The Complainants are Capital IQ, Inc and Standard & Poor's Financial Services LLC, both of New York, United States of America and represented by ALG India Law Offices, India.
The Respondent is Ye Li of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 23, 2014. On September 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2014, 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 October 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 22, 2014.
The Center appointed Jon Lang as the sole panelist in this matter on October 31, 2014. 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
Capital IQ, Inc (Capital) and Standard & Poor's Financial Services LLC (S & P) are affiliates, both being 100% wholly owned by McGraw Hill Financial Inc. Together they will be referred to as the Complainants and such term, together with references to the Complainants individually, shall include their predecessors.
Capital is the owner, proprietor and user of the mark CAPITAL IQ worldwide since at least 1998. S & P is the owner, proprietor and user of the mark S&P CAPITAL IQ worldwide since at least 2011.
Capital provides information on public companies, private companies etc. as well as a wide range of tools for financial analysis and other tasks. S & P is a leading provider of financial marketing data research and intelligence. And is also known for its indeces, including the S&P 500 index.
In 2011, S & P launched a division called S&P CAPITAL IQ combining its brands Standard & Poor's and CAPITAL IQ. The Complainants therefore have significant goodwill and reputation in the mark S&P CAPITAL IQ as well as CAPITAL IQ.
The Complainants have offices in numerous cities and countries around the world, including in Beijing, Shanghai (the address of the Respondent), Hong Kong, China, India, Japan, Malaysia and Singapore.
The Complainants are proprietors of several trademark registrations and applications across many jurisdictions including, for instance, Hong Kong, China Registered Trade Mark No: 301701936, filed on August 30, 2010 and registered on May 9, 2011 for CAPITAL IQ and China Registered Trade Mark No: IR 1116047, filed and registered on December 9, 2011 for S&P CAPITAL IQ.
The Respondent has not participated in anyway in these proceedings and nothing is known of him other than that he registered the domain name in dispute, (the Domain Name), on June 25, 2014. 5. Parties' Contentions A. Complainant The domain name is identical/confusingly similar to the Complainants' trademark/service marks CAPITAL IQ and S&P CAPITAL IQ
Apart from their trade mark registrations, by virtue of their bona fide and worldwide adoption, Capital is the proprietor and sole owner of the mark CAPITAL IQ and S & P is the owner of the mark S&P CAPITAL IQ.
The mark CAPITAL IQ has been in continuous use since 1998 and the 'S&P CAPITAL IQ' mark since at least 2011.
The marks CAPITAL IQ and S&P CAPITAL IQ are well-known and have international prominence and reputation.
The Complainants also own several domain names incorporating the mark CAPITAL IQ, including several generic Top-Level Domains and country code Top-Level Domains, such as (since September 17, 1999), (since November 7, 2002), and (since July 12, 2007).
An active website displaying the Complainants' marks CAPITAL IQ and S&P CAPITAL IQ has been hosted at since at least January 24, 2001.
The Domain Name is identical and confusingly similar to the Complainants' respective marks CAPITAL IQ and S&P CAPITAL IQ. The Respondent has no rights or legitimate interests in respect of the domain name
Neither of the Complainants has ever authorised or licensed the Respondent to use the marks CAPITAL IQ or S&P CAPITAL IQ. The Respondent does not have any association with either of the Complainants, and neither of the Complainants has any past dealings with the Respondent. The Respondent is not commonly known by the Domain Name and, to the knowledge of the Complainants, has not acquired any trademark rights in the marks CAPITAL IQ or S&P CAPITAL IQ. The Respondent therefore has no reason to adopt or register the Domain Name.
The Domain Name has been made available for sale by the Respondent at the website to which it resolves, with the message "BUY THIS DOMAIN - The domain may be for sale by its owner!" This demonstrates that the Respondent does not have any rights or legitimate interests in the Domain Name and intends to make unjust commercial profits.
Moreover the website, which is hosted by Sedo, carries sponsored listings and advertisements, which redirects Internet users to various websites, including those competing with the Complainants. Such use of the Domain Name is not bona fide and does not confer rights or legitimate interests upon the Respondent.
The Respondent has registered the Domain Name with the intention of making illegitimate and illegal commercial gains. The domain name was registered and is being used in bad faith
The mark CAPITAL IQ had been in use for more than 15 years at the time of registration of the Domain Name.
The Respondent has parked the Domain Name with Sedo probably in the hope of selling it either to the Complainants or to a third party. It is evident from the content of the website to which the Domain Name resolves, that the Respondent is making money by attracting customers and then diverting them to third party sponsored listings. The actions of the Respondent are demonstrative of his intention of selling, renting or transferring etc. the Domain Name and of his intention of preventing the owner of marks (the Complainants) from reflecting the mark in a corresponding domain name.
In response to the Complainants' attempt to purchase the Domain Name through Sedo, the Respondent offered to sell at USD 6,500 – an amount vastly in excess of the Respondent's out of pocket expenses. It is evident that the Domain Name was acquired for the purposes of selling or transferring it for valuable consideration in excess of the Respondent's out of pocket expenses.
A reverse WhoIs search of the Respondent reveals that his email is associated with at least 467 other domains. It is evident that the Respondent is engaged in the business of cybersquatting by registering domain names containing well-known trademarks and making illegal gains by sales or pay-per-click use. The Respondent has been involved (as respondent) in at least five other UDRP cases.
