WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aspect Capital Limited v. Fluder (aka Pierre Fluder)
Case No. D2015-0475
1. The Parties
The Complainant is Aspect Capital Limited of London, United Kingdom of Great Britain and Northern Ireland ("U.K."), represented by Adlex Solicitors, U.K.
The Respondent is Fluder (aka Pierre Fluder) of Bourgoin, France.
2. The Domain Name and Registrar
The disputed domain name <aspect.capital> (the "Domain Name") is registered with Dynadot, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 18, 2015. On March 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 18, 2015, 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 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 Respondent of the Complaint, and the proceedings commenced on March 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2015. The Response was filed with the Center on March 23, 2015.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on April 1, 2015. 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 following facts are undisputed.
The Complainant, Aspect Capital Limited, is a company that is in the business of investment management under the names "Aspect" and "Aspect Capital" with offices in the U.K., United States of America and Hong Kong, China. The Complainant operates its main website at "www.aspectcapital.com".
The Complainant owns an international portfolio of registered trademarks for ASPECT and ASPECT CAPITAL (hereinafter together also referred to as the "Trademarks"), including Community Trade Marks and national trademarks in various countries in the world. The Trademarks are registered for services in class 36.
The Domain Name was registered on September 26, 2014.
5. Parties' Contentions
A. The Complainant
Insofar as relevant, the Complainant contends the following.
The Complainant relies on its registered trademarks ASPECT and ASPECT CAPITAL. The Complainant contends that the Domain Name is identical to the trademark ASPECT if one disregards the .capital domain suffix. Or, if one takes account of the suffix, the Domain Name is confusingly similar to the trademark ASPECT, which dominates, and is easily recognizable within the Domain Name.
In case of the trademark ASPECT CAPITAL, it is clearly appropriate to take the suffix into account in accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") given that the ".capital" suffix actually forms part of the trademark.
In any event, even if one disregards the .capital suffix, the Domain Name would, nonetheless, be confusingly similar to the trademark "ASPECT CAPITAL" as the Domain Name comprises the dominant term within the trademark, omitting only the supplementary descriptive term "capital".
The Complainant has no association with the Respondent and has never authorized or licensed the Respondent to use its Trademarks. Furthermore, the Complainant contends that there is no bona fide offering of goods of services and the Respondent was out for commercial gain, as the Respondent has offered the Domain Name for sale to the Complainant immediately following registration of the Domain Name.
There is no evidence that the Respondent has been commonly known by the name comprised in the Domain Name.
Furthermore, the Respondent intended, inter alia, to prevent the Complainant from reflecting its Trademarks in the Domain Name. The Respondent was clearly aware of the Complainant and its business when he registered the Domain Name. Not only does the Respondent fail to deny this in his various communications, his knowledge is obvious from the fact of his dispatch of the letter to the Complainant the day after registration of the Domain Name.
The Respondent must also have known that the Complainant was likely to have wanted to acquire the Domain Name for itself. In the letter of September 27, 2014 to the Complainant the Respondent states: "Descriptive, Aspect.Capital is an exact match and eliminates unnecessary words or characters. It tells visitors exactly what to expect when they visit the website."
Finally, the Respondent has engaged in a pattern of such conduct, as he has registered and used domain names in bad faith in Fifth Street Capital LLC v. Fluder (aka Pierre Olivier Fluder), WIPO Case No. D2014-1747, as well as in Première Vision contre Pierre-Olivier Fluder, WIPO Case No. D2014-2036.
B. The Respondent
Insofar as relevant, the Respondent contends the following.
The Respondent contends that panels do not traditionally consider the generic Top-Level Domain ("gTLD") as part of what makes a domain name similar to a trademark to which the Complainant has rights. The Respondent further contends that the Panel should only take into account the word between the dots, namely "aspect". In that respect, the Respondent refers to the rules of ICANN, to a decision of the ISNIC committee and the USPTO Examination Guide.
The Respondent's business is to register and resell domain names that incorporate generic dictionary words and the gTLD ".capital". The Domain Name plainly consists of two generic words, namely "aspect" and "capital". The Complainant does not have an exclusive monopoly on the use of these words on the Internet and also does not hold the exclusive rights for the words "aspect" and "capital".
As a generic domain name seller, the Respondent offering to sell the Domain Name does not demonstrate the Respondent's lack of rights or legitimate interests in the Domain Name. The Domain Name was registered for its generic meaning, and would not necessarily be associated with the any party having objections.
The Domain Name is comprised of generic, descriptive terms. Such terms are legitimately subject to registration as domain names on a "first come, first served" basis. The Complainant does not have a monopoly on the words "aspect" and "capital". Everyone is free to register a domain name consisting of common terms.
The Respondent did not register the Domain Name with the Complainant's Trademarks in mind and as a generic domain name reseller, the offer to sell the Domain Name is insufficient to demonstrate bad faith registration.
The Complainant has not demonstrated bad faith, because the Domain Name consists of two generic terms. The Respondent registered the Domain Name because the Respondent has good faith that the Domain Name's value derives from its generic or descriptive qualities. The Respondent contends that the Domain Name is not used to target the types of products sold by any specific trademark owner.
The Panel should conclude that the Respondent's registration of the Domain Name was intended for use in connection with the generic meaning of the Domain Name and could not have been intended to trade-off the Complainant's trademark rights.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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
The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the two trademarks identified above, namely ASPECT and ASPECT CAPITAL.
