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Lux Capital Group LLC v. Kevin Simons [2005] GENDND 249 (10 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lux Capital Group LLC v. Kevin Simons

Case No. D2004-1058

1. The Parties

1.1 The Complainant is Lux Capital Group LLC, New York, New York, United States of America, represented by Patterson, Belknap, Webb & Tyler, LLP, United States of America.

1.2 The Respondent is Kevin Simons, New York, New York, United States of America.

2. The Domain Name and Registrar

2.1 The disputed domain name <lux-capital.com> is registered with eNom.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2004. On December 15, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On December 15, 2004, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient in naming an incorrect Registrar, the Complainant filed an amendment to the Complaint by email on December 20, 2004, and by hard copy on January 10, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).

3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2005.

3.3 The Center appointed Jay Simon as the sole panelist in this matter on March 1, 2005. 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.

3.4 The Center forwarded the Complaint by email and hard copy to the Panel on March 1, 2005.

4. Factual Background

4.1 Complainant is a venture capital firm established in 2000. Complainant’s activities have focused on two areas: nanotechnology and life sciences and it publishes, with Forbes Magazine, at least one monthly report on nanotechnology.

4.2 Complainant and its subsidiary, Lux Research, Inc. (spun off in 2004), provide research and consulting services regarding nanotechnology and publish (and offer for sale) an annual survey on nanotechnology.

4.3 Complainant, as a venture capital firm, invests in firms and supplies consulting services and management expertise to the firms in which it invests, as evidenced by its website.

4.4 In December 1999, Complainant registered the domain name <luxcapital.com>, and on December 4, 2004, applied for trademark registration in the United States Patent and Trademark Office for the mark LUX CAPITAL. The services asserted in the application for which the mark will be used are financial consulting, class 036 and newsletters and research reports analyzing, from a financial, marketing and technical viewpoint, the nanotechnology industry and other high technology industries, class 016.

4.5 On April 10, 2004, Respondent registered the disputed domain name. On November 9, 2004, Complainant wrote to Respondent demanding, among other things, transfer to Complainant of the disputed domain name. Complainant has received no response.

4.6 Respondent listed Complainant’s address when registering the disputed domain name.

4.7 The disputed domain name redirects Internet users to another website, which sells a copy of a nanotechnology report authored by Complainant’s subsidiary.

4.8 Respondent has not responded to the Complaint and has not participated in these proceedings.

5. The Parties Contentions

A. Complainant

5.1 Complainant contends that the disputed domain name is identical to or confusingly similar to Complainant’s trade name and trademark: the disputed domain name incorporates the name and mark, adding only a “hyphen”.

5.2 Complainant contends that Respondent has no connection with Complainant and does not have permission to use Complainant’s names or marks or to sell or otherwise distribute Complainant’s intellectual property.

5.3 Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name, has no basis for asserting that it has been commonly known by that name, is not making a bona fide offering of goods or services, offers for sale an unauthorized copy of Lux Research’s intellectual property, and misleadingly diverts Internet users, including Complainant’s clients and customers, to a website not affiliated with Complainant.

5.4 Complainant contends that the disputed domain name was registered and is being used in bad faith for (i) the purpose of disrupting Complainant’s business by redirecting Internet users to an unaffiliated website that offers for sale an unauthorized report of Complainant’s subsidiary; and (ii) has attempted to attract intentionally and for commercial gain Internet users to the redirected website by creating a likelihood of confusion with Complainant’s name and mark.

5.5 Complainant further contends that Respondent has registered and is using the disputed domain name in bad faith by virtue of registering a confusingly similar name (the addition of a hyphen) and seeking to capitalize on the goodwill associated with Complainant’s mark. The redirected website imitates Complainant’s site.

B. Respondent

5.6 Respondent has failed to respond to the Complaint and has not otherwise actively participated in these proceedings.

6. Discussion and Findings

6.1 The Policy, as affected by the Rules and the Supplemental Rules, provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:

(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element noted above in paragraph 6.1.

6.3 Respondent, having failed to respond in these proceedings, is in default, and in accordance with paragraph 14(b) of the Rules, “the panel shall draw such inferences…as it considers appropriate”.

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.4 Under the Policy, Complainant must prove a confusing similarity of the disputed domain name to a trademark or service mark in which Complainant has rights. Complainant’s rights may be shown by registration of a mark or, in the alternative, by showing that the mark’s distinctiveness is known to the relevant public as being associated with a particular source.

6.5 Complainant does not own a service mark registration, and application for a mark is insufficient to show rights in a mark, although the application is a factor in considering whether Complainant has common law rights to the mark.

