WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Capitalmatch Pty Ltd v. Registrar Technician, BestRegistrar.Com
Case No. D2015-2165
1. The Parties
The Complainant is Capitalmatch Pty Ltd of Kew, Victoria, Australia, internally represented.
The Respondent is Registrar Technician, BestRegistrar.Com of Louisville, Kentucky, United States of America (“United States”), internally represented.
2. The Domain Name and Registrar
The disputed domain name <capitalmatch.com> is registered with Corehub S.R.L. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2015. On November 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 3, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 4, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 7, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2015. The Response due date was extended at the request of the Respondent to December 31, 2015, in accordance with paragraph 5(b) of the Rules. The Response was filed with the Center on December 31, 2015.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 11, 2016. 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
According to the Complainant it is an Australian-registered company that would appear, from the registration classes of its trademarks, to do business in the fields of, among others, online directories, advertising, data processing services, business management, advice and development, and a range of financial services.
The Complainant holds the following trademarks or applications:
CAPITALMATCH, styled CapitalMatch, IP Australia, registered July 2, 2010, registration number 1369995, class 35;
CAPITALMATCH, styled CapitalMatch and coloured, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) Intellectual Property Office, registered September 9, 2010, registration number 2558206, classes 35, 36;
CAPITALMATCH, styled CapitalMatch and coloured, United States Patent and Trademark Office, serial number 86455853 filed November 17, 2014, class 35;
CAPITALMATCH, styled Capitalmatch with design, Canadian Intellectual Property Office, application number 1704014, filed November 21, 2014, class 35.
According to the Respondent, it is a registrar of domain names. The disputed domain name is stated to have been registered and renewed by the Respondent on behalf of the office of the City of Louisville, Kentucky, and presently to be held by the Respondent pending the payment of certain dues or the receipt of other instructions from the City of Louisville.
According to the WhoIs, the disputed domain name was first registered on November 12, 2001.
5. Parties’ Contentions
The Complainant asserts rights in the trademarks listed in section 4 above and has produced copies of the relevant registration or application documents.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant says that the Respondent is not known by the disputed domain name, there is no evidence of the Respondent’s use of it or preparations to use it in connection with a bona fide offering of goods or services, and the Respondent has not used it for several years.
The Complainant contends that BestRegistrar’s claim to be an accredited registrar is incorrect. The Complainant has produced a brief report which references a letter of non-renewal from the Internet Corporation for Assigned Names and Numbers (“ICANN”) dated July 30, 2009 that the Complainant considers to be in support of this assertion. Communications with COREhub S.R.L. (an ICANN-accredited domain name registrar) state that BestRegistrar is a partner of COREhub and in charge of the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith.
The Complainant has produced a screen capture of an industry blog named “The Domains”, dated August 14, 2014, that expresses comment and opinions about a civil suit brought against the Respondent and individuals by another company, amidst allegations of “wrongful exercise of control over the 5,000 domain names” and alleged “ransom” demands for their transfer.
The Complainant contends that the Respondent is in the business of registering domain names for the purpose of selling them for a substantial profit. In support of this contention the Complainant has produced a screen capture of an article dated January 9, 2012, “The Race to Nab Web Addresses” in “The Wall Street Journal”.
The Complainant says the Respondent’s asking price for the disputed domain name on December 4, 2015 was USD 3,500.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent denies the Complaint.
The Respondent does not confirm or deny alleged confusing similarity between the disputed domain name and the Complainant’s trademarks.
The Respondent denies that it does not have rights or legitimate interests in respect of the disputed domain name. The Respondent says it is a member of CORE Council of Registrars, which has been an accredited ICANN registrar since 1988, and refers to “www.corenic.net” for verification.
The Respondent contends that the disputed domain name was one of a portfolio of domain names purchased by the City of Louisville in Louisville, Kentucky, United States, and registered through the Respondent. The Respondent says that despite its enquiries to the City of Louisville about renewal intentions, it is not clear whether certain renewal payments received have been intended to provide for the disputed domain name. The Respondent holds the disputed domain name for the customer pending the collection of money owed. There are no mal-intent, bad faith, or issues of competition or conflict with the Complainant involved.
The Respondent states that its commitment to its business customers is never to allow their domain names to expire without written or verbal instructions. The Respondent hoped that offering the disputed domain name to the Complainant “would motivate the City of Louisville to make their decision and get this matter resolved ...”. The Respondent says, later, that “this domain name was registered by one of our customers and is still considered their property”.
The Respondent says that, for reasons concerning a lawsuit (that is not in the Panel’s view directly relevant to the present Complaint), the Respondent’s portfolio of domain names “is now on hold for the court’s inspection and we are unable to release any domain names per our attorneys’ instructions”.
