WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Qatalyst Partners LP v. Max Etingen

Case No. D2021-2520

1. The Parties

The Complainant is Qatalyst Partners LP, United States of America (“United States”), represented by Shearman & Sterling LLP, United States.

The Respondent is Max Etingen, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <qatalist.com> is registered with 123-Reg Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2021, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2021. The Response was filed with the Center on August 19, 2021.

The Center appointed John Swinson as the sole panelist in this matter on August 25, 2021. 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 Complainant is an investment bank that specializes in the technology sector. The Complainant has an office in San Francisco, United States. The Complainant commenced operations in 2007.

The Complainant owns a Swiss trademark registration for QATALYST filed on August 10, 2010 and having Registration No. 604912. The Complainant also owns trademark registrations in other countries, including United States Trademark Registrations for QATALYST PARTNERS, such as Registration No. 5,489,396 filed on February 22, 2017, and registered on June 12, 2018.

The disputed domain name was registered by the Respondent on September 13, 2013.

The Respondent is an individual who intends to use the disputed domain name for a website for recruitment of sales staff and career development.

Since registration, and today, the disputed domain name resolves to a registrar-generated placeholder website that advertises services provided by the Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions:

The Complainant is the owner of United States and international trademark registrations for QATALYST and QATALYST PARTNERS, which were registered between 2010 and 2020, and the domain name <qatalyst.com>.

The Complainant is a significant and well-known global participant in the field of investment banking, consulting, fundraising, and providing advice and consulting services in connection with mergers and acquisitions, primarily in the global technology industry.

The Respondent registered the disputed domain name on September 13, 2013, approximately six years after the Complainant began using the QATALYST trademark and approximately three years after the Complainant registered such trademark. The disputed domain name is confusingly similar to the Complainant’s trademark, QATALYST, as the disputed domain name contains the dominant feature of such trademark.

No use has been made of the disputed domain name by the Respondent, and accordingly, there is no bona fide offering of goods or services and there is no evidence of commercial use of the disputed domain name.

A blank webpage is not evidence of a bona fide service or offering of goods under the Policy.

The Respondent seeks, not only to exploit the Complainant’s reputation and goodwill and confuse consumers into believing that an association exists between the Complainant and the disputed domain name, but to use the disputed domain name in order to fraudulently represent itself as the Complainant to third parties.

The disputed domain name is being used to take unfair advantage of, abuse and engage in behavior detrimental to the Complainant’s QATALYST brand and business.

The Respondent was likely aware of the Complainant’s rights in the “well-known and globally used QATALYST trademark”.

The disputed domain name “currently resolves to a blank page which leaves open the troubling possibility that the [disputed domain name] may be used to publish fraudulent content harmful to consumers and to the Complainant’s business, for email, phishing, identity theft, or malware distribution, or for cybersquatting purposes.”.

B. Respondent

The Respondent makes the following submissions:

The Respondent was not aware of the Complainant until being served with the Complaint.

The disputed domain name was registered for a potential talent acquisition business to assist businesses find sales staff.

The disputed domain name was chosen because it is a simplified spelling of “Catalyst”.

The Complainant could have registered the disputed domain name, but chose not to do so.

The Complainant’s domain name is confusingly similar to <catalyst.com> which was registered many years before the Complainant registered its domain name.

The Respondent started work on his website for his talent acquisition business in October 2016. The Respondent then had a family, and focused on his children. The Respondent intends to launch his business using the disputed domain name shortly.

The Respondent is not representing himself as the Complainant or as associated with the Complainant.

The disputed domain name is not being used in bad faith because it has not been used at all.

The Complainant’s assertions of fraud have no basis in fact.

The Respondent does not intend to sell the disputed domain name.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has clearly proven ownership of registered trademarks for QATALYST and QATALYST PARTNERS.

The disputed domain name is almost identical to the Complainant’s QATALYST trademark. There is a difference of one letter, being an “i” rather than a “y”. The disputed domain name, if spoken, would sound the same as the Complainant’s trademark.

The Panel accordingly concludes that the disputed domain name is confusingly similar to the Complainant’s QATALYST trademark, disregarding the Top-Level Domain “.com”.

The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant.

Previous UDRP Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.

Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.

The Complainant asserts that no use has been made of the disputed domain name by the Respondent, and accordingly, there is no bona fide offering of goods or services and there is no evidence of commercial use of the disputed domain name.

The Respondent responds that he has been working on a website, but it is not yet ready for launch. The Respondent states that he started work on the website in October 2016, but has been delayed by family issues. The Respondent provided evidence showing website pages that he had created for his recruitment website, branded as “qatalist”. Much of this evidence is undated, so it is not totally clear (when looking at this evidence) when these pages were created. There is a dashboard page for a website development system that shows that the “qatalist” site was first created in October 2016 and last updated in January 2021. This evidence, while not definitive, sufficiently supports the Respondent’s statements that the Respondent started to work on the website in October 2016.

