Complainant is Cerberus Capital Management L.P. of New York, New York, United States of America, represented by Wild Schnyder AG, Switzerland.
Respondent is FIELDS JASON, CERBERUS FINANCE LIMITED of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2014. On October 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the Registrar information, Complainant filed an amended Complaint on November 6, 2014.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 1, 2014.
The Center appointed Isabel Davies as the sole panelist in this matter on December 5, 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
Between 2006 and 2010 Complainant has registered various trademarks for CERBERUS in word and logo form for financial services.
On February 8, 1999, Complainant registered the domain name .
On May 25, 2012, the Disputed Domain Name was registered. 5. Parties’ Contentions A. Complainant
The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
(Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))
- Complainant holds the trademark CERBERUS (registered amongst others as United States Nos. 78864543, 72365669 and International Registration No. 1031110), the trademark CERBERUS & design (registered amongst others as United States No. 78952059), and the trademark CERBERUS CAPITAL MANAGEMENT, L.P. (registered amongst others as United States No. 78952039, and International Registration No. 1031111). All these trademarks claim protection for financial services in class 36.
- The marks of Complainant have been registered between 2006 and 2010. The Disputed Domain Name of Respondent has been registered on May 25, 2012. Consequently, Complainant states that it enjoys priority over Respondent.
- In addition to the trademark rights Complainant states that it holds rights in the company name Cerberus Capital Management.
- Also Complainant holds the domain name . This domain name has been registered on February 8, 1999.
- Complainant states that it has sufficiently established its rights in the trademark and the company name CERBERUS and the domain name .
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
- Complainant contends that it is one of the largest and most renowned companies in the finance sector worldwide with a proven focus on the area of “private equity”. Complainant’s company was founded in 1992. It has been involved in a large variety of shareholding processes which have attracted worldwide attention in the recent past and made the name and trademark of Complainant known worldwide. Complainant has been using its marks CERBERUS and CERBERUS CAPITAL MANAGEMENT as well as the domain name for years. The sign “Cerberus” is Complainant contends the widely known abbreviation of their company name, which is permanently used by third parties in press releases.
- The sign “Cerberus” is therefore generally used in connection with corporate financial services also by the relevant public with regard to Complainant. If “Cerberus” is used the reference is made to Complainant.
- In contrast, Complainant contends, Respondent has not been commonly known by the Disputed Domain Name .
The Disputed Domain Namewas registered and is being used in bad faith.
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
- Complainant contends that the Disputed Domain Name is capable of creating a likelihood of confusion as to source, sponsorship, and affiliation with Complainant’s trademarks CERBERUS and CERBERUS CAPITAL MANAGEMENT and its company name. Respondent commercially benefits from the connection the consumer assumes between the Disputed Domain Name and Complainant’s trademarks and as such evidences bad faith registration and use. The word “finance” in the Disputed Domain Name is likely to create with the consumer the assumption that the Disputed Domain Name is another branch of Complainant.
- Respondent seeks commercial gain out of the registration of the Disputed Domain Name by using the excellent reputation of Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by Complainant to obtain relief. These elements are:
(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interest in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
Complainant must establish these elements even if Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including Respondent’s failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, Complainant bears the onus of proving its case on the balance of probabilities. Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name. A. Identical or Confusingly Similar
The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
The Panel accepts that Complainant holds various trademarks CERBERUS and including the word CERBERUS registered between 2006 and 2010.
The Panel accepts that Complainant holds the domain name which was registered on February 8, 1999 and that Complainant has registered Cerberus Capital Management L.P. as a company name.
Complainant states that it has sufficiently established its rights in the trademark and the company name CERBERUS and the domain name . Although Complainant has not set out in any detail its argument that the Disputed Domain Name is confusingly similar to Complainant’s trademarks the Panel finds that the addition of “finance” to the trademark CERBERUS is insufficient to cause the Disputed Domain Name not to be confusingly similar. B. Rights or Legitimate Interests
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Panel accepts Complainant is one of the largest and most renowned companies in the finance sector worldwide with a proven focus on the area of “private equity” and that Complainant’s company was founded in 1992.
The Panel accepts that the sign “Cerberus” is the widelyknown abbreviation of Complainant’s company name and that the sign “Cerberus” is generally used in connection with corporate financial services also by the relevant public with regard to Complainant. Accordingly, if “Cerberus” is used the Panel accepts that the reference is made to Complainant which was founded in 1992.
Respondent has not filed any evidence that it has been commonly known by the Disputed Domain Name which was registered in 2012, with Respondent’s website dated 2012 also substantially after the founding of Complainant’s company and registration of its domain name and trademarks. Moreover, when visiting the website at the Disputed Domain Name the Panel noted that the “E-banking login” link appears to be inactive.
Accordingly the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Disputed Domain Namewas registered and is being used in bad faith.
The Panel accepts that the Disputed Domain Name is capable of creating a likelihood of confusion as to source, sponsorship, and affiliation with Complainant’s trademarks CERBERUS and CERBERUS CAPITAL MANAGEMENT and its company name. The Panel finds that Respondent commercially benefits from the connection the consumer assumes between the Disputed Domain Name and Complainant’s trademarks and as such, and in view of the relevant times of registration of trademarks and domain names, evidences bad faith registration and use. The Panel finds that the word “finance” in the Disputed Domain Name is likely to create with the consumer the assumption that the business connected to the Disputed Domain Name is another branch of Complainant and that Respondent seeks commercial gain out of the registration of the Disputed Domain Name by trading off the reputation of Complainant.
Accordingly the Panel finds that the Disputed Domain Name was registered and is being used 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 Disputed Domain Name be transferred to Complainant.
Isabel Davies
Sole Panelist
Date: December 12, 2014
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