The Respondent contends that the disputed domain name was registered 14 years ago in 2001, whereas the Complainant’s trademark was registered less than five years ago, at which time the Complainant was aware of the unavailability of the disputed domain name.
The Respondent says that the disputed domain name is not in use for advertising or for profit. Because of outstanding expenses incurred in the holding of its portfolio including the disputed domain name, the asking price of USD 3,500 would not be expected to yield a profit. The disputed domain name is not involved in cybersquatting, is not competing with the Complainant and there is no confusion with the Complainant.
The Respondent denies the Complainant’s allegations of deception in claiming to be accredited by ICANN. It says that it changed from being independently accredited to working through CORE.
The Respondent denies the Complainant’s allegation of wrongful excise of control over domain names. It says the allegation emanates from a payment dispute that is before the court.
The Respondent denies that its guiding mind, Jeffrey Smith, is in the business of selling domain names for a substantial profit and says that the business Commercial Connect, LLC (with which he is connected), mentioned in the Wall Street Journal article cited above, has operated with zero income for the past 15 years in hopes of operating an eCommerce registry for the new “.shop” Top-Level Domain (“TLD”).
The Respondent asks for a finding of Reverse Domain Name Hijacking against the Complainant.
6. Discussion and Findings
A. Procedural Matters
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Respondent, with reference to paragraph 5(c)(vi) of the Rules, which requests details of any related legal proceedings, has cited Simon Properties v. CASDNS, Inc. et Al., US District Court, Western District of Kentucky, Case number 3:14-mc-99999. The Complainant has not made any citation under paragraph 3(b)(xi) of the Rules.
Paragraph 18(a) of the Rules states:
“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
Neither the Complainant nor the Respondent has made any submission in respect of the pending court proceedings and accordingly the Panel will proceed to a decision.
The Respondent has made several references to the ownership of the disputed domain name, including that it was “purchased by the City of Louisville”, and that it was “registered by one of our customers and is still considered their property”. Paragraph 1 of the Rules defines a respondent as “the holder of a domain-name registration against which a complaint is initiated”. According to the WhoIs information made available by the Registrar after the Complaint was filed, the Respondent is presently named as the registrant organisation and the administrative organisation. Furthermore, in an email dated December 4, 2015, the Respondent wrote to the Complainant: “The purchase price is $3,500 via credit card, wire or ACH – can transfer owner and Name Server same day – will take normal processing time to change registrars (1 to 7 days). You may use Escrow.com if you wish”. Thus the Respondent clearly considered itself to be the holder of the registration of the disputed domain name at that time so as to be in a position to dispose of it unconditionally at a moment’s notice. Accordingly the Panel will proceed on the basis that the Respondent is correctly identified.
B. Identical or Confusingly Similar
The Complainant’s trademark is CAPITALMATCH. The disputed domain name is <capitalmatch.com>, of which the TLD designation “.com” may be disregarded in the determination of confusing similarity. What remains is “capitalmatch”, which is effectively identical to the Complainant’s trademark. Paragraph 4(a)(i) of the Policy is expressed in the present tense, requiring that the Complainant “has” rights in a trademark or service mark. Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has asserted that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests by demonstrating, without limitation:
“(i) before any notice to you 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 (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 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”.
The circumstances exemplified in paragraph 4(c) of the Policy are illustrative, and rights or legitimate interests may be established by the Respondent in any other way satisfactory to the Panel.
The Complainant says that the Respondent is not known by the disputed domain name and there is no evidence of the Respondent’s use or preparations to use it in connection with a bona fide offering of goods or services. Furthermore, that the Respondent has not used the disputed domain name for several years.
In order to determine the question of rights or legitimate interests it is helpful to resolve the evidence as to the timeframe of ownership of the disputed domain name, which according to the WhoIs was first registered on November 12, 2001. In the exercise of its powers to undertake limited factual research into matters of public record (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.5), the Panel notes that the earliest capture by the Wayback Machine (“www.archive.org”) is dated earlier, on January 18, 2000. Captures between that date and October 1, 2000 inclusive show a website apparently operated by a loan company called CapitalMatch, an “affiliate of Horizons Interactive, LLC and the Interactive Money Store”.
From January 24, 2001 to February 1, 2001, captures showed a technical notice from TerraDelta Corporation, apparently a web hosting company. From March 22, 2002 to April 8, 2002, a box stated that the disputed domain name was registered at Namescout.com.
