The Complainant is ACORE Capital LP, United States of America (“United States”), represented by Ropes & Gray LLP, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama, / Abuchi Okoye, Nigeria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2021. On January 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 5, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 6, 2021, 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 January 8, 2021. 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 January 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2021. The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on February 11, 2021. 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 a privately held commercial real estate finance company founded in 2015. The Complainant owns the following trademark registrations, among others: MARK Registration Number Registration Date Class Jurisdiction ACORE CAPITAL 4,890,476 January 19, 2016 36 United States 5,020,909 August 16, 2016 36 United States The Complainant owns the domain name The disputed domain name The Complainant has provided evidence that in December 2020, the website connected to the disputed Domain Name, claimed to be, or to be associated with, Complainant or its services and imitated the Complainant’s own legitimate website. The disputed domain name currently resolves to an inactive web site. 5. Parties’ Contentions A. Complainant The Complainant asserted the following: That it was founded in 2015 and that it is known as ACORE Capital. That the Complainant originates, acquires, and manages first mortgage loans, B-notes, mezzanine debt, and preferred equity throughout the United States and Canada. That as of December 2020 the Complainant held assets of approximately USD 17 billion under management in real estate credit strategies. That, as a result of its longtime use of its web site to which the domain name That the disputed domain name That the disputed domain name That the disputed domain name That the disputed domain name wholly incorporates the Complainant’s registered trademark ACORE CAPITAL and that this would be sufficient to establish confusing similarity. That the disputed domain name is likely to cause confusion, to cause mistake, and to deceive as to affiliation, connection, or association of the Respondent with the Complainant. That there is no relationship or affiliation between the Complainant and the Respondent giving rise to any license, permission or other right to use any domain name incorporating the Complainant’s trademark. That the Respondent’s registration of the disputed domain name without relationship to the Complainant creates a presumption that the Respondent lacks a legitimate right to or interest in the disputed domain name. That before it was suspended by the registrar, the web site to which the disputed domain name has resolved, claimed to be, or to be associated with, the Complainant or its services, and imitated the Complainant’s own legitimate web site. That the Respondent’s web site purported to offer similar services to those offered by the Complainant, which evidences the Respondent’s intent to attract Internet users who may be confused and believe that it is a web site held, controlled by, related to, or endorsed by the Complainant. That the Respondent’s use of the disputed domain name to offer financial services cannot amount to a bona fide offering of services because such services would compete with those of the Complainant. That the Respondent has not used or prepared to use the disputed domain name with any bona fide offering of goods or services; has not been commonly known by the disputed domain name; and has not made any noncommercial or fair use of the disputed domain name. That the Respondent’s registration of the disputed domain name, which is confusingly similar to the Complainant’s famous mark, with whom it holds no relationship, is evidence of bad faith registration and use. That the Respondent’s use of the Complainant’s trademark in the disputed domain name and in the text contained within the web site to which it has resolved demonstrates the Respondent’s attempt to imitate or associate itself with the Complainant, which constitutes bad faith. That the disputed domain name purportedly offers wealth management and investment services attempting to take unfair advantage of the goodwill and reputation of the Complainant’s trademarks. That under the Policy, the use of the disputed domain name to attract, for commercial gain, Internet users, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its web site is evidence of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met: (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 with respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. In view of the Respondent’s failure to submit a Response, the Panel may decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see General Mills, Inc., v. Velgut Group Business and Intl Commerce, S.A. de C.V., WIPO Case No. DMX2012-0013; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009; Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; and International Hospitality Management IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683; and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar The Complainant has filed evidence showing that it owns registrations for the trademark ACORE CAPITAL in the United States that cover services related to real estate investment services since 2015. The Panel finds that the disputed domain name The addition of the generic Top-Level Domain (“gTLD”) “.com” to the disputed domain name constitutes a technical requirement of the Domain Name System (“DNS”), and therefore has no legal significance in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO,WIPO Case No. D2020-0268; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919). In light of the above, the first element of the Policy has been met. