WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Información, Control y Planificación, S.A. v. JA Powell, BD Stansky, CA Morris Jt Tnts
Case No. D2016-2005
1. The Parties
The Complainant is Información, Control y Planificación, S.A. of Madrid, Spain, represented by EMME & PI, Spain.
The Respondent is JA Powell, BD Stansky, CA Morris Jt Tnts of Menlo Park, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <icp.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2016. On October 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2016, 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 received email communications by the Respondent on October 6 and 8, 2016 to which the Center acknowledged receipt on October 7 and 10, 2016 informing the Parties that the Center was verifying that the Complaint filed satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) and once verified the Respondent would be formally notified of the Complaint and the commencement of the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the 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 October 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2016. The Response was filed with the Center on October 26, 2016. The Respondent confirmed that the Response filed shall be regarded as the complete Response on October 28, 2016.
The Center appointed Clive N.A. Trotman, Edoardo Fano and Bradley A. Slutsky as panelists in this matter on November 16, 2016. The Panel finds that it was properly constituted. Each member of 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.
The Complainant sent an email in the nature of a Supplemental Communication with annexes dated October 21, 2016 to the Center, which forwarded it to the Panel with the case file.
4. Factual Background
Background information about the Complainant is taken from the Complaint.
The Complainant, founded in 1995, is a provider of logistical services between businesses and other businesses or customers in sectors including automotive, telecommunications, pharmaceutical, textiles, cosmetics and others. The Complainant does business in many parts of Europe.
The Complainant holds the trademarks:
- ICP LOGISTICA, stylised, yellow, light blue and dark blue, European Union Trademark (EUTM), registered October 22, 2010, registration number 8957045, classes 35, 39, 42;
- ICP, stylised, yellow and dark blue, EUTM, registered July 25, 2015, registration number 13703293, classes 9, 35, 37, 39, 42.
Background information about the Respondent is taken from the Response.
Integral Capital Partners is an investment company founded in 1991. The Respondent comprises three persons as joint tenants who have been associated with Integral Capital Partners for some years: JA Powell, a co-founder, since 1991; and BD Stansky and CA Morris since 2002. The scale of Integral Capital Partners is that it has managed billions of dollars across eight investment partnerships, and promoted a USD 300,000,000 private placement prospectus in 2007. The disputed domain name was originally registered on March 19, 1998.
5. Parties’ Contentions
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’s name is “Información Control y Planificación, S.A.” and the acronym ICP is its registered trademark in the appropriate fields.
The Complainant says its trademark is well-known. Companies within its group include “ICP Technological Solutions, S.L.”, “ICP Inversiones” or “Ingeniería Construcción y Planificación de Inversiones, S.L.”, “ICP Logistica Portugal, LDA”, “ICP Limited” or “Information Control And Planning Limited”, and “Informazione, Controllo e Pianificazione, SRL”. Group annual turnover has been around EUR 60,000,000. The Complainant has been ranked highly in the “White Book of the Logistics Operators in Spain” in 2013 and 2014.
The Complainant has made other detailed contentions with respect to its renown including its international quality and safety certifications, participation in trade fairs, and its presence on the main social networks, all with supporting evidence.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been authorised to use the Complainant’s trademarks or to incorporate them in any domain name.
The Complainant says that in the terms of paragraph 4(c) of the Policy, the disputed domain name is held passively and there is no evidence that the Respondent has used it or has made demonstrable preparations to use it in connection with a bona fide offering of goods or services. The disputed domain name resolves to a website bearing symbols and messages such as “He’s Gone”, “Game Over” and “We have all departed down the Golden Road”.
The Complainant says searches have failed to find any trademark for ICP in the name of the Respondent, which therefore is not commonly known by the disputed domain name but as JA Powell, BD Stansky, CA Morris Jt Tnts.
The Complainant says the Respondent is not making a legitimate, fair or noncommercial use of the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. According to “www.domainhistory.net”, the Respondent was not named as JA Powell, BD Stansky, CA Morris Jt Tnts on October 30, 2013 or November 5, 2013, and therefore the date of registration of the disputed domain name under the present Respondent was later than November 5, 2013, at which time the Complainant’s trademark was registered and very well-known in the logistics sector.
The Complainant submits that the disputed domain name was acquired by the Respondent primarily for the purpose of profitable sale or rent to the Complainant or a competitor of the Complainant. Emails between the representative of the Complainant and the Respondent show that an offer to buy the disputed domain name was met with a reply asking for USD 1 million, without justification, and that the Complainant’s offer to buy it for USD 1,500 was rejected.
The Complainant says that according to precedent, passive holding of the disputed domain name, with no conceivable legitimate use by the Respondent, is evidence of bad faith.
In an email to the Center dated October 21, 2016, in the nature of a Supplemental Communication with annexes, the Complainant reiterated and updated aspects of its Complaint and raised a technical matter.