No further captures are displayed until 2014, however the WhoIs History produced by the Complainant shows the registrant name as from July 26, 2010 to be Greater Louisville Inc, and from March 19, 2013 to December 22, 2014 to be a Mr. T. Earwood, but throughout both periods the registrant organisation is Greater Louisville Inc., and the street address remains the same. The Panel is satisfied that, in the wording of WIPO Overview 2.0, there was “an unbroken chain of underlying ownership by a single entity” and not a change of registrant in that period.
On December 22, 2014, the WhoIs History shows a change of registrant details from Mr. Earwood to Registrar Technician on behalf of BestRegistrar.com with a different street address, postcode, telephone, email and other contact details.
The Respondent has stated plainly that the disputed domain name was “purchased by the City of Louisville”. The compelling conclusion from the evidence and the Respondent’s statements is that the City of Louisville was the beneficial owner of the disputed domain name from July 26, 2010 to December 22, 2014, or thereabouts (dates may be imprecise because on December 16, 2014 the disputed domain name already resolved to the interests of the Respondent according to the Wayback Machine, the captures of which are in any case sporadic). It may reasonably be deduced that the City of Louisville did not use the disputed domain name and chose not to renew it, whereupon it was acquired by the Respondent on a date the Panel will take to be the December 22, 2014 date reported by the WhoIs History.
The Wayback Machine capture of the disputed domain name on December 16, 2014 showed an advertisement by BestRegistrar.com offering customer services including the registration of any TLD and inviting enquiries from potential resellers of domain names. This represented a marked change of use or intended use of the disputed domain name from a purported potential Internet presence of the City of Louisville to a website of a registrar or dealer in domain names. The acquisition of the disputed domain name by the Respondent as a new owner, accompanied by a change of use, is found by the Panel to have constituted a new registration on or about the nominal date of December 22, 2014.
In the light of this chronology the matter of rights or legitimate interests may now be considered. The Complainant was first granted registration of the trademark CAPITALMATCH on July 2, 2010 in Australia and on September 9, 2010 in the United Kingdom, and the disputed domain name was registered by the Respondent more than four years later.
Paragraph 2 of the Policy, “Your Representations”, reads:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights”.
Furthermore the current Corehub registration agreement at paragraph 11 reads in part:
“f. You may not use Your domain for the following types of activity:
(vii) Infringing on the intellectual property rights of third parties”.
On the totality of the evidence the Panel finds on the balance of probabilities that the Respondent is not making a bona fide use of the disputed domain name in the terms of paragraph 4(c)(i) of the Policy because it has set out to receive Internet visitors to its own business on the basis of the trademark of the Complainant. The Respondent does not claim to be commonly known by the disputed domain name, the use of which is clearly not noncommercial (paragraphs 4(c)(ii) and 4(c)(iii) of the Policy). The Panel cannot conceive of any other way in which the Respondent may demonstrate rights or legitimate interests, in particular the Respondent cannot claim rights as a first-come, first-served registrant as it ought to have searched for the pre-existence of the Complainant’s trademark before acquiring the disputed domain name.
The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location”.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
The Respondent states that it is a registrar of domain names, directly or indirectly. The Respondent’s website as captured on December 16, 2014, located at the address of the disputed domain name, appeared to confirm this. The website offered a number of goods or services including domain name registration, with a facility to search for availability and a WhoIs lookup facility. Web hosting and email services were offered. Viewers were invited to become a reseller of domain names. The website appears to have since been taken down.
The Respondent’s offer to sell the disputed domain name for USD 3,500 was consistent with its stated business as portrayed on the website to which the disputed domain name resolved on December 16, 2014. The Respondent’s protestations that the disputed domain name was held “for the customer pending the collection of money owed”, “is still considered their property”, and “we are unable to release any domain names per our attorneys’ instructions”, are entirely negated by the clarity and immediacy of the Respondent’s offer to sell it for USD 3,500 on December 4, 2015. On the evidence the Panel finds, on the balance of probabilities, that the disputed domain name was acquired and held by the Respondent primarily to sell to the Complainant or a competitor of the Complainant at a profitable price, constituting registration and use in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
In the terms of paragraph 4(b)(iv) of the Policy, Internet users who sought the Complainant’s trademark CAPITALMATCH in a URL together with the TLD “.com” would have been led to the Respondent’s website, which clearly is commercial, constituting confusion in bad faith within the meaning of the Policy.
The Panel finds registration and use of the disputed domain name in bad faith and finds for the Complainant under paragraph 4(a)(iii) of the Policy.
Since the Complainant succeeds, it is not necessary to consider the allegation of Reverse Domain Name Hijacking.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <capitalmatch.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: January 18, 2016