The Complainant is Capital Matrix, Inc. of Boise, Idaho, United States of America, represented by Greener Burke Shoemaker P.A., United States of America.
The Respondent is G Repetto of Rio de Janeiro, Brazil, represented pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with Locaweb Serviços de Internet S/A dba LocaWeb (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2012. On December 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2012, 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.
On January 3, 2013, the Center informed the Parties that the language of the registration agreement for the disputed domain name is Portuguese, and invited the Complainant to either (i) provide evidence of an agreement between the parties that the proceedings should be conducted in English, (ii) to submit the Complaint translated into Portuguese; or (iii) to submit a request for English to be the language of the proceedings, and invited the Respondent to comment thereon. On January 3, 2013, the Respondent objected to the Complainant’s request made in the Complaint for English to be the language of the proceedings. On the same date, the Center acknowledged receipt of the Respondent’s objection. The Complainant neither filed further language submissions nor responded to the Respondent’s objection.
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 January 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2013. The Response was filed with the Center on February 4, 2013.
The Center appointed Nuno Cruz as the sole panelist in this matter on February 15, 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.
As previously noted, the Complaint was filed in English and the Respondent objected to the Complainant’s request made in the Complaint for English to be the language of the proceedings. However, the Panel also notes that the Response was submitted in Portuguese. Therefore, it would appear that the Respondent has had no difficulty in understanding the Complainant’s contentions. Accordingly, the Panel accepts the Complaint in English and the Response in Portuguese, and decides to render the Decision in English. 4. Factual Background
The Complainant is a certified development company serving Idaho and western Oregon since 1983, providing loans to small business through the “SBA 504” program.
The Complainant has operated under this name since 1995. It markets and advertises a commercial real estate financing program throughout the State of Idaho to business owners and bankers.
The Complainant contends to have unregistered trademark rights in CAPITAL MATRIX.
Also the Complainant was the registrant of the disputed domain name , initially registered in 1997.
The Respondent is a Brazilian company which has been engaged in the Internet business since 2009, in the field of the development and monitoring of websites.
The disputed domain name was acquired by the Respondent in an auction for the sum of USD 925 from “S, Inc.”.
Based on the evidence submitted, the disputed domain name resolves to a website where information about the Respondent is displayed. 5. Parties’ Contentions A. Complainant
The Complainant contends that the domain name is exactly identical to the Complainant’s mark.
The Complainant also contends that the disputed domain name is confusingly similar to the trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name was originally registered in 1997 by the Complainant using the registrar “Dotster”. The Complainant continuously maintained the disputed domain name until October 2012. On October 30, 2012, the registration of was due to be renewed. The Complainant employed a third party IT company, IntegriNet Solutions to handle their IT issues, including the management of the website. IntegriNet used the WhoIs service provided by Dotster to search for the renewal date. As IntegriNet was not the technical or administrative contact of the disputed domain name, it was only able to see the expiration date shown on the public WhoIs profile for . Dotster’s public information showed an expiration date of October 30, 2013. Dotster was operating under the assumption that the website would be renewed, as it had been annually for the last fourteen (14) years.
The Complainant’s domain name registration lapsed. However, as can be seen from the WhoIs data, the disputed domain name has retained its 1997 creation date.
The Respondent then purchased the disputed domain name at “Snapnames” and has attempted to sell it back to the Complainant.
The Respondent’s use of the disputed domain name is commercial and violates the Policy. The Respondent does not use a name corresponding to the disputed domain name, is not commonly known by the disputed domain name, and is not making a legitimate noncommercial or fair use of the disputed domain name. The evidence shows that the Respondent is a domain hijacker and cybersquatter who is attempting to sell the disputed domain name back to the Complainant or to the highest bidder.
Finally, the Complainant alleged that the disputed domain name has been registered and is being used in bad faith, since it is obvious that the Respondent is trying to sell the disputed domain name back to the Complainant.
It is clear that the Respondent registered the disputed domain name in bad faith, has no rights or legitimate interests in the disputed domain name, and that the disputed domain name is identical to the Complainant’s mark.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent alleges that she wanted to obtain the registration of a name as both a “.com” generic top-level domain (“gTLD”) and a “.br”, country code top-level domain (“ccTLD”) and that the idea of “Capital Matrix” arose – the juxtaposition of two generic terms which express the idea of the project of the Respondent. “Capital” refers to the economic aspect and the Respondent’s intention to sponsor new virtual businesses. “Matrix” is an allusion to the Internet itself, the great web of information which permeates our lives, like in the famous Hollywood film of the same name.
The Respondent also alleges that when she proceeded to register the disputed domain name , although it was not available for registration, she ascertained that it was listed on the SnapNames website as “available soon", i.e. it would become available within a short period of time if the owner did not renew it.