The Complainant has cited previous decisions under the Policy that it considers may be supportive of its case.
The Complainant requests the transfer of the disputed domain name.
The Respondent denies the Complaint.
The Respondent denies that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks, apart from sharing the same letters, partly because the Complainant’s trademarks have unique colouring, descriptive subtext, artwork, and design elements. The Respondent denies that the acronym ICP is unquestionably associated with the Complainant as many companies and entities use the same initials, and submits that the bar for such an association with a three letter acronym is much higher, comparable with “IBM”. The Complainant does not feature in the first ten pages of a simple United States Google search for “ICP”.
The Respondent further contends that it does have rights or legitimate interests in respect of the disputed domain name. Integral Capital Partners was founded in 1991, six years prior to the Complainant, and since 2002 has comprised JA Powell, BD Stansky and CA Morris individually and collectively.
The Respondent says it is a major entity of some 25 years standing that has handled billions of dollars. Annexed in evidence are the document “ICP Organizational Structure” and the document “ICP VIII Private Placement Memorandum”, which evidence the relationship between the Respondents, Integral Capital Management, and Integral Capital Partners.
The Respondent has used the Wayback Machine (“www.archive.org”) to retrieve some pages to which the disputed domain name has resolved in the past, showing the relationship between the individuals of the Respondent and Integral Capital Partners. The Respondent says the display of messages on its website that the Complainant found through the Wayback Machine, such as ‘Dead Skull – “He’s Gone”’, were playful, and if on other dates the Complainant had followed the tabs to “Our Team”, they would have seen explained the relationship between the Respondent and Integral Capital partners.
The Respondent says the registrant of the disputed domain name in 2001 was originally Integral Capital Management, LLC, which is an LLC of Integral Capital Partners. The registration was modified to the present Respondent in 2013.
The Respondent says it has used the disputed domain name over a period of 15 years. It has been used as a marketing site for prospective investors in its ICP partnerships, as a disclosure site for existing investors, and for management purposes. The disputed domain name has been used for the Respondent’s Office 365 Enterprise application accounts and has been used extensively for the various Respondent email accounts.
The Respondent contends that it is making a legitimate fair use of the domain name, without intent for commercial gain to mislead Internet users or to tarnish the Complainant’s trademarks.
The Respondent further contends that the disputed domain name has not been registered or used in bad faith. The disputed domain name was acquired in 2001, not 2013, and the Respondent could not have intended to infringe Complainant’s rights that were non-existent at that time. The modified registration in 2013 did not constitute a new registration.
The Respondent denies it acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring to the Complainant or a competitor for profit. The Respondent says it received fourteen unsolicited emails from September 2012 to July 2016 inquiring about purchasing the disputed domain name and replied variously “no” or in the tone of its reply to the Complainant. If it were to sell the disputed domain name, the Respondent would need a new website and would have to tell all its investors, regulatory authorities, other businesses, and change its email addresses, incurring high costs and inconvenience.
The Respondent says it has never sought to register any derivatives of the disputed domain name including in any other Top-Level Domain. The Respondent’s business does not overlap with that of the Complainant. The Respondent has never engaged in search engine optimisation or attempted to attract Internet users or those seeking international logistics services to its website.
The Respondent has cited previous decisions under the Policy that it considers may be supportive of its position.
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.
Paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from either of the Parties. The Complainant’s email to the Center dated October 10, 2016 was forwarded to the Panel as an unsolicited Supplemental Communication. In the circumstances, the Panel has noted its contents as reiterating that the disputed domain name led to a website displaying senseless messages as stated previously, with three annexed screen captures, one of which was new and had been recorded by the Wayback Machine on October 2, 2016. The Supplemental Communication also annexed a screen capture of the website to which the disputed domain name resolved on October 17, 2016, displaying a statement about the Respondent’s business, and raised a technical question about the locking of disputed domain names that is outside the scope of this Decision. The Panel notes here that the “lock” applied during a UDRP dispute does not prevent changes to website content. In the circumstances, the Panel did not consider it necessary to offer a right of reply to the Respondent.
B. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant has rights in the trademark ICP and that the disputed domain name, disregarding the generic Top-Level Domain “.com”, is identical to the trademark in the terms of paragraph 4(a)(i) of the Policy.
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 has no rights or legitimate interests in respect of the disputed domain name and has not been authorised to use the Complainant’s trademarks.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name 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.”
