WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Capital IQ, Inc. v. Zhao Ke
Case No. D2013-1543
1. The Parties
Complainant is Capital IQ, Inc. of New York, New York, United States of America, represented by Proskauer Rose, LLP, United States of America.
Respondent is Zhao Ke of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <capitaliq.org> is registered with PDR 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 September 3, 2013. On September 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on September 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2013. Respondent did not submit any response. Accordingly, the Center notified of Respondent’s default on September 30, 2013.
The Center appointed Francine Tan as the sole panelist in this matter on October 9, 2013. 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 a global business with offices in New York and other cities in the United States of America, London, Paris, Frankfurt, Milan, Moscow, Dubai, São Paulo, Stockholm, Sydney, Toronto, Tokyo, and Hong Kong, China. Complainant’s CAPITAL IQ mark has been in use in connection with providing financial research since 1999. Complainant currently provides such information to over 4,500 clients consisting of investment banks, investment management firms, private equity firms, universities, consultants, and corporations around the world.
Complainant is the owner of the following United States federal trademark registrations:
(i) CAPITAL IQ - U.S. Registration. No. 2,840,643 (Registered May 11, 2004) for “providing on-line retail store services featuring software applications in the field of financial-related data and company data over a global computer network; business consulting in the nature of providing merger and acquisition support services in the field of business; acquisition and merger consultation; financial services provided over a global computer network, namely, commercial and investment banking; private equity and venture capital funding; investment services, namely financial investment and investment consultation in the fields of funds, mutual funds, real estate, commodity, capital, securities, bonds, annuities, and private equity and venture capital financing, strategy, and management; financial consulting in the nature of providing merger and acquisition support services in the field of finance; providing an on-line electronic database over a global computer network in the field of financial information.”
(ii) CAPITAL IQ REAL-TIME – U.S. Registration No. 3,124,541 (Registered August 1, 2006) for “providing an online electronic database over a global computer network in the field of financial information.”
(iii) CAPITAL IQ REAL-TIME - Registration No. 3,403,392 (Registered March 25, 2008) for “computer software for accessing and manipulating data in a financial database, creating customized financial models, charts, analyses and reports based on a financial database; providing temporary use of online non-downloadable software for providing access to streaming quotes, news, charts and market views for use by the financial industry.”
Complainant also owns registrations for the mark CAPITAL IQ in Australia, the European Union, Hong Kong, China, Israel, Japan, Mexico, Norway, Philippines, Russian Federation, South Africa, Republic of Korea, Switzerland, Taiwan Province of China, and the United Arab Emirates. It has pending applications for the mark CAPITAL IQ in Brazil, Canada, China, India, and Singapore.
Complainant has the following pending Chinese trademark applications for the CAPITAL IQ mark:
(a) CAPITAL IQ, Application No. 8703152 (filed September 27, 2010) in class 9 for “computer software (recorded); computer programmes [programs], recorded; computer programs” [downloadable software]; downloadable electronic publications; computer databases”;
(b) CAPITAL IQ, Application No. 8703151 (filed September 27, 2010) in class 35 for “business consulting in the nature of providing merger and acquisition support services in the field of business; acquisition and merger consultation”;
(c) CAPITAL IQ, Application No. 8703150 (filed September 27, 2010) in class 36 for “private equity and venture capital funding / financing; capital investments; fund investments; banking; mortgage banking; savings banks; debt collection agencies; mutual funds; fiscal valuations; financial assessment [insurance, banking, real estate]; financing services; financial management; financing lease; financial analysis; check [cheque] verification; financial consultancy; financial information; financial sponsorship; business liquidation services [financial]; stocks and bonds brokerage; futures brokerage; real estate agencies; real estate brokerage; real estate appraisal; rental of offices [real estate]; guarantees; factoring; fiduciary”;
(d) CAPITAL IQ, App. No. 8703149 (filed September 27, 2010) in class 41 for “providing on-line electronic publications [not downloadable]”; and
(e) CAPITAL IQ in Chinese characters, App. No. 8735923 (filed October 13, 2010) in class 9 for “computer software (recorded); computer programmes [programs], recorded; computer programs [downloadable software]; downloadable electronic publications; computer databases.
The disputed domain name was registered on September 23, 2012.