The Respondent, via Ms. Yoko, acquired the disputed domain name through SnapNames.
In fact, a few days later, the disputed domain name was made available by SnapNames, but registration was not granted immediately as other users had made the same reservation. The procedure in these cases is to submit the domain name to auction. The Respondent concluded the purchase of the domain name on December 7, 2012 for the final amount of USD 925, which is a sum that is perfectly within the price range used on domain name auction websites.
On December 10, 2012, Ms. Yoko, who at that time was still named as the registrant of the disputed domain name, received an email from C. Lucych, of a company called IntegriNet, who talked in general terms about some “misunderstanding” and about “reacquiring” the disputed domain name .
Shortly afterwards, Ms. Yoko was contacted by the CEO of a domain name registration company, Mr. Monster.
An offer was made for the purchase of the disputed domain name, which was rejected by the Respondent as she did not have any real interest in selling it, though she left the way open for negotiating the possible sale of the disputed domain name if she received “a really good offer”. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(a) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) The disputed domain name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel accepts that the Complainant has unregistered trademark rights in respect of CAPITAL MATRIX acquired by the use of this name in the United States since 1995.
It is a well-established rule that in making a finding as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com”, may be disregarded (Rohde & Schwartz GmbH & Co. KG v Pertshire Marketing Ltd,WIPO Case No. D2006-0762).
The disputed domain name incorporates the CAPITAL MATRIX trade mark in its entirety and in terms of both visual and aural characteristics, is an identical reproduction of the Complainant's trade mark.
The Panel accordingly finds that the disputed domain name is identical to the CAPITAL MATRIX mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
A complainant must establish a prima facie case that a respondent has no rights or legitimate interests in a domain name. The respondent must then rebut this presumption. Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Here, the Complainant has succeeded in establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Other than a screenshot of the website at the disputed domain name, the Respondent has not submitted evidence that she used, or made 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, before any notice of the dispute. It appears that it was not until being contacted by the Complainant that the Respondent indicated an intention to use the disputed domain name in connection with a business.
Moreover, the Respondent claims that she intends to register a business name by the name “CAPITALMATRIX.com” and to operate a business under this name and from the disputed domain name. However, as previously noted, other than the screenshot of the website at the disputed domain name, no actual evidence of this has been submitted. Nevertheless, based on the case file, the disputed domain name resolves to a website where information about the Respondent is displayed. It appears that the website provides or intends to provide assistance for online business ventures.
As it is not clear to the Panel whether the website is fully operational and/or the services of the Respondent are currently being offered, the Panel is unable to make a final determination on this issue1.
In any event, given the Panel’s finding under paragraph 4(a)(iii) of the Policy, it is unnecessary for the Panel to make a finding under this element. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the disputed domain name in bad faith.
For the Complainant to succeed in this claim, the Complainant must satisfy the Panel that the Respondent knew or was likely to have known of the Complainant's CAPITAL MATRIX trade mark at time of registering the disputed domain name. Although the Complainant has provided some evidence of the repute of its CAPITAL MATRIX mark, the Panel notes that the evidence suggests that such repute is limited to a small part of the North American territory.
In light of this, and also considering the absence of any evidence that the Respondent has targeted the Complainant in any way through the registration and/or use of either the disputed domain name or the Website, the Panel is unable to find that Respondent was more likely than not aware, or had knowledge, of the Complainant at the time of registering the disputed domain name. The Panel also considers that the offer for sale of the disputed domain name by the Respondent is, of itself and without other supporting factors, insufficient evidence to support the Complainant's contention of bad faith registration on the basis of registration primarily for the purpose of selling the disputed domain name to the Complainant or a competitor of the Complainant for valuable consideration.
The Panel accordingly finds that the Complainant has failed to discharge the burden of proving that the Respondent registered the disputed domain name in bad faith, and paragraph 4(a)(iii) of the Policy has not been satisfied.
As the Panel finds that the Complainant has failed to discharge its burden of proving under paragraph 4(a)(iii) of the Policy in respect of bad faith registration, it considers it unnecessary to proceed to consider the satisfaction or otherwise of the requisite elements regarding bad faith use. D. Reverse Domain Name Hijacking
The Panel is satisfied that the Complaint was motivated solely by the Complainant’s desire to protect its trade mark rights. There is nothing before the Panel to indicate that the Complaint was brought in bad faith. Accordingly, the Panel makes no finding of reverse domain name hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nuno Cruz
Sole Panelist
Date: March 1, 2013
1 Although not subject to the current proceeding, the Panel notes that the Respondent appears to be using the domain name for similar purposes.
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