The Complainant is Qatalyst Partners LP, United States of America (“United States”), represented by Shearman & Sterling LLP, United States.
The Respondent is GKG.NET Domain Proxy Service Administrator, GKG.NET Domain Proxy Service, United States / Chau Nguyen, NYSA LLC, 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 September 2, 2020. On September 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 6, 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 the Complainant on October 9, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 12, 2020. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2020. The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 5, 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 The Complainant is an independent investment bank specializing in mergers and acquisitions of emerging technology companies. It is established under the law of Delaware, United States and headquartered in San Francisco, California, United States, with another office in London, England. The Complainant has been using the QATALYST name and mark since its founding in 2007, as shown in broker-dealer registration documents attached to the Complaint. The name is clearly a play on the English word “catalyst”, which is included in the beginning of the mission statement on the Complainant’s website at “www.qatalyst.com”: “Our mission is to serve our clients as a catalyst for positive change by helping them navigate and capitalize on the transformational forces affecting the global technology industry.” The Complainant has been involved in large and well-publicized transactions involving companies such as Amazon, Microsoft, Google, eBay, LinkedIn, Adobe, SAP, Intuit, airbnb, and PayPal. The record shows that the Complainant has been mentioned in Fortune and other business media in connection with these deals, including a heralded Google acquisition of FitBit that was in the press in 2020 at the time of the Domain Name registration. The Complainant or its English affiliate Qatalyst Partners Limited hold the following relevant trademark registrations used in the Complainant’s business: MARK JURISDICTION REGISTRATION NUMBER REGISTRATION DATE QATALYST (word) Switzerland 604912 September 13, 2010 QATALYST PARTNERS (word) United Kingdom UK00003243209 November 3, 2017 QATALYST PARTNERS European Union EU016979809 November 9, 2017 QATALYST PARTNERS (standard characters) United States 5489396 June 12, 2018 QATALYST PARTNERS (word) United Arab Emirates AE/280748 August 12, 2018 QATALYST PARTNERS (words and design) United States 5971319 January 28, 2020 The Registrar reports that the Domain Name was registered on August 6, 2020 in the name of the Registrar’s domain proxy service. After receiving notice of this dispute, the Registrar identified the registrant as the Respondent Chau Nguyen of the organization NYSA LLC, listing a postal address in Maryland, United States. Maryland’s online database of registered companies shows that Mr. Nguyen is the registered agent of NYSA LLC, a limited liability company formed in 2011 to engage in the businesses of “information technology solutions” and “investments and development of renewable energy space”. NYSA LLC does not appear to operate a website. Mr. Nguyen’s LinkedIn profile describes him as the Chief Technology Officer of NYSA LLC, where he builds financial management systems, fraud detection systems, and case management systems. The Domain Name resolves to a landing page with the name “QAATALYST” above the current date and time (in the United States Central Time Zone). Otherwise, the page is blank. 5. Parties’ Contentions A. Complainant The Complainant asserts that the Domain Name is confusingly similar to its registered QATALYST and QATALYST PARTNERS trademarks, merely inserting a meaningless extra letter “a” in the distinctively spelled “qatalyst”. The Complainant observes that the Domain Name “does not point Internet users to a functional website and does not advertise or offer any goods or services of the Respondent.” As the Domain Name is a misspelling of the Complainant’s distinctive mark and cannot be used for any conceivably legitimate purpose, the Complainant argues that it was registered for the purpose of taking advantage of the Complainant’s reputation and confusing consumers. “Furthermore, the Domain Name currently resolves to a blank page which leaves open the troubling possibility that the Domain Name may be used to publish fraudulent content harmful to consumers and to the Complainant’s business, for email, phishing, identity theft, or malware distribution, or for cybersquatting purposes. Additionally, the Respondent privately registered the Domain Name through a proxy service, and the Respondent’s identity and contact information have been intentionally concealed, presumably to prevent the Complainant from taking action against the Respondent to enforce its rights in the QATALYST trademark.” The Complainant concludes that the Domain Name was registered “primarily for the purposes of taking advantage of the Complainant’s well-known reputation, disrupting the Complainant’s business and intentionally misleading third parties to believe that the Domain Name was registered in connection with the Complainant’s business.” B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the 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 domain name; and (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant holds registered QATALYST and QATALYST PARTNERS trademarks. The Domain Name is nearly identical to the QATALSYT mark, adding an unpronounced “a”, and similar to the distinctive element of the QATALYST PARTNERS marks. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See WIPO Overview 3.0, section 1.11.2. The Panel concludes that the Domain Name is confusingly similar to the Complainant’s registered QATALYST and QATALYST PARTNERS trademarks marks for purposes of the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent 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 at issue. Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and the lack of evident rights or legitimate interests on the part of the Respondent, as the Respondent lacks a corresponding name and has not posted an associated, substantive website. The Respondent has failed to come forward to claim relevant trademark rights or advanced other relevant rights or legitimate interests in the Domain Names. The Panel concludes, therefore, that the Complainant prevails on the second element of the Complaint. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name): “(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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.” These examples are illustrative rather than exclusive, and although the Complainant refers to business disruption and the misdirection of Internet users, the examples do not squarely fit the circumstances of this case. There is no indication that the Respondent is a competitor, and the record does not indicate that the Respondent has yet put the Domain Name to any commercial use. Nevertheless, there is clearly potential for misdirection to commercial websites or for email fraud with such a close misspelling of the Complainant’s mark in a Domain Name, one that is also nearly identical to the domain name used for the Complainant’s own website and emails. A finding of bad faith depends on the probability that the Respondent meant to exploit the Complainant’s reputation. The Complainant’s registered QATALYST marks are distinctive and formed from a deliberate misspelling of the English word “catalyst”. The Respondent created the Domain Name string, which is not a dictionary word, from a slight misspelling of the trademark. It is unlikely to have been a coincidence. The record indicates that the Complainant’s mark was known in the United States information technology industry by August 2020, when the Respondent Mr. Nguyen registered the Domain Name, and Mr. Nguyen works in that industry. Moreover, the Complainant was involved at that time in well-publicized deals such as the Google-FitBit transaction. The Panel finds it likely, therefore, that the Respondent was aware of the Complainant’s marks when registering the Domain Name. There is no indication that the Respondent has rights or a legitimate interest in the Domain Name, and it is difficult to conceive of a non-infringing use. Rather, it appears more likely than not that the Respondent acquired the Domain Name because of its typosquatting potential to mislead Internet users, parking the Domain Name in the interim at a nearly blank page. There is, as yet, no developed website or known email use of the Domain Name. But WIPO UDRP panels have long held that “passive holding” of a domain name confusingly similar to a distinctive mark could be considered, given the totality of the circumstances, bad faith for purposes of the third element of a UDRP complaint. See WIPO Overview 3.0, section 3.3; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In this case, where the Domain Name consists of a misspelling of a distinctive mark and the Respondent has not come forward to offer an alternative explanation, the Panel similarly concludes that it is not requisite to await further conduct as proof of bad faith. The loaded and pointed gun will suffice to prove intent; it is not necessary to wait until the gun is fired. The Panel concludes that the Complainant prevails on the third element of the Complaint. 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, W. Scott Blackmer
Sole Panelist
Date: November 18, 2020
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