Alliedcapital-us.com

The timeline behind alliedcapital-us.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Allied Capital Corporation v. Gold-Domain, Inc. c/o Huang Feilong Claim Number: FA0605000709154 PARTIES Complainant is Allied Capital Corporation (“Complainant”), represented by Bradley E. Prendergast of Sutherland Asbill & Brennan LLP, 1275 Pennsylvania Avenue, NW, Washington, DC, 20004. Respondent is Gold-Domain, Inc. c/o Huang Feilong (“Respondent”), Room 602, No.20, Lane 1013, ShuiDian Road, Shanghai 200083, CN. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <alliedcapital-us.com>, registered with Enom, Inc. PANEL The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically May 18, 2006; the National Arbitration Forum received a hard copy of the Complaint May 22, 2006. On May 19, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <alliedcapital-us.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On May 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 20, 2006, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@alliedcapital-us.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On June 23, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. The domain name that Respondent registered, <alliedcapital-us.com>, is confusingly similar to Complainant’s ALLIED CAPITAL mark. 2. Respondent has no rights to or legitimate interests in the <alliedcapital-us.com> domain name. 3. Respondent registered and used the <alliedcapital-us.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Allied Capital Corporation, has been a leading business development company since the 1960’s. In connection with its various financial services, Complainant registered the ALLIED CAPITAL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,339,462 issued April 11, 2000). Complainant registered the <alliedcapital.com> domain name on September 19, 1995, and has continued to use that domain name to offer its financial advisory services to Internet users. Respondent registered the <alliedcapital-us.com> domain name May 10, 2005. Respondent is using the disputed domain name to run a competing website, which purports to offer financial advisory services similar to Complainant’s services but focused on business development in China. Respondent’s website goes so far as to include the names of Complainant’s current and former officers and directors as employees of Respondent’s organization. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "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." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical to and/or Confusingly Similar Complainant established using extrinsic proof in this proceeding that it has rights in the ALLIED CAPITAL mark through registration of the mark with the USPTO. The Panel finds that registration of the mark establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). The disputed domain name that Respondent registered, <alliedcapital-us.com>, is confusingly similar to Complainant’s ALLIED CAPITAL mark. The disputed domain name incorporates Complainant’s mark in its entirety adding a hyphen, the geographically descriptive “us” and the top-level domain “.com.” The Panel finds that such minor additions to Complainant’s mark do not nullify the confusing similarity between Respondent’s domain name and Complainant’s mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel finds that Complainant satisfied Policy ¶ 4(a)(i). Rights to or Legitimate Interests Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name that Respondent registered. Complainant’s submission is founded on the allegation that Respondent lacks rights or legitimate interests in the <alliedcapital-us.com> domain name. Complainant’s allegation constitutes a prima facie case for purposes of this Panel. Once Complainant has made a prima facie case, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel views Respondent’s failure to submit a response as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). Notwithstanding the lack of Response from Respondent, the Panel examines the available evidence to determine whether or not Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). Respondent does not have rights or legitimate interests in the <alliedcapital-us.com> domain name because respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Respondent is using the disputed domain name to redirect Internet users to Respondent’s website where Respondent offers financial services in competition with those offered by Complainant. Further, Respondent is using the names of current and former officers and directors of Complainant’s business in order to confuse and deceive potential customers. The Panel finds that such use is not a bona fide offering of goods and services and it is not a legitimate noncommercial or fair use of the disputed domain name. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Furthermore, no evidence before the Panel suggests that Respondent is commonly known by the <alliedcapital-us.com> domain name. Complainant asserts that Respondent is not licensed by, or affiliated with, Complainant in any way that would justify Respondent’s use of Complainant’s ALLIED CAPITAL mark. Respondent’s WHOIS information identifies Respondent as “Gold-Domain, Inc.,” which appears to be unrelated to Complainant and its <alliedcapital-us.com> mark. Thus, absent information in the record suggesting otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name, and does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Complainant also alleged that Respondent acted in bad faith. Respondent is using the <alliedcapital-us.com> domain name to operate a commercial website offering financial services identical to those offered by Complainant. Respondent’s use of a domain name that is confusingly similar to Complainant’s mark to redirect Internet users to Respondent’s website where Respondent offers competing financial services serves to disrupt Complainant’s business. The Panel finds that such use amounts to disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant). Further, the disputed domain name, <alliedcapital-us.com>, is confusingly similar to Complainant’s ALLIED CAPITAL mark, and has the potentiality of confusing Internet users seeking Complainant’s website. In addition, Respondent is using the disputed domain name to run a website offering financial services identical to those offered by Complainant, and Respondent falsely claims that Complainant’s current and former officers and directors are also Respondent’s officers and directors. Such conduct makes it likely that Internet users will be misled into believing that Respondent is licensed or sponsored by, or otherwise affiliated with, Complainant. Respondent is capitalizing on this confusion by offering unwitting consumers its financial services. The Panel finds such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <alliedcapital-us.com> domain name be TRANSFERRED from Respondent to Complainant. Hon. Carolyn Marks Johnson, Panelist Dated: July 5, 2006 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.