Complainant is Hanai Capital, LLC, United States of America (“United States”), represented by Minx Law, United States.
Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Nike Nolan, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2020. On April 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 8, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 14, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 14, 2020. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on April 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 7, 2020. The Center appointed John C. McElwaine as the sole panelist in this matter on May 25, 2020. 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 Complainant is a California limited liability company offering services in the management of investment portfolios since 2013. Respondent registered the Domain Name with the Registrar on October 3, 2019. The Domain Name was used to host a website impersonating Complainant and purporting to offer cryptocurrency investment services. 5. Parties’ Contentions A. Complainant On August 9, 2013, Complainant was organized as a California limited liability company. Since its formation, Alvin Fu, Ph.D. has been the sole managing member of Complainant. Dr. Fu submitted an affidavit in this matter asserting that Complainant began doing business as the general partner of Hanai Fund, LP, a private investment limited partnership (collectively, “Hanai Capital”) in or around August 2013 under the HANAI CAPITAL trademark. Dr. Fu attested that Hanai Capital’s primary service offering under the mark HANAI CAPITAL is the management of financial investment portfolios and that Hanai Capital has continuously offered its investment services throughout the United States under the HANAI CAPITAL trademark. As a result of Hanai Capital’s exclusive and longstanding use of the HANAI CAPITAL trademark mark in connection with investment management services, Complainant asserts that it has acquired significant goodwill among the relevant investor audience. Complainant also alleges that as a registered investment advisor, certain information about Hanai Capital, including its business address and Central Registration Depository (“CRD”) number, are available to the public through various Internet databases and other online resources. Complaint further asserted that bad actors who wish to impersonate Hanai Capital can access and utilize this information. Dr. Fu’s affidavit asserts that Complainant became aware of Respondent’s website operating from the Domain Name when he received emails from two unknown individuals. Neither Dr. Fu nor Hanai Capital have done business with these individuals. Complainant asserts that the emails indicated that the senders had “invested” with the fraudulent “Hanai Capital Invest” under the mistaken belief that they were in fact investing with Hanai Capital. Moreover, based on these emails, Complainant asserts it appears that Respondent has and currently is conducting illegal transactions using the Domain Name for commercial gain. With respect to the first element of the Policy, Complainant contends that the Domain Name is confusingly similar to Complainant’s HANAI CAPITAL trademark. Complainant argues that the addition of the word “invest” in the Domain Name does not sufficiently distinguish the Domain Name from Complainant’s HANAI CAPITAL trademark. With respect to the second element of the Policy, Complainant contends that there is no relationship between Respondent and Complainant, and that Complainant has not licensed or otherwise permitted Respondent to use the HANAI CAPITAL trademark. Instead, Complainant contends Respondent is using the Domain Name to operate a website to fraudulently impersonate Complainant. Complainant points out that this is evidenced by the following from Respondent’s website: - Respondent claims to be the website for “Hanai Capital Invest”; Complainant also submitted emails purporting to show that Respondent is using the Domain Name to impersonate Complainant and engage in illegal activity, by soliciting cryptocurrency investments from investors and guaranteeing an exorbitant rate of return. Complainant asserts that such use of a domain name to fraudulently impersonate a complainant has been held to be a clear example of a lack of rights or legitimate interests. Lastly, with respect to the third element of the Policy, Complainant submits that the Domain Name has been registered and is being used in bad faith because Respondent acquired, updated, and created in bad faith the Domain Name to impersonate Complainant’s legitimate business, and thereby seeks to hijack the goodwill in Complainant’s trademark, in order to fraudulently solicit cryptocurrency investments. Complainant contends that confusion is not only likely but is actually occurring and that use of the Domain Name for a fraudulent and per se illegitimate activity is bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above-cited elements are as follows. A. Identical or Confusingly Similar In this matter, Complainant does not possess a national trademark registration for HANAI CAPITAL and instead relies upon having established unregistered trademark rights in said mark. As discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law) marks. See WIPO Overview 3.0 at section 1.1.1. Furthermore, because of the global nature of the Internet and Domain Name System, the fact that a complainant may show acquired distinctiveness in only one geographic area does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP. See WIPO Overview 3.0 at sections 1.1.2 and 1.3. Here, Complainant has established that it used the HANAI CAPITAL unregistered trademark for approximately 6 years in the United States before the Domain Name was registered by Respondent, who also resides in the United States. Importantly, Complainant established that Respondent intentionally targeted Complainant and its HANAI CAPITAL unregistered trademark by virtue of the content of Respondent’s website, which impersonates Complainant. Such intentional targeting strongly supports Complainant’s assertion of distinctiveness and creates a presumption, which was not rebutted by Respondent, that Complainant’s HANAI CAPITAL unregistered trademark has achieved significance as a source identifier. Therefore, the Panel finds that Complainant has sufficiently established unregistered trademark rights in its HANAI CAPITAL trademark for the purpose of the Policy. The Domain Name is wholly comprised of Complainant’s HANAI CAPITAL trademark plus the dictionary word “invest”. It is well established that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a trademark in a domain name does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s HANAI CAPITAL unregistered trademark in which Complainant has valid unregistered trademark rights under the UDRP. