on August 30, 2010 for goods and services in International Classes 9, 35, 36 and 42; and
- the word trademark CAPITAL IQ with registration number 5465192, registered in Japan on January 20, 2012 for goods and services in International Classes 9, 35, 36, 41 and 42.
The Domain Name was registered on June 18, 2009.
5. Parties’ Contentions
The Complainant has made the following submissions:
The Complainant states that the Domain Name is essentially identical to the Complainant’s CAPITAL IQ trademark. The Domain Name incorporates this trademark in its entirety, and there are no elements distinguishing the Domain Name from the trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, and is not commonly known by it. The Complainant has not authorized the use of its trademark in the Domain Name. According to the Complainant, its trademark is renowned in connection to sophisticated financial products and as such is a target for opportunistic attempts at making money from it.
In the Complainant’s submission, the Domain Name was registered and is being used in bad faith.
The website at the Domain Name is under construction, and the Respondent is not actively using it, but is rather aiming at extracting a profit from the Complainant’s trademark by selling the Domain Name to the Complainant or to a third party. After offering to pay the Respondent’s out-of-pocket expenses in exchange of the transfer of the Domain Name, the Complainant received as response the question “How much are you offering?” According to the Complainant, this response represents an attempt to solicit an offer larger than the out-of-pockets expenses related to the Domain Name and shows that the intention behind the registration of the Domain Name is its sale, rent or transfer for an amount in excess of its registration costs. Lastly, the Complainant asserts that it is not possible to imagine a legitimate good faith use of the Domain Name, it being identical to the Complainant’s trademark.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the Domain Names:
(i) That the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) That the Respondent has registered and is using the Domain Names in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
In this administrative proceeding, the Respondent chose not to submit a formal Response. This conduct of the Respondent leads the Panel to conclude that it has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to make his decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the CAPITAL IQ trademark, registered for the territories of United States.
It is a common practice under the Policy to disregard the gTLDs such as the “.com” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is its “capital-iq” section. The only difference between this element and the Complainant’s CAPITAL IQ trademark is the inclusion of the hyphen in the middle of the “capital-iq” element of the Domain Name. Rather than distinguishing the Domain Name from the Complainant’s trademark, this hyphen visually separates the parts “capital” and “iq” and thus increases the chances to regard it as identical to the Complainant’s CAPITAL IQ trademark, where its parts “CAPITAL” and “IQ” are separated as well.
For this reason, the Panel finds that the Domain Name is identical to the CAPITAL IQ trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name, and provides certain arguments and evidence in this regard. Thus, the Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.
In the present case, the Respondent has chosen not to present to the Panel any allegations or documents in their defense despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix), or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any justification for registering or using the Domain Name, it could have provided it. In particular, the Respondent has not contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in its favor. The only factual allegations made by the Respondent in its email to the Complainant of May 14, 2010 and its emails to the Center dated April 23, 2012 and dated June 30, 2012, was that the Domain Name was registered and controlled by it on behalf of one of its clients, allegedly a Nigerian entity with the name Capital-IQ, and that this entity had rights in the Domain Name. However, the Respondent provides no details or evidence about the existence and identity of its client and about the contractual relations between them. If such a client existed and it was a client of the Respondent, this could have easily been proven with evidence one would expect to be easily available to the Respondent. As the Respondent has not provided such evidence and its allegations remain unproven, the Panel is prepared to regard the Respondent as the party in actual control of the Domain Name and as the party whose actions need to be analyzed for the purposes of the present proceeding.
The WhoIs information about the Respondent provided by the Registrar does not contain any evidence of rights or legitimate interests of the Respondent in respect of the Domain Name.
At the same time, the Domain Name is identical to the CAPITAL IQ trademark of the Complainant. The Respondent does not deny the contentions of the Complainant, does not claim rights or legitimate interests in respect of this Domain Name, and does not provide any explanation whatsoever for its registration and use other than its unproven allegation for having registered it on behalf of a third party. At the same time, as alleged by the Complainant, the Respondent was interested in receiving a monetary offer for the transfer of the Domain Name. This allegation is supported by a copy of the actual exchange of emails between the Parties, where the Panel finds no signs of misquotation of the Respondent by the Complainant.
In the lack of any evidence or allegations to the contrary, the above satisfies the Panel that it is more likely than not that the Respondent was aware of the goodwill of the Complainant and of the CAPITAL IQ trademark, and that this goodwill has motivated the Respondent to choose to register the Domain Name and to link it to a website under construction in expectation of an offer from a party that may be interested in acquiring the Domain Name.
In the Panel’s view, such conduct could not be regarded as giving rise to rights and legitimate interests of the Respondent in the Domain Name. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name within the meaning of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For the purposes of Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
In the present case, the Domain Name is identical to the Complainant’s CAPITAL IQ trademark, and was registered by the Respondent without having rights and legitimate interests in it, while at the same time more likely than not being aware of the Complainant and of its goodwill. Having registered it, the Respondent has used the Domain Name to link it to a website under construction, and has shown its interest in receiving a financial offer from the Complainant for the transfer of the Domain Name. The Complainant’s offer for the transfer of the Domain Name against the payment of the Respondent’s out of pocket expenses incurred in registering the Domain Name clearly specified the amount offered by the Complainant. The Respondent’s response “How much are you offering?” is an indication that the Respondent was not willing to use its actual expenses as basis for the negotiations, which makes it more likely than not that it was expecting a higher offer.
Taking all the above into account, and in the lack of any contrary evidence or even allegation of any actual or contemplated good faith use of the Domain Name, the Panel is prepared to accept that the Respondent has registered and used this Domain Name in bad faith primarily for the purpose of selling, renting, or otherwise transferring the its registration to the Complainant or to a third party for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name.
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 <capital-iq.com> be transferred to the Complainant.
Dated: July 18, 2012