In view of:
the Complainants' registered and common law rights in the marks CAPITAL IQ and S&P CAPITAL IQ;
the extensive use of those marks, including online, for several years prior to the Respondent's registration of the Domain Name;
the fame, goodwill and reputation associated with the marks;
the Respondent not having any rights in the mark CAPITAL IQ or ever having been known by the Domain Name;
the Domain Name being parked with Sedo and offered for sale at a price substantially in excess of the Respondent's out-of-pocket costs;
the website to which the Domain Name resolves providing competing third party listings; and
the Respondent's past conduct,
it is difficult to conceive of any circumstance in which the Respondent could have registered the Domain Name in good faith or without knowledge of the Complainants' rights in the marks CAPITAL IQ and S&P CAPITAL IQ. Accordingly, the Complainant asserts that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar
The Complainants have rights in the marks CAPITAL IQ and S&P CAPITAL IQ for the purposes of the Policy. Ignoring the suffix ".asia" (as the Panel may do for comparison purposes), the Domain Name is identical to the mark, CAPITAL IQ (it being impossible to provide for a space between characters in a domain name so the space between CAPITAL and IQ in the mark should also be ignored for comparison purposes). The Domain Name is also confusingly similar to the mark, S&P CAPITAL IQ, given that it (the Domain Name) comprises a substantial part of the mark, i.e. CAPITAL IQ, which is readily recognizable as such within the Domain Name.
Even if one were to adopt a possibly more stringent test and require, as some UDRP panels have done, a risk that Internet users may actually believe that there is a real connection between the Domain Name and the Complainant and/or its goods and services, the Complainants would satisfy this first element of the three part test. The impression created by the Domain Name may well give rise to the possibility that Internet users would think that the owner of the Domain Name is in fact the owner of the Complainants' mark to which it is identical (in the case of CAPITAL IQ) and similar (in the case of S & P CAPITAL IQ), or that there is some form of association between the Respondent and the Complainants.
The Panel finds that the Domain Name is identical to the mark, CAPITAL IQ and confusingly similar to the mark, S&P CAPITAL IQ for the purposes of the Policy and thus this element of paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests
By their allegations in the Complaint, the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that he does in fact have such rights or legitimate interests. The Respondent has not done so and the Panel is entitled to find, given the prima facie case made out by the Complainants, that the Respondent lacks rights or legitimate interests in the Domain Name.
Nevertheless, it is perhaps appropriate to deal with rights and legitimate interests (or the absence thereof) in a little more detail.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the domain name or that it is 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 in issue.
Here, however, the Respondent is not known by the Domain Name. Moreover, given the nature of the website to which the Domain Name resolves i.e. a parking page containing links to websites of others, the Panel would not accept that there is legitimate noncommercial or fair use. In any event, it is difficult to conclude that the Respondent does not derive a commercial benefit from the use to which the Domain Name has been put. Moreover, any noncommercial or fair use must be without intent to mislead but it is likely in fact (in the absence of any alternative explanation), that the very purpose in the Respondent choosing the Domain Name was to deliberately create a false impression of association with the Complainants. In Drexel University v. David Brouda,WIPO Case No. D2001-0067, the panel stated that "rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant". That seems to be the case here.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that a parking page to which a domain name, that so obviously takes advantage of the fame of the marks to which it is identical (in the case of CAPITAL IQ) and confusingly similar (in the case of S&P CAPITAL IQ), resolves, could be a bona fide offering.
As paragraph 2.6 of the second edition of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") makes clear, it is possible in certain circumstances for use of a domain name for advertising purposes, (including parking pages) to provide a legitimate interest within the meaning of the Policy. An example would be where a registrant intends to profit from the descriptive element of a domain name without intending to take advantage of a third party's rights. However, as the panel made clear in Paris Hilton v. Deepak Kumar,WIPO Case No. D2010–1364, if the owner of the domain name is using it in order "…to unfairly capitalise upon or otherwise take advantage of a similarity with another's mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267)". The Respondent's choice of the Domain Name here seems to be a clear attempt to unfairly capitalise on or otherwise take advantage of the Complainants' marks.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response or taken any other action to address the Complaint. The contentions of the Complainants, by which they have made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above and accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. It matters not that once the Internet user arrives at the website, it is immediately clear, because it is a parking site or otherwise, that it is unconnected with the trademark owner. The Internet user will have been confused, at least initially, as to the relationship between the website and trademark owner and that is enough to establish bad faith. Given that these are the circumstances in the present case, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
Another way a complainant may demonstrate bad faith registration and use is to show that there are circumstances indicating that the Respondent has registered or acquired the domain name in issue primarily for the purpose of selling, renting, or otherwise transferring it to the complainant (the owner of the trademark to which it is confusingly similar or identical) or to a competitor of that complainant, for valuable consideration in excess of out-of-pocket costs directly related to the domain name. As noted above, the Domain Name has been made available for sale by the Respondent at the website to which it resolves, with the message "BUY THIS DOMAIN - The domain may be for sale by its owner!" The Panel does not consider that the words 'may be for sale' displaces an assumption that, at a price acceptable to the Respondent, the Domain Name would be for sale. Also as noted above, in response to the Complainants' attempt to purchase the Domain Name through Sedo, the Respondent offered to sell it at USD 6,500, clearly an amount in excess of the Respondent's out of pocket expenses. In all the circumstances, the Panel finds also that the Respondent acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainants or a third party, for valuable consideration in excess of out-of-pocket costs directly related to the Domain Name.
Given these findings, it is unnecessary to go on to consider whether there would be any other grounds for a finding of bad faith.
In all the circumstances, Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainants or, at their direction, one of them.
Jon Lang
Sole Panelist
Date: November 6, 2014
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