The Complainant is The Capital Group Companies, Inc. of Los Angeles, California, United States of America (“United States”), represented by Mewburn Ellis, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondents are Domains By Proxy, LLC of Scottsdale, Arizona / Savoy Partners, Savoy Partners London of London, United Kingdom and Domains By Proxy, LLC of Scottsdale, Arizona / Crystal Marie, Savoy Partners London of London, United Kingdom (collectively referred to as “the Respondents”), self-represented.
The disputed domain names <thecapitalgroupco.com> (the “first disputed domain name”) and <capgroupco.com> (the “second disputed domain name”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2018. On August 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 20, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 4, 2018.
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 September 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2018. The Center received an informal email communication from the Respondent on September 10, 2018. On September 27, 2018, the Respondent requested an automatic four-day extension of the deadline to file the Response. The Center granted the requested extension and confirmed that the new deadline for the Response was October 1, 2018.
The Response was filed with the Center on October 1, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 23, 2018. 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.
According to the Complaint, the Complainant and its associated group of companies operate a global investment management business. It has USD 1.7 trillion funds under management worldwide including approximately EUR 3 billion managed by its European arm.
Amongst other things, it conducts its business from a website to which the domain name <capitalgroup.com> resolves. The Complainant registered this domain name in 2000. It also registered in 1995 the domain name <capgroup.com>, which redirects to the website at the first domain name. The Complainant also uses the <capgroup.com> domain name as the domain for its personnel’s email addresses.
The Complainant has numerous registered trademarks including:
- European Union (“EU”) Trademark No. 002104743, CAPGROUP, in respect of a range of goods and services in International Classes 9, 16 and 36. This trademark has been registered from July 12, 2002;
- EU Trademark No. 002999522, CAPITAL GROUP, in respect of a range of goods and services in International Classes 9 and 36. This trademark has been registered from March 2, 2005;
- EU Trademark No. 014772495, CAPITAL GROUP and device of two interlocking, offset squares, in respect of a range of goods and services in International Classes 9, 35 and 36. This trademark has been registered from May 13, 2016;
- EU Trademark No. 014772578, for the same trade mark as EUTM No. 014772495 save that the device element is in black and white. This trademark has been registered from May 21, 2016;
- United States Trademark No. 3,278,544 for the same trademark as EUTM No. 014772578 in respect of financial services in International Class 36, which was registered on August 14, 2007 and claims a first use in commerce on October 10, 2001; and
- United States Trademark No. 4,524,913 for CAPITAL GROUP and the black and white squares device in respect of a range of services in International Class 36, which was registered on May 6, 2014 and claims a first use in commerce in April 4, 2013.
The First Respondent is simply the Registrar’s privacy service. The Third Respondent was until December 30, 2017, a director of the Second Respondent and appears to have submitted the Response on behalf of both of them, although the Response itself identifies one Vladimir Pavelcik as the Respondents’ contact. The Panel will refer simply to the Respondents jointly for simplicity.
The Respondents registered the first disputed domain name on March 29, 2017 and the second disputed domain name on March 30, 2017.
For a time, the second disputed domain name redirected to a website which the first disputed domain name resolved to. That website depicted a photograph of a skyscraper building. It was headed by a “logo” which featured the words “Capital Group” in block capitals beneath three overlapping squares. Contact details in London and New York are also provided. The copyright notice identified the operator of the website as “Capital Group Companies Limited”, a company registered in England.
When the Complainant’s lawyers sent a cease and desist letter to that company, the lawyer’s letter in reply rejected the demands, but sought payment of GBP 25,000 for the disputed domain names.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, the complainant must demonstrate each of the following:
(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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the panel to decide the 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.
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain names to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The verbal elements of the Complainant’s word and device marks are not an insubstantial feature of the mark. Accordingly, it is appropriate to approach the comparison of the disputed domain names to the trademark on the basis of those verbal elements and disregard for these purposes the design elements: WIPO Overview 3.0, section 1.10.
Disregarding the gTLD “.com”, both disputed domain names contain the whole of the Complainant’s first registered trademark. The first disputed domain name also contains the whole alpha-numeric element of the Complainant’s other registered trademarks and the second disputed domain name is readily derived from those words. As the Complainant points out, the suffix “co” in both disputed domain names will be readily perceived as an abbreviation for “company”. The letters “the” at the start of the first disputed domain name are simply the definite article. Accordingly, the Panel finds that both disputed domain names are confusingly similar to the Complainant’s registered trademarks and the requirement under the first limb of the Policy is satisfied.
