ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Coatue Management, L.L.C. v. Shaoka liski Case No. D2024-1506 1. The Parties Complainant is Coatue Management, L.L.C., United States of America (“United States”), represented by ZwillGen PLLC, United States. Respondent is Shaoka liski, United States. 2. The Domain Name and Registrar The Disputed Domain Name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2024. On April 10, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 10, 2024, 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 (Private Registrant) and contact information in the Complaint. The Center sent an email communication to Complainant on April 12, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 15, 2024. 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 Respondent of the Complaint, and the proceedings commenced on April 17, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 10, 2024. The Center appointed Richard W. Page as the sole panelist in this matter on May 21, 2024. 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.
page 2 4. Factual Background Complainant is a global investment management firm with offices located in the United States, Europe, and Asia. Since August 25, 1999, it has owned the domain “www.coatue.com” and maintained this domain as its primary Internet presence and point of contact for employees, investors, and media. Complainant’s domain name is based on its rights in the word mark COATUE (the “COATUE Mark”), which it registered with the United States Patent and Trademark Office on June 12, 2007, as Registration No. 3251644 as a service mark. The Disputed Domain Name is was registered on February 11, 2024. The Disputed Domain Name resolves to a website which contains no content. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. Complainant further contends that the Disputed Domain Name on its face is confusingly similar to the COATUE Mark. The Disputed Domain Name consists of nothing more than the COATUE Mark and the generic top-level domain (gTLD) “.life”. Complainant submits that the Disputed domain Name has already been used to perpetrate fraud on potential investors or members of the public. Complainant further submits that no illegal activity results in Respondent acquiring rights or legitimate interests. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.13.1. Complainant alleges it has received numerous reports from potential investors who have been contacted by individuals using the Disputed Domain Name, who claim to be associated with Complainant, but were in fact engaged in efforts to defraud such investors. Complainant further alleges that, in at least some cases, the potential investors have transferred funds to the individuals using the Disputed Domain Name, based on those individuals’ false claims that such funds would be invested in “block trading accounts” affiliated with Complainant. Complainant further alleges that where the Disputed Domain Name is used to commit business impersonation fraud or misleadingly create an association with the Complainant for commercial gain, Respondent has acted in bad faith. Complainant alleges that Respondent’s passive holding of the Disputed Domain Name qualifies as use in bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and WIPO Overview 3.0, section 3.3. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.” Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. WIPO Overview 3.0, section 4.3.
page 3 Paragraph 4(a) of the Policy directs that Complainant must prove each of the following three elements: i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the COATUE Mark in which Complainant has rights; and, ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and, iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s COATUE Mark and the Disputed Domain Name. WIPO Overview 3.0, section 1.7. WIPO Overview 3.0, section 1.2.1 states that registration of the COATUE Mark is prima facie evidence of Complainant having enforceable rights in the COATUE Mark. Complainant has shown rights in respect of the COATUE Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is identical to the COATUE Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. WIPO Overview 3.0, section 1.11.1 instructs that gTLDs such as (.live) may be disregarded for purposes of assessing confusing similarity. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Although the overall burden of proof in UDRP proceedings is on Complainant, panels have recognized that proving Respondent lacks rights or legitimate interests in the Disputed Domain Name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of Respondent. As such, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name (although the burden of proof always remains on Complainant). If Respondent fails to come forward with such relevant evidence, Complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the COATUE Mark. Complainant submits that the Disputed Domain Name has already been used to perpetrate fraud on potential investors or members of the public. Complainant further contends that no illegal activity results in Respondent acquiring rights or legitimate interests. WIPO Overview 3.0, section 2.13.1.
page 4 Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. Panels have held that the use of the Disputed Domain Name for illegal activity here, claimed to be fraud against investors, can never confer rights or legitimate interests on Respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Names: (i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to complainant who is the owner of the COATUE Mark or service mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the COATUE Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the COATUE Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product on your website or location. The four criteria set forth in paragraph 4(b) of the Policy are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”). In addition to these criteria, other factors alone or in combination can support a finding of bad faith. In addition, Telstra holds that passive holding of the Disputed Domain Name constitutes bad faith under the Policy. WIPO Overview 3.0, section 3.4. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the Disputed Domain Name in a website does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the COATUE Mark, (ii) the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) Respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel finds that in the circumstances of this case the passive holding of the Disputed Domain Name does not prevent a finding of bad faith under the Policy.
page 5 Panels have held that the use of a domain name for illegal activity here, claimed to be fraud upon investors constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds Respondent’s registration and use of the Disputed Domain Name constitutes bad faith under the Policy. The Panel finds that Complainant has established the third element 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. /Richard W. Page/ Richard W. Page Sole Panelist Date: June 4, 2024
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