Although there was delay in any activities between 2013 and 2016 and then again after 2016, the Panel considers that the evidence provided by the Respondent is sufficient evidence of an effort to develop a bona fide website at the disputed domain name so as to rebut the Complainant’s prima facie case. On the evidence before the Panel, there is moreover a lack of any indicia of cybersquatting by the Respondent.

As stated above, the burden is on the Complainant. While the Respondent provided no evidence that he has actually commenced business or will do so at any time soon (instead merely making claims to that effect), the evidence provided is sufficient to show the “demonstrable preparations” generally considered sufficient under the Policy’s safe harbor in paragraph 4(c)(i). That threshold is not high, “Even perfunctory preparations have been held to suffice for this purpose.” Télévision Française 1 (TF1) v. Khaled Bitat, WIPO Case No. D2007-0137; Asbach GmbH v. Econsult Ltd., d.b.a. Asbach Communities and Whois-Privacy Services, WIPO Case No. D2012-1225.

Accordingly, on the balance of the evidence before the Panel, the Panel finds that before any notice to the Respondent of the dispute, the Respondent had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Panel does note however that based on the Registrar holding page at the disputed domain name, the Complainant would have had no earlier indication of the Respondent’s intentions.

The Complainant fails on the second element of the Policy in relation to the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.

The Complainant asserts that the Respondent was likely aware of the Complainant’s rights in the “well-known and globally used QATALYST trademark”. The Complainant is well-known today in the investment banking arena, and despite the fact that the mark is unusual, there is no evidence before the Panel that suggests that the Respondent was or should have been aware of the Complainant in 2013. There is no evidence to demonstrate that if the Respondent was conducting searches for “qatalist” which is a typo of the Complainant’s mark, in 2013 when he was deciding to register the disputed domain name that information about the Complainant would have been found in such a search.

The Respondent states that the Respondent was not aware of the Complainant when he registered the disputed domain name, and presents a credible reason as to why he registered the disputed domain name.

The Respondent states:

“I have never heard of the Complainant – QATALYST PARTNERS LP – and [the Center’s] email from a few days ago came as a surprise to me. I do not own many domains – and I have used or intend to use every single domain which I own or have owned. … I do not have any intentions to sell the domain to the Complainant, nor have I ever sold a single one of the very few domains I own.”

The Panel finds the Respondent’s statements to be believable, and there is no evidence to the contrary provided by the Complainant.

The Complainant suggests that the Respondent was potentially engaged in typosquatting, but this appears unlikely. Typosquatting involves tricking someone into visiting a website when they mis-type a domain name. Here, the disputed domain name did not resolve to a website benefiting the Respondent at any time since registration of the disputed domain name 8 years ago. There is no evidence of typosquatting or an intention to typosquat.

The Complainant expresses concern that the disputed domain name “currently resolves to a blank page which leaves open the troubling possibility that the [disputed domain name] may be used to publish fraudulent content harmful to consumers and to the Complainant’s business, for email, phishing, identity theft, or malware distribution, or for cybersquatting purposes.”

However, there is no evidence before the Panel to prove that the Respondent has used or has an intention to use the disputed domain name for fraudulent purposes. Contrast the following cases: Fondation Bettencourt Schueller v. WhoisGuard Protected, WhoisGuard, Inc. / Web designer Web designer, WIPO Case No. D2018-2750; Bytedance Ltd. v. Registration Private, Domains By Proxy, LLC/Kemal Aydin, Kemal, WIPO Case No. D2020-3433; The Prudential Assurance Company Limited v. Prudential Securities Limited, WIPO Case No. D2009-1561; Graybar Services Inc. v. Graybar Elec., Grayberinc Lawrenge, WIPO Case No. D2009-1017; Gateway Fiber LLC v. Wix.com Ltd., Wix.com Ltd. / Ali Oudah, Ayadi Group, WIPO Case No. D2021-1736. Unlike these cases, there is no evidence to suggest fraud or impersonation for financial gain by the Respondent here.

In short, there is no evidence before the Panel today that the Respondent registered the disputed domain name in bad faith.

The panel notes in conclusion that the decision is based on the evidence before it, and should future content go up on the site at the disputed domain name that calls the Respondent’s version of events into question, then the Complainant may have grounds for a refiling.

The Complainant fails on the third element of the Policy in relation to the disputed domain name.

7. Decision

For the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist
Date: September 8, 2021