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant asserts that Respondent is not authorized to use the HANAI CAPITAL trademark. Although properly notified by the Center, Respondent failed to submit any response justifying its use of the Domain Name and explaining its decision of redirecting Internet traffic to Respondent’s website. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of a domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Complainant has made a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252. The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a disputed domain name: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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 at issue.” Complainant asserts that the Domain Name resolves to a website that impersonates Complainant’s business and is being used to perpetrate cryptocurrency investment fraud. At best, Respondent’s use of the Domain Name suggests a false affiliation. The Panel finds that Respondent’s use of the Domain Name to divert Internet traffic to is not a bona fide offering of goods or services. See Chicago Mercantile Exchange Inc., CME Group Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Nikolay Korobeynikov,WIPO Case No. D2016-0654 (finding no legitimate interest in a website resolving from the disputed domain name, which mirrored, and purported to be, the website of “CME Group” and which provided information relating to the trading of futures and options). Moreover, the Panel finds that the purpose of registering the Domain Name appears to have been to impersonate Complainant, trading on its goodwill and to conduct a fraudulent invest scheme. WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”). The undisputed evidence of impersonation, deception and fraud nullifies any possible basis for the acquisition of rights or legitimate interests by Respondent. See Afton Chemical Corporation v. Meche Kings,WIPO Case No. D2019-1082. With respect to Complainant’s contention that Respondent is not commonly known by the Domain Name, the Panel notes that the WhoIs information lists Respondent as Nike Nolan and there is no connection in the WhoIs information to Hanai Capital. Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward with facts to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel finds that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy. Bad faith registration can be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which they had no rights or legitimate interests. See Accor v. Kristen Hoerl,WIPO Case No. D2007-1722. Here, the HANAI CAPITAL trademark represents the unique name and goodwill of Complainant’s financial services company. Based on Complainant’s submission, which was not rebutted by Respondent, Respondent must have known of Complainant’s HANAI CAPITAL trademark when it registered the Domain Name. Further supporting the finding that Respondent knew of Complainants’ trademark rights, the evidence in this matter showed that Respondent registered a Domain Name that wholly contained Complainant’s HANAI CAPITAL trademark, impersonated Complainant by using Complainant’s address and CRD number and used a scanned copy of Complainant’s certificate of incorporation. Paragraph 4(b)(iv) of the Policy provides that bad faith may be shown if “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” As discussed herein, Respondent registered and then used the Domain Name to create a competing website by impersonating Complainant. This amounts to bad faith use of the Domain Name. See Identigene, Inc. v. Genetest Labs.,WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang,WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). In addition, Respondent registered the Domain Name to divert Internet traffic to a website that is allegedly perpetrating a fraud. Complainant’s HANAI CAPITAL trademark was intentionally chosen and used to pray on the public seeking to find Complainant. In light of the content listing Complainant’s address, its CRD number and its corporate documents, there could be no other legitimate explanation except that Respondent intentionally registered the Domain Name to impersonate Complainant in an effort to mislead, and possibly scam, consumers. Such activity also constitutes a disruption of Complainant’s business and also establishes bad faith registration and use pursuant to paragraph 4(b)(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 Domain Name, John C. McElwaine
- Respondent falsely alleges that its company “Hanai Capital Invest” is located at 711 Via Santa Ynez, Pacific Palisades, California 90272, which is, in fact, Complainant’s business address;
- Respondent alleges that “Hanai Capital Invest” is “incoporated [sic] in California”;
- On its “FAQ” page, Respondent’s website states that “Hanai Capital Invest” is “registered under number 168243 in the United States”, which is Complainant’s CRD number;
- On its “About” page, Respondent displays a picture of a fraudulent California “Certificate of Incoporation” (sic).
Sole Panelist
Date: June 8, 2020
Full & Egal Universal Law Academy