6.6 Further, the Policy is not applicable to trade names, see the Report of the Second WIPO Internet Domain Name Process, September 3, 2001. See also, University of Konstanz v. uni-konstanz.com, WIPO Case No. D2001-0744.

6.7 Complainant asserts that it has been in business since 2000, registered its domain name <luxcapital.com> in 1999, and applied for a service mark in December 2004, the latter occurring six months after Respondent registered the disputed domain name. Complainant has shown that it has invested in several entities and provides management services at least in the publication of the report on nanotechnology. A visit to Complainant’s website shows the extent of its activities and the fact that it is known to provide services in the nanotechnology and life sciences industries, i.e., by the relevant public.

6.8 While this Panel believes it is a close call as to whether Complainant has rights in a name sufficient to bring the Policy to bear, the absence of any evidence on the part of Respondent allows the Panel to give substantial weight to Complainant’s assertions and evidence. Indeed, it is clear that Respondent was well aware of Complainant, and sought to profit from obtaining an unauthorized copy of a report issued by Complainant’s subsidiary, Respondent knowing full well what domain name it should register to trade on Complainant’s name. Again, it is the relevant public that must associate Complainant’s name with a source of a service, and not merely the association by Respondent. Nevertheless, this is another factor to consider in determining Complainant’s rights in the name Lux Capital. Based on these considerations, this Panel finds that Complainant has demonstrated, although the evidence may be meager, that it has rights in the name Lux Capital.

6.9 Regarding whether the disputed domain name is identical or confusingly similar to the name in which Complainant has rights, the disputed domain differs from the Complainant’s name only to the extent of a hyphen between “lux” and “capital”, and, of course, the addition of the gTLD suffix. The latter is of no significance in determining identity or confusing similarity; and the former has been found, in earlier WIPO cases, to be insufficient to distinguish a domain name from a mark, see Ticketmaster Corporation v. Cecil Spafford, WIPO Case No. D2002-0944, and Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550 where neither one hyphen nor two hyphens between “ticket” and “master” were sufficient to avoid confusing similarity. Thus, this Panel finds that the disputed domain name is confusingly similar to the mark in which Complainant has rights.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.10 Paragraph 4(c) of the Policy lists three non-exclusive methods for determining whether a Respondent has rights or legitimate interests in a disputed domain name.

6.11 Complainant asserts that it has not authorized Respondent to use the disputed domain name, and Respondent has not furnished evidence to the contrary. Complainant asserts that Respondent has not been commonly known by the disputed domain name, and Respondent has not furnished evidence to the contrary. Indeed, it is Complainant that has been known by its mark for several years before Respondent registered the disputed domain name. Further, it is clear from the offer to sell, at a discounted price, Complainant’s subsidiary’s report that Respondent is not making non-commercial or fair use of the name in which Complainant has rights. Even though Complainant has the burden of proof regarding each element of paragraph 6.1, above, the burden of going forward with the evidence shifts to Respondent in view of the assertions and evidence presented by Complainant, and it is Respondent who is in the best position to come forward with evidence showing its rights or legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

6.12 This Panel further finds that the offering for sale, at a discounted price, of a report of Complainant’s subsidiary cannot be considered a bona fide offer of services. Rather, the report is copyrighted by that subsidiary and its copying by Respondent, without authorization, is an infringement of the copyright. This Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.13 Paragraph 4(b) of the Policy indicates several non-exclusive methods for showing bad faith registration and use of a domain name. Respondent’s activities, in addition to implicating paragraphs 4(b)(iii) and 4(b)(iv) of the Policy, show bad faith in listing Complainant’s address when Respondent registered the disputed domain name. Clearly, Respondent went to some lengths to disguise itself and to make it look that Respondent was actually the Complainant. No wonder Complainant did not receive a response to its letter. See Cortefiel, S.A. v. The Gallery Group, WIPO Case No. D2000-0162.

6.14 This Panel believes, based on the record in this case, that Respondent registered and is using the disputed domain name primarily for the purpose of disrupting Complainant’s business (paragraph 4(b)(iii)) the evidence being the attempt to sell an unauthorized, copyrighted report of Complainant’s subsidiary – a subsidiary clearly shown to be such by a visit to Complainant’s website. Also, Respondent, by redirecting the disputed domain name to another on-line site where the unauthorized report was offered for sale intentionally attempted to attract, for commercial gain, Internet users to another on-line location by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the on-line location, i.e., the redirected website.

7. Decision

7.1 For all of the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, this Panel orders that the domain name <lux-capital.com> be transferred to Complainant.

Jay Simon
Sole Panelist

Dated: March 10, 2005