WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Social Capital Markets LLC v. Domains By Proxy, LLC / victor gill
Case No. D2018-1896
1. The Parties
The Complainant is Social Capital Markets LLC of Princeton, New Jersey, United States of America (“United States”), represented by Stark & Stark, P.C., United States.
The Respondent is Domains By Proxy, LLC of Phoenix, Arizona, United States / victor gill of Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <socap2018.org> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2018. On August 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2018, 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 August 29, 2018, 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 amended Complaint on August 31, 2018.
The Center verified that the Complaint together with the amended 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 September 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2018.
The Center appointed Andrew F. Christie as the sole panelist in this matter on October 12, 2018. 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.
On October 23, 2018, the Panel issued Administrative Panel Procedural Order No. 1, requesting the Complainant to file evidence: (i) establishing the assertion made in the Complaint that the Complainant “has acquired common law trademark rights in the SOCAP name”; and (ii) supporting the presumption stated in the Complaint that “Respondent collects money from consumers but does not actually provide any of the promised goods and services”. The Respondent was invited to respond to any evidence provided by the Complainant pursuant to Administrative Panel Procedural Order No. 1. Neither the Complainant nor the Respondent filed material in response to Administrative Panel Procedural Order No. 1.
4. Factual Background
The Complainant is a Delaware corporation and is a wholly-owned subsidiary of International Media LLC. It organizes, manages, and holds multiple conferences each year, including its flagship event on social capital markets which goes under the name “SOCAP” and is held each autumn in San Francisco. That event attracts impact investors, entrepreneurs and practitioners from around the world, and has had more than 20,000 participants since its founding in 2008. The 2018 event, titled “SOCAP18”, ran from October 23-26, 2018.
The Complainant asserts that it is the owner of two trademark registrations on the United States Patent and Trademark Office (USPTO) Supplemental Register for the word service mark SOCIAL CAPITAL MARKETS (Registration Nos 4370214 and 4370215, both registered on July 16, 2013). The Supplemental Register records that the owner of these registrations is Mission Hub, LLC. The Complainant provided a copy of an “Asset Contribution Agreement” between Mission Hub, LLC and the Complainant, stated to be made on an unspecified day in March 2017, in which all rights in two unspecified “U.S registered trademarks related to the mark ‘Social Capital Markets’” were stated to be transferred to the Complainant. The Complainant maintains a website at “www.socialcapitalmarkets.net” where interested participants can learn more about, and register for, its SOCAP event.
The disputed domain name was registered on July 6, 2018. It resolves to a website purporting to provide information about the “SOCAP 2018” conference, to sell accommodation for attendees at the conference, and to accept registrations for the event. At the bottom of the home page of the website is a disclaimer which states: “We are not official society and neither associated with SOCAP 2018. We provide information independently related to the event and accommodation to the participant. For More Information Visit SOCAP 2018 Official Website. Click Here (https://socialcapitalmarkets.net/)”. The link takes the Internet user to the Complainant’s official website for SOCAP18.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical and/or confusingly similar to a trademark in which the Complainant has rights because: (i) the Complainant has used the SOCAP and SOCIAL CAPITAL MARKETS marks since at least 2008, and the SOCAP18 mark since at least October 2017, and that these are used in conjunction with the marketing, advertising, and promotion of SOCAP conference events, including SOCAP18; (ii) the disputed domain name is identical and/or confusingly similar to the marks in which the Complainant has earlier rights; (iii) the Respondent is using the disputed domain name to sell registration and attendee accommodation products without authority or permission from the Complainant, and is misleading the public by holding the disputed domain name out as a partner of, or sponsored by, the Complainant; and (iv) the Complainant has not authorized the use of the confusingly similar and/or identical disputed domain name by the Respondent.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Complainant has not granted any permission to the Respondent to use the disputed domain name; (ii) the Respondent is not making a bona fide offering of goods and services in connection with the disputed domain name, because it does not have any authority to market, advertise, promote, or sell registration products for SOCAP or the SOCAP18 conference, or to use the marks in trade or business; (iii) the Respondent has not been commonly known by the disputed domain name, and has no association with the Complainant; (iv) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and (v) the Respondent has, and continues to, mislead the public into believing the disputed domain name is an authorized sponsor of the SOCAP18 products and services offered by the Respondent, thereby diverting consumers away from the Complainant and its authorized website at “www.socialcapitalmarkets.net”.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; (ii) the Respondent uses the disputed domain name to attempt to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website resolving from it; (iii) the Complainant is the rightful owner of the SOCAP18 mark and provides information about the event, including the ability to register for it by and through its authorized website at “www.socialcapitalmarkets.net”; (iv) the Respondent is a corporation, with no affiliation to the Complainant, who uses the disputed domain name to mislead consumers into purchasing registration and housing products from its website rather than from the Complainant; and (v) it is presumed that the Respondent collects money from consumers but does not actually provide any of the promised services or goods because participants can only register for the event through the Complainant’s website at “www.socialcapitalmarkets.net” or through its authorized event planning website at “www.eventbrite.com”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant claims to be the owner of two service mark registrations on the USPTO Supplemental Register for SOCIAL CAPITAL MARKETS, and to have common law trademark rights in SOCAP and SOCAP18.
According to the USPTO Supplemental Register, the owner of the two service mark registrations for SOCIAL CAPITAL MARKETS is Mission Hub, LLC. The documentary evidence supporting the Complainant’s claim to be the assignee of these registrations is incomplete – the document is both undated and non-specific as to the identity of the trademark registrations purportedly assigned. Nevertheless, for the purpose of this decision the Panel is willing to assume that the Complainant has rights in these two service mark registrations on the USPTO Supplemental Register.
As is explained in paragraph 1.2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Complainants relying on trademark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trademark rights under the Policy because under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights.” Thus, where a complainant’s claim to trademark rights is based on a registration of a mark on the USPTO Supplemental Register, the complainant needs to establish that the mark has become a distinctive identifier that consumers associate with the complainant’s goods and/or services – that is to say, that the mark has the degree of acquired distinctiveness which would support a claim to common law trademark rights in it.
For the Complainant in this case to succeed in establishing that it has trademark rights for the purposes of the Policy, it needs to show that at least one of SOCIAL CAPITAL MARKETS, SOCAP and SOCAP18 is a mark that has acquired distinctiveness. As stated in the WIPO Overview 3.0, paragraph 1.3, relevant evidence demonstrating acquired distinctiveness includes: (i) the duration and nature of use of the mark; (ii) the amount of sales under the mark; (iii) the nature and extent of advertising using the mark; (iv) the degree of actual public (e.g., consumer, industry, media) recognition; and (v) consumer surveys.
The Complaint asserted that the Complainant’s marks had acquired distinctiveness, but provided no evidence in support of the assertion. The Administrative Panel Procedural Order No. 1 seeking evidence to support the assertion did not elicit any response from the Complainant. As a result, the case record currently before the Panel does not contain any evidence on which the Panel could make a finding that any one of SOCIAL CAPITAL MARKETS, SOCAP and SOCAP18 is a mark that has acquired distinctiveness. Thus, the Panel is unable to find that the Complainant has rights in a trademark for the purposes of paragraph 4(a)(i) of the Policy.
Accordingly, the Panel finds that the Complainant has not established that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
B. Rights or Legitimate Interests
Given the Panel’s finding in section 6.A above, there is no need for it to determine whether the Respondent has rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Given the Panel’s finding in section 6.A above, there is no need for it to determine whether the Respondent registered and has used the disputed domain name in bad faith.
For the foregoing reasons, the Complaint is denied.
Andrew F. Christie
Date: November 5, 2018