The second requirement the Complainant must prove is that the Respondents have no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] 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) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is 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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
It is not in dispute between the parties that the Respondents are not authorised by the Complainant to use its trademarks and they are not affiliated with the Complainant or its products in any way. Nor are the disputed domain names derived from either of the Respondents’ names. The Respondents also do not claim any noncommercial use of the disputed domain names. Instead, the Respondents point to a number of different factors to support their claim.
The Response nominates a Mr Vladimir Pavelcik as the contact for the Respondents in his capacity as a director of Capital Group Companies Limited. According to the Response, Mr Pavelcik is a 72-year-old retiree. Somewhat incongruously with his retired status, he describes himself as an entrepreneur who has invested substantial personal funds in the company, the business of which is to provide administrative, consulting and marketing services for international clients to assist with various construction and development projects.
According to the Response, the website is still under construction and was intended simply as an online business card.
Mr. Pavelcik points out that the disputed domain names were publicly available for anyone to register; it being the Complainant’s own fault that it did not secure all domain names it considered relevant to its business.
Mr. Pavelcik states that he chose the name of his company without any intention to mislead. The word “Capital” was chosen according to its dictionary meaning as an adjective for first-rate or excellent; the word “Group” was chosen to identify that the company consists of a team referred to as a group and the word “Companies” to signal that it provides its services to companies and not private individuals.
Mr. Pavelcik states that he considered the GBP 25,000 price requested for the disputed domain name “seemed fair” to cover the expenses incurred in creating marketing materials, design of the logo, the website and the fact that marketing campaigns have been launched.
He emphasises that his company’s “logo” is not identical to the Complainant’s. This is strictly correct. The Respondents’ logo has three squares, not two. The Respondents’ squares increase in size instead of being the same size; two are dark grey and the middle square is dark blue. While the Complainant’s device element squares are hollow, these squares are solid. The verbal elements, however, are the same and the words and device elements are in the same relationship and relative proportions. The colours are not identical, but similar. Mr Pavelcik says that the coincidence of colour schemes is explained by the fact that gunmetal grey and blue are his two favourite colours: gunmetal grey representing the ships he saw on the River Danube when he was growing up as a child and, of course, the River Danube itself is famously blue.
Although the Response does state that Mr Pavelcik is 72 years old, the Panel notes that company registration details for the Second Respondent indicate that the Vladimir Pavelcik who was a director of that company would not yet be 50 years old and, further, the Third Respondent would be turning 50. It is of course possible that there are two Vladimir Pavelcik’s in the same family, but the emails sent by the Third Respondent to the Center identify the account which they are sent from as “Mr/Mrs Pavelcik”. Given the express references to Vladimir Pavelcik in the Amended Complaint, one might expect the Response to include some explanation if there were two different “Vladimirs”.
Even allowing for the fact that English may not be Mr Pavelcik’s first language (although the Panel notes that the Response has been expressed in perfectly clear English) and the potentially allusive nature of a proposed corporate or business name, it is difficult not to approach the explanation for the composition of name with a considerable degree of skepticism.
Most importantly, there is absolutely no objective material corroborating any of the Respondents’ claims. There are no business plans. There is no evidence of any of the expenditure on marketing materials, logo design, website design or of any marketing campaigns: there are no receipts, no drafts, no retainers, no examples of any marketing activities or invitations to marketing events. There is no evidence that any services have actually been provided to anyone. The Panel has only the Respondents’ bare assertions. As section 2.2 of WIPO Overview 3.0 points out, while each case is assessed pragmatically on its own merits, contemporaneous evidence supporting the good faith nature of the activities will usually be required especially where what is claimed is not independently verifiable.
In these circumstances, the Panel concludes that the Complainant has established a strong prima facie case that the Respondents do not have rights or legitimate interests in either of the disputed domain names and the Respondents have failed to rebut that prima facie case. Accordingly, the Complainant has established the second element under the Policy.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In the present case, the Complainant can point to longstanding use of its name and trademarks on a very substantial and global scale. The disputed domain names closely resemble the Complainant’s trademarks. Moreover, the logo used on the website to which the disputed domain names resolved bears a close, albeit not identical, resemblance to the Complainant’s own usage. This resemblance extends beyond the verbal elements to include the use of overlapping squares (albeit of different sizes) in the same arrangement as the Complainant’s trademark and in a similar colour scheme.
In circumstances where the Panel has been unable to accept the Respondents’ explanation for the adoption of the disputed domain names, all these factors bespeak an awareness of the Complainant’s trademark with an intention to take unfair advantage of it. Accordingly the Panel finds that the disputed domain names have been registered in bad faith. The offer to sell the disputed domain names to the Complainant for GBP 25,000, without any right or legitimate interest in them, is use in bad faith under the Policy.
Accordingly, the Panel finds that both disputed domain names have been registered and are being used in bad faith.
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 names <capgroupco.com> and <thecapitalgroupco.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: November 5, 2018
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