Complainant submitted in evidence an exchange of emails in October, 2012 with Respondent wherein Complainant’s representative notified Respondent of Complainant’s business and Complainant’s rights in the trade mark CAPITAL IQ and requested the transfer of the disputed domain name upon payment of Respondent’s out-of-pocket expenses. Respondent sent a reply in which he claimed that the disputed domain name was registered for a “web project” which was “launched recently” and that if Complainant was interested in the disputed domain name, that it should make an offer and Respondent “may buy another domain if [the] offer exceed (sic.) [Respondent’s] expectation”. An offer of USD 500 was made on November 6, 2012 by Complainant’s representative to cover the expenses of registering the disputed domain name. There is no evidence of a further response from Respondent to the said offer.
5. Parties’ Contentions
Complainant asserts, firstly, that the disputed domain name is essentially identical to Complainant’s CAPITAL IQ mark in which it has rights. Further, its CAPITAL IQ is a very well-known trade mark and, as a mark that is used to identify sophisticated financial products, it is an obvious target for people who might believe they can make money off of its misappropriation. Respondent, who has given an address in China, had ample notice of Complainant’s applications for the CAPITAL IQ mark in that country, which were filed nearly two years before the disputed domain name was registered.
Secondly, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name is substantively identical to Complainant’s trade mark, CAPITAL IQ, which has been a strong and well-known trade mark for over a decade. Respondent has not been authorized by Complainant to use the mark CAPITAL IQ in the disputed domain name. Respondent is not and has not been commonly known by the disputed domain name.
Thirdly, Complainant asserts that the disputed domain name was registered and is being used in bad faith. On this point, Complainant states Respondent is maintaining an active web site under the disputed domain name. The website appears to provide a discussion forum not directed at any particular topic. The term “Capital IQ” appears in the disputed domain name and at the top of Respondent’s said home page, and nowhere else. It is apparent that Respondent selected the disputed domain name for its resemblance to Complainant’s CAPITAL IQ mark in order to draw traffic to its own site. Thus, it is evident that Respondent registered and is using the disputed domain name intentionally for commercial gain to attract Internet users to Respondent’s web site 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 web site or location or of a product or service on Respondent’s web site or location. Further, Complainant is extremely well known and famous. Because of this renown, Respondent can make no good faith use of the disputed domain name: “it is not possible to conceive of any plausible actual or contemplated active use of the [D]omain [N]ame by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” Telestra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant to show that the disputed domain name is identical or confusingly similar to a trade mark in which Complainant has rights.
Complainant has established that it has rights to the CAPITAL IQ trade mark. The disputed domain name incorporates the entire mark CAPITAL IQ and differs from the mark only by the additional gTLD “.org” therein. Previous panel decisions under the Policy have established the principle that “[t]he incorporation of an identical trade mark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark” (see Britannia Building Society v. Britania Fraud Prevention, WIPO Case No. D2001-0505; Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105). The Panel notes the claim made by Complainant that the CAPITAL IQ mark is very well known but is unable to and does not make a finding on this point as there is a lack of material evidence in the case file which supports this claim. In any case, a trade mark need not be well known in order for paragraph 4(a)(i) of the Policy to be satisfied.
The Panel accordingly finds that Complainant has shown that the disputed domain name is identical to a trade mark in which Complainant has rights. The first element of the Policy, paragraph 4(a), has been met.
B. Rights or Legitimate Interests
The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant did not authorize, license or permit Respondent to use the CAPITAL IQ mark in the disputed domain name. There is also no evidence that Respondent has been commonly known by the disputed domain name.
In the Panel’s view, Respondent did not, in his email response to the representative of Complainant, demonstrate his right or legitimate interest in respect of the disputed domain name. Respondent moreover failed to file a response when these proceedings under the Policy were instituted. Another opportunity presented itself for him to establish his rights or legitimate interests in respect of the disputed domain name but he failed to, and the Panel draws a negative inference from Respondent’s failure to respond.
In the absence of any evidence to persuade the Panel otherwise, the Panel finds that the second element of the Policy, paragraph 4(a), has been met.
C. Registered and Used in Bad Faith
On a review of the case file and on a preponderance of the evidence, while the Panel notes that the disputed domain name appears to be used as a discussion forum, the Panel finds the Respondent’s ulterior motive to be commercial in nature. Accordingly, the Panel finds that Respondent registered the disputed domain name for the purpose of attracting Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's CAPITAL IQ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site for commercial gain (paragraph 4(b)(iv) of the Policy). Further, the circumstances indicate that Respondent “registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name” (paragraph 4(b)(i) of the Policy). Both of these circumstances constitute evidence of registration and use of the disputed domain name in bad faith under the Policy.
The Panel therefore finds that the third element of the Policy, paragraph 4(a) has been met.
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 <capitaliq.org> be transferred to Complainant.
Date: October 23, 2013