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name: (i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did no acquire 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. The Complainant has asserted that there is no relationship or affiliation between the Complainant and the Respondent, that it has not granted any license, permission, authorization, or any other right to the Respondent to use its trademark ACORE CAPITAL, and that the Respondent has not been commonly known by the disputed domain name (see cases Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; and Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272). The Respondent did not contest these allegations. The disputed domain name, which consists of a typosquatted version of the Complainant’s trademark ACORE CAPITAL, shows that the Respondent has targeted the Complainant, its trademark and its business. The Respondent took no measures whatsoever to make it clear to Internet users visiting his web site that it was not operated by the Complainant. Therefore, the Respondent’s conduct cannot be considered as a legitimate noncommercial or fair use of the disputed domain name (see Wachovia Corporation v. Peter Carrington, WIPOCase No. D2002-0775 and Edmunds.com, Inc. v. Digi Real Estate Foundation WIPO Case No. D2006-1043). The Complainant demonstrated that before the disputed domain name became inactive, the services offered on the web site to which it resolved were similar to those rendered by the Complainant. The evidence submitted by the Complainant shows that the web site to which the disputed domain name resolved displayed content potentially misleading as to the source or sponsorship of the services advertised therein (see sections 2.5.1, 2.5.2., and 2.5.3 of the WIPO Overview 3.0, as well as UDRP cases, The Royal Edinburgh Military Tattoo Limited v. Identity Protection Service, Identity Protect Limited / Martin Clegg, WM Holdings,WIPO Case No. D2016-2290; Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd,WIPO Case No. D2009-0331; Suncor Energy Inc. v. Whois Privacy Protection Service, Inc. / andre bechamp,WIPO Case No. D2012-2123; and Segway Inc. v. Domains By Proxy, LLC / Arthur Andreasyan, NIM,WIPO Case No. D2016-0725). UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Such conduct cannot confer rights to or legitimate interests in the disputed domain name (see sections 2.5.1 and 2.13 of the /amc/en/domains/search/overview3.0/#item; see also Self-Portrait IP Limited v. Franklin Kelly,WIPO Case No. D2019-0283). Accordingly, the Complainant has satisfied the requirements of the second element of the Policy. C. Registered and Used in Bad Faith Bad faith under the Policy is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The Complainant ascertained its rights over the ACORE CAPITAL trademark in the United States. The dates of registration of the Complainant’s trademarks significantly precede the date of registration of the disputed domain name. The disputed domain name incorporates the Complainant’s trademark in its entirety. Through the web site to which the disputed domain name resolved, the Respondent has impersonated the Complainant. Internet users who encountered said web site may have believed that they were dealing with the Complainant, or a web site somehow endorsed, authorized, or operated by the Complainant. Taking the above into consideration, as well as the fact that the Respondent has targeted the Complainant, its services, and its potential clients, it is clear that the Respondent knew about the Complainant and its trademarks when the disputed domain name was registered. This conduct constitutes opportunistic bad faith registration under the Policy ( see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter,WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot,WIPO Case No. D2019-0980; and Boehringer Ingelheim Pharma GmbH & Co. KG v. Marius Graur, WIPO Case No. D2019-0208). The evidence submitted by the Complainant shows that the Respondent has attempted to attract Internet users to his web site for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site, which constitutes bad faith under paragraph 4(b)(iv) of the Policy (see 1IQ PTY LTD v. 1337 Services LLC,WIPO Case No. D2017-2156; Facebook, Inc., WhatsApp Inc. v. Wisdom King, Wizindo,WIPO Case No. D2019-2517). The typosquatting conduct of the Respondent also amounts to bad faith registration of the disputed domain name (see Lexar Media, Inc. v. Michael Huang,WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo,WIPO Case No. D2004-0816; Admiral Group Plc and EUI Limited v. Cimpress Schweiz, Cimpress Schweiz GmbH,WIPO Case No. DCO2017-0043; MouseSavers, Inc. v. Mr. Henry Tsung d/b/a www.wwwmousesavers.com,WIPO Case No. D2004-1034; and Boehringer Ingelheim Pharma GmbH & Co. KG v. Martin Hughes>,WIPO Case No. D2016-1546). In light of the above, the third element of the Policy has been met. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and15 of the Rules, the Panel orders that the disputed domain name Kiyoshi Tsuru
ACORE CAPITAL
Sole Panelist
Date: February 25, 2021
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