The Complainant is Cerberus Capital Management, L.P., United States of America (“United States”), represented Schulte Roth & Zabel LLP, United States.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Thanh Le, Viet Nam.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2021. On December 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 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, 2022, 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 6, 2022.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 24, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2022.
The Center appointed Jane Seager as the sole panelist in this matter on March 1, 2022. 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 BackgroundEstablished in 1992, the Complainant is an investment management firm headquartered in New York City, New York, United States. According to the Complainant, the Complainant manages approximately USD 55 billion of assets, with operations and investments throughout the United States, and in over 30 other countries. In 2018, the Complainant launched a subsidiary under the name “Cerberus Technology Solutions”, aimed at technology transformation and modernization of the Complainant’s portfolio of companies, and to facilitate new investments in technology, including those involved in blockchain technology.
For use in connection with its investment management services, the Complainant has registered rights, including the following:
- United States Service Mark Registration No. 3208822, CERBERUS, registered on February 13, 2007; and
- United States Service Mark Registration No. 3258382, CERBERUS (stylized), registered on July 3, 2007.
The Complainant is also the registrant of the domain name
The disputed domain name was registered on November 8, 2021. Prior to the submission of the Complaint, the disputed domain name appears to have resolved to a website titled “Cerberus”, which purported to offer presale of cryptocurrency “CBS tokens” (the “Respondent’s website”).
At the time of this decision, the disputed domain name no longer resolved to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant asserts rights in the CERBERUS marks. The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant’s marks.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no affiliation with the Complainant, nor authorization to make use of the Complainant’s marks. The Complainant asserts that the Respondent is not commonly known by the disputed domain name, nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that the Respondent is using the disputed domain name in order to defraud Internet users, by inducing them to provide personal information and/or send money to the Respondent under the fraudulent pretence that the Respondent is the Complainant. As such, argues the Complainant, the Respondent is not engaged in a bona fide offering of goods or services.
The Complainant submits that the disputed domain name was both registered and is being used in bad faith. The Complainant argues that as a result of its longstanding international use of the CERBERUS mark, the Respondent knew or should have known of the Complainant’s rights when registering the disputed domain name, and submits that the Respondent registered the disputed domain name primarily for purposes of misleading members of the public in the furtherance of a fraudulent scheme. The Complainant submits that by using the disputed domain name, the Respondent has intentionally attempted to pass itself off as the Complainant, and to attract for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, sponsorship, or endorsement of the Respondent’s website.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order to prevail, the Complainant must demonstrate on the balance of probabilities that it has satisfied the requirements of paragraph 4(a) of the Policy:
(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 the disputed domain name; and
(iii) the disputed domain name was registered or is being used in bad faith.
Noting the substantial substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to prior UDRP cases and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where appropriate; see International Business Machines Corporation v. Murat Satir,WIPO Case No. DIO2021-0001.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has established rights in the CERBERUS mark, the registration details of which are set out in the factual background section above.
The disputed domain name comprises the Complainant’s CERBERUS mark, together with the letters “dao”, which are understood by the Panel to stand for “decentralized autonomous organization”. The Complainant’s CERBERUS mark is readily recognizable in the disputed domain name, and the addition of the element “dao” does not prevent a finding of confusing similarity; see WIPO Overview 3.0, section 1.8.
The country code Top-Level Domain “.io” may be disregarded for purposes of comparison under the first element; see WIPO Overview 3.0, section 1.11.1.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s CERBERUS mark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsWhile the overall burden of proof is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element; see WIPO Overview 3.0, section 2.1.
The Complainant has produced evidence of its CERBERUS marks, which have been registered, inter alia, for use in connection with the provision of financial services. As noted above, the Complainant conducts operations on a considerable scale in countries throughout the world. The Panel notes that the Respondent has made use of the Complainant’s CERBERUS mark in the disputed domain name itself, and on the website to which the disputed domain name previously resolved, in such a manner that is likely to mislead Internet users into believing that the disputed domain name and corresponding website are operated by or otherwise affiliated with the Complainant. The Panel finds that by using the disputed domain name in the manner described above, the Respondent has sought to capitalize on the goodwill and reputation associated with the Complainant’s CERBERUS mark. The Panel does not consider such use of the disputed domain name to amount to a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
The Respondent registered the disputed domain name using a privacy service. The underlying registrant has been disclosed as Thanh Le, whose name bears no resemblance to the disputed domain name. There is no evidence to suggest that the Respondent has obtained any trademark rights in “cerberus”, “cerberusdao”, or any variation thereof, as reflected in the disputed domain name. The Panel does not consider the Respondent’s use of the disputed domain name to give rise to any legitimate claim of being commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy.
The Respondent’s website was clearly intended to be commercial in nature. As such, the Respondent has not made any legitimate noncommercial or fair use of the disputed domain name, as contemplated by paragraph 4(c)(iii) of the Policy.
For reasons set out above, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not come forward to file a Response to the Complaint, or to produce any evidence to rebut the Complainant’s case. The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Panel has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad FaithWhile the Policy only requires a Complainant to prove that the disputed domain name was registered or is being used in bad faith, the Complainant has argued both aspects of the third element.
As noted above, the Complainant was established in 1992, and the Complainant’s registered marks for CERBERUS predate the registration of the disputed domain name by well over 10 years. While the name “Cerberus” refers to an animal from Greek mythology, the Panel notes that in the field of financial services, the CERBERUS mark is closely associated with the Complainant. The Panel infers from the Respondent’s use of the disputed domain name in connection with the purported provision of cryptocurrency services that the Respondent was aware of the Complainant’s rights in the CERBERUS marks, and registered the disputed domain name in order to create a perceived association between the disputed domain name and the Complainant. The Panel finds that the Respondent registered the disputed domain name in bad faith.
The Panel further accepts the Complainant’s submission that by using the disputed domain name in the manner described above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s CERBERUS mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the goods and services offered therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The fact that the disputed domain name no longer resolves to an active website does not materially alter the Panel’s findings in this regard.
The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Jane Seager
Sole Panelist
Date: March 17, 2022