The Complainant is Greenlight Capital, Inc. of New York, New York, United States of America, represented by Akin, Gump, Strauss, Hauer & Feld, United States of America.
The Respondent is Yakubu Ashi of Bangalore, Karnataka, India. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2016. On October 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2016, 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 October 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2016.
The Center appointed James A. Barker as the sole panelist in this matter on November 28, 2016. 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 firm founded in 1996. The Complainant has owned and used its GREENLIGHT and GREENLIGHT CAPITAL marks for well over a decade in connection with investment advisory and investment management services in the United States of America and elsewhere. The Complainant’s marks include marks registered in the United States: for GREENLIGHT CAPITAL, INC registered in 1999, and for GREENLIGHT as early as 2013.
The Complainant operates a website at the domain name which was registered in 1997.
The Complainant says that, in July 2016, it was advised of the disputed domain name by its domain monitoring service. A few days later the Complainant received an unsolicited email from a third party asking whether an email he received from the Respondent was legitimate. Apparently, the Respondent sent an email soliciting business to an unsuspecting recipient using the Complainant’s own logo in the signature line. The Complainant says that, while the text of the email is in Arabic, it is clear that the Respondent was seeking to pass himself off as the Complainant. An untranslated copy of that email was attached to the Complaint. The email came from the email address info@. The email also included a signature block in the name of “Greenlight Capital Inc”, and included links to three email addresses related to the disputed domain name. The Complainant immediately contacted the Registrar and as of August 11, 2016 the Registrar deactivated the disputed domain name.
According to details provided by the Registrar, the disputed domain name was registered by the Respondent on July 11, 2016. 5. Parties’ Contentions A. Complainant
The Complaint is brief, and makes the following allegations under paragraph 4(a) of the Policy.
The Complainant says that this is classic case of bad faith and of typosquatting. The Complainant says that the disputed domain name is essentially identical to its registered marks and its domain name. The intentional omission of the letter “a” from “capital” clearly evidences the Respondent’s attempt to trade on the Complainant’s marks and domain name.
The Complainant also says that the Respondent has no legitimate interests in the disputed domain name.
Finally, the Complainant says that the Respondent has registered and used the disputed domain name in bad faith. Given the international fame of the Complainant’s marks, there is no doubt that the Respondent was aware of the Complainant’s trademark rights when the disputed domain name was registered. Further, the Respondent sent emails to third parties using a copy of the Complainant’s GREENLIGHT CAPITAL, INC logo to commit investment fraud by impersonating the Complainant.
The Complainant also says that the registration of the disputed domain name contravened assurances by the Respondent that the registration was not being used for any unlawful purpose and did not contravene any known third party rights. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that:
(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 was registered and is being used in bad faith.
These issues are discussed in turn as follows. A. Identical or Confusingly Similar
The Complainant provided evidence of its registered rights in trademarks for both GREENLIGHT CAPITAL, INC and GREENLIGHT, both registered many years before the registration of the disputed domain name.
The Panel considers that the disputed domain name is confusingly similar at least to the first of these marks. The only relevant difference between them is the absence of a space between the letters, which cannot in any event be reproduced as such in a domain name, and the absence of the letter “a”. The absence of the letter “a” however suggests only a slight abbreviation of the word “capital”. There was no evidence in the case file, or otherwise an explanation that occurs to this Panel, to the contrary.
For completeness, the Panel notes that the Complainant’s registered GREENLIGHT CAPITAL, INC mark also includes a design element – this being the separation of the word GREENLIGHT from the words CAPITAL, INC by a horizontal line extending from a star on the left side. The line separates the word GREENLIGHT, which appears above the line, from the words CAPITAL, INC which appear below it.
However, despite this element of stylization, the words registered in the mark are clearly and prominently discernable as such. As noted in paragraph 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), “as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances - such as where, for example, they form an especially prominent or distinctive part of the trademark overall.”
The Panel in this case does not think that the design elements of the Complainant’s mark are especially prominent or distinctive. The over-riding impression from the Complainant’s mark is one based on the words themselves. As such, the Panel considers it appropriate, and consistent with the majority of Panel views as outlined in the WIPO Overview 2.0, to disregard those design elements of the Complainant’s mark for the purpose of determining the issue of confusing similarity.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark for GREENLIGHT CAPITAL, INC. B. Rights or Legitimate Interests
At a minimum, the burden on the Complainant under this element is to establish a prima facie case against the Respondent: see paragraph 2.1, WIPO Overview 2.0. A prima facie case is one that is credible in the absence of evidence to the contrary.
While the Complaint is brief, the Complainant has at least established a credible prima face case against the Respondent in relation to this second element under the Policy. The burden is therefore on the Respondent to rebut that argument.
The Respondent provided no case in reply to the Complaint. There is otherwise little evidence in the case file that would suggest that the Respondent might have some right or legitimate interest in the disputed domain name. This includes a lack of evidence of the factors that might demonstrate rights or legitimate interests, set out in paragraph 4(c) of the Policy.
As such, the Panel finds that the Respondent lacks rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In considering the issue of bad faith, the Panel considers that the following are essentially the facts that have been established by the Complainant, and which are otherwise demonstrated in the case file:
- The Respondent registered the disputed domain name in July 2016.
- The disputed domain name is confusingly similar to the Complainant’s mark.
- The Complainant uses its mark in connection with investment services. While the Complainant’s mark has been registered for almost a decade, the Complainant did not provide any evidence of the fame of its mark or its reputation in connection with that mark.
- The disputed domain name has not been used in connection with an active website.
- In these proceedings, there is essentially nothing known about the Respondent.
- The disputed domain name was referenced as part of a signature block in an email (in Arabic) to a third party. The Complainant claims that this email originated from the Respondent, which is suggested from the reference to the disputed domain name in the email itself, as well as the origin of this email from the info@ address.
- The Respondent has not replied to the Complainant’s case.
The question then is whether this bare evidence is sufficient for a finding of bad faith registration and use. While the burden under paragraph 4(a) of the Policy is that “the Complainant must prove” each of the three elements against the Respondent, it is well established that the burden of proof is one on the balance of probabilities: see WIPO Overview 2.0, paragraph 4.7.
With the above facts in mind, the key issue to the Panel in this case is whether it is possible for the Panel to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that might be in good faith. See e.g. Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131. The Panel cannot reasonably conceive of any such use. As such, the Panel considers that the balance of probabilities favor the Complainant’s case that the disputed domain name was registered and used by the Respondent to take some unfair advantage of the Complainant’s mark.
Further, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as are appropriate from the Respondent’s failure to reply. The Panel here thinks it is reasonable to draw the inference that there is no good reply to the Complainant’s case. If there was a good faith explanation for the Respondent’s registration and use of the disputed domain name, it would have been a simple thing to file a Response.
For these reasons, the Panel finds that the disputed domain name was registered, and has been used, in bad faith for the purpose of paragraph 4(a)(iii) of the Policy. 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 the Complainant.
James A. Barker
Sole Panelist
Date: January 3, 2017
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