Notwithstanding the provisions of paragraph 4(c) of the Policy, the onus of proof rests with the Complainant to show that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Respondent asserts in effect that its use of the disputed domain name has been in connection with a bona fide business as contemplated by paragraph 4(c)(i) of the Policy. In order to succeed in this claim, the Respondent must show that its interest in the disputed domain name is otherwise legitimate. The Complainant says the Respondent’s interest is not legitimate because the disputed domain name was first registered in the name of the Respondent on a date later than November 7, 2013, at which time the Complainant’s trademark ICP LOGISTICA was well-known, having been granted registration on October 22, 2010. In evidence, the Complainant has produced a result from “www.domainhistory.net” showing that on October 30, 2013 and November 5, 2013, the registrant was named as Integral Capital Management, LLC, whereas on March 21, 2016, the registrant was named as the present Respondent.
The Respondent has countered with evidence intended to demonstrate its use of the disputed domain name back to 2001, including pages and sub-pages of its website captured by the Wayback Machine. Because the dates of capture by the Wayback Machine were unclear in the copies produced, they were verified by the Panel in accordance with its powers to consult matters of public record (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5). One capture, current on November 7, 2001, displayed the name Integral Capital Partners with some artistic design and some financial news. Another, being the sub-page “www.icp.com/aboutus/team.php3” current on December 1, 2001, showed named photographs of “Our Team” including John Powell, Brian Stansky and Chip Morris. The sub-page “www.icp.com/investmentteam.html” current on October 28, 2011, showed names, photographs and positions of four team members including John Powell, Brian Stansky and Charles Morris.
Other evidence of usage produced by the Respondent refers to the recent past. It includes evidence of use of the disputed domain name for substantial email activity amounting to 52,889 emails received, 10,828 read, and 2,275 sent, in a period of 180 days prior to October 18, 2016
As to the substance of the Respondent’s business, the Respondent has produced a document in the nature of a prospectus, headed “Confidential Private Placement Memorandum Integral Capital Partners VIII, L.P.” This is a substantial document running, after the cover, summary pages and table of contents, to some 52 pages of detailed proposition and disclosure, followed by four appendices occupying another 43 pages. The document, whilst not specifically dated, pertains to the 2007 capital raising of some hundreds of millions of dollars and in disclosure sets out considerable detail of the performance of the previous funds named Integral I through Integral VII. Chapter VI provides biographical details of the six Managing Directors, including John Powell, Brian Stansky and Charles Morris. It would be unrealistic to treat this document as other than original and genuine.
The Respondent has also presented a chart to clarify the relationships of a succession of Investment Partnerships named Integral Capital Partners of which the first was launched in 1991, followed by Integral Capital Partners II launched in 1994, leading up to Integral Capital Partners VIII launched in 2007. Each is controlled by a General Partner of the Partnerships, named successively Integral Capital Management (number I, in effect) through Integral Capital Management VIII. All of these are shown controlled by the Management Company, named ICP Management, LLC, having Managing Directors John A Powell, Brian D Stansky and Charles A “Chip” Morris (i.e., collectively, the Respondent).
As discussed in WIPO Overview 2.0, at paragraph 3.7, in part: “Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.” The Panel finds it to be clear from the evidence that at least as early as December 1, 2001, the disputed domain name was in use in connection with the business of Integral Capital Partners. The presently named Respondent comprises Managing Directors of Integral Capital Partners who were Managing Directors of the same entity at least as early as December 1, 2001, according to the website published at that time. The Panel finds there has been an “unbroken chain of underlying ownership by a single entity or within a genuine conglomerate” between December 1, 2001 and now. That entity or conglomerate is Integral Capital Partners, which was using the registrant name Integral Capital Management, LLC in October and November 2013, and more recently, the presently named Respondent, of the same physical address throughout.
The Panel also finds the Respondent’s business to be of considerable substance and that the use of the disputed domain name, for website and in particular email purposes, has been in connection with a bona fide offering of services. Accordingly the Panel finds for the Respondent in the terms of paragraphs 4(c)(i) and 4(a)(ii) of the Policy.
It is not necessary to consider bad faith, however the Panel will do so briefly for completeness.
D. Registered and Used in Bad Faith
The question of whether bad faith can be found where the disputed domain name registration predates the relevant trademark registration is discussed in WIPO Overview 2.0 at paragraph 3.1, where the consensus view is expressed as follows: “Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [...], when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right”. Exceptions are recognised where a respondent may have had some privileged knowledge or expectation about the creation of a particular trademark.
The Complainant filed its application for the trademark ICP LOGISTICA on March 16, 2010. There is no evidence that the Respondent could have anticipated this in 2001 and the Panel does not find registration of the disputed domain name in bad faith.
In terms of paragraph 4(b) of the Policy there is no evidence that the Respondent’s primary purpose of use in registering the disputed domain name has been to sell it, or to block the Complainant from registering it, or to disrupt the Complainant’s business, or to attract Internet users by confusion.
For the foregoing reasons, the Complaint is denied.
Clive N.A. Trotman
Bradley A. Slutsky
Date: November 28, 2016