The Domain Name is identical to the trademark ASPECT, disregarding the gTLD ".capital" as is the usual practice under the Policy. See Bennett Coleman & Co Ltd v. Steven S Lalwani and Bennett Coleman & Co. Ltd v. Long Distance Telephone Company Long Distance Telephone Company, WIPO Case No. D2000-0014 and WIPO Case No. D2000-0015 and, for the gTLD component, Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252 (both in respect of ".com").
The Panel also finds that the Domain Name considered as a whole is virtually identical to the trademark ASPECT CAPITAL – the differences being (1) the addition of the "dot" to signify the gTLD ".capital" and (2) the omission of the spaces between the words. While (as already noted) it is usual practice to disregard the gTLD component as a functional aspect of the domain name system, in this case the combination of the gTLD with the word "aspect" naturally suggests the Complainant's second trademark. One may argue that the addition of the "dot" to indicate the gTLD component is more significant that the omission of the spaces but, in the present context, it is largely as insignificant as other elements of punctuation such as spaces and hyphens.
Moreover the Panel also takes into account that Internet users considering the Domain Name without awareness of its content may believe that the Domain Name is in some way connected and associated with the Complainant (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004-0988).
For the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Complainant states that there is no connection between the Respondent and the Complainant. The Domain Name is plainly not derived from the Respondent's name. From the available record, the Respondent does not hold any trademarks for the Domain Name. The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that "Aspect Capital" is one of the Respondent's names or that the Respondent is commonly known as "Aspect Capital".
The Respondent does not dispute these matters. Instead, he relies on the nature of his business and the descriptive or generic nature of the terms in the Domain name. As already noted, he says he is a reseller of domain names which consist of generic terms and that is perfectly legitimate under the Policy. As the Respondent states:
"There's nothing wrong with buying a generic term domain name for speculation purposes. Indeed, my domain names are not used to target the types of products sold by any specific trademark holder."
It is certainly true that it is permissible under the Policy to register generic terms and exploit them for their value as generic terms. However, it is not permissible to register a "generic" term as a domain name and exploit it for the value it has as a trademark where it is someone's trademark. The registration and use must flow from the generic nature of the term, not the term's significance as a trademark. Fifth Street Capital LLC v. Fluder (aka Pierre Olivier Fluder),
WIPO Case No. D2014-1747.
It appears that there are no restrictions on who may register a domain name in the ".capital" gTLD in the sense that an applicant does not need to show it has a right to register such a domain name. It is nonetheless very difficult, if not impossible, for the Respondent to maintain that the Domain Name was not registered to target the Complainant, as the Respondent has offered the Domain Name for sale to the Complainant immediately following registration of the Domain Name.
Insofar as relevant, the Respondent also invokes a number of UDRP panel decisions accepting the general proposition that a generic term may be registered legitimately under the Policy by a reseller on a "first come, first serve" basis. Examples include decisions relating to domain names such as <insurance.pro>, <elephant.com>, <liveone.com> and <socialpoint.com>.
The last mentioned decision, Social Point, S.L. v. 3745854 Domain Manager / Moniker Online Services, LLC, WIPO Case No. D2013-2082, provides a useful illustration of the problems with the Respondent's argument.
First, Social Point S.L.'s trademark was for the words "social point" in a device, not the words alone. Secondly, the learned panel noted that:
"[…] where a respondent has registered a domain name consisting of a dictionary term because it has a good faith belief that the domain name's value derives from its generic qualities, that may establish a legitimate interest". [emphasis supplied)
That statement acknowledges that the proposition is not absolute. It is necessary to consider the facts of the specific case. The learned panel referred to a number of considerations that had been identified in Zerospam Security Inc. v. Internet Retail Billing, Inc., Host Master, WIPO Case No. D2009-1276 as potentially relevant to whether or not a legitimate interest was established:
"[…] (i) the respondent regularly engages in the business of registering and reselling domain names and/or using them to display advertising links; (ii) the respondent makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others; (iii) the domain name in question is a 'dictionary word' or a generic or descriptive phrase; (iv) the domain name is not identical or confusingly similar to a famous or distinctive trademark; and (v) there is no evidence that the respondent had actual knowledge of the complainant's mark."
Key considerations in the Social Point case, above, were that the respondent had a long established business of registering domain names based on the term "social" and had in fact registered the relevant domain names seven years before the complainant had obtained its trademark. There is no evidence of the first consideration in this case and the second plainly does not apply. Similar points can be made about the other decisions invoked by the Respondent.
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the Domain Name has been both registered and used in bad faith by the Respondent.
In the present case, also in absence of rights or legitimate interests in the Domain Name, the unsolicited offering of the Domain Name to the Complainant the day after the Respondent registered the Domain Name is in the Panel's view sufficient to constitute both registration and use in bad faith. As follows from the letter sent by the Respondent to the Complainant, the Respondent was clearly aware of the Complainant and its business when he registered the Domain Name and when he offered it for sale at the Respondent's initiative. From the evidence, it seems clear to the Panel that the Respondent intended to inappropriately benefit from the Domain Name.
The Panel therefore finds that the Complainant has also established the third requirement under the Policy.
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, <aspect.capital>, be transferred to the Complainant.
Willem J. H. Leppink
Date: April 14, 2015