Victory Capital Management Inc. is a US-based diversified global investment management firm with $176.5 billion in total client assets. Its VICTORY CAPITAL marks were registered in 2003, about 4 years after the domain VictoryCapital.com was registered (1999.)
The Complainant filed a UDRP claiming that its mark is superior and that the Respondent acquired it in 2021. For the latter, it provided no evidence, other than a change in WHOIS. It then attempted to acquire the domain using a third party broker, who stated that they’d need at least $50,000 dollars for this domain.
The British Respondent filed no response, but luckily for them the sole Forum panelist addressed the core facts: The domain wasn’t registered in bad faith in 1999 at a time predating the Complainant’s claimed first use of the mark (2001) and wasn’t used in bad faith throughout, regardless of the value given to it by a third party broker who is in fact neither the registrant or the Respondent.
In addition, the mark’s fame outside of the US is disputed, per the Panelist:
Further, the Complaint states that “[p]rior to filing the instant Complaint, Complainant sought to acquire the VictoryCapital.com domain name by using the domain name registrar’s domain broker service, in response to which the domain name broker advised Complainant that, ‘we would need at least $50,000 USD for it to make sense for this specific owner.'” It goes on to argue that “Respondent’s offer demonstrates an attempt to transfer the domain name for valuable consideration in excess of the documented out-of-pocket costs, and constitutes bad faith registration and use under the UDRP.” However, this is also an unsubstantiated assertion as Complainant submits no evidence to support what is a very material element of its claim. In any event, the claim is internally flawed as it appears that there was no “Respondent’s offer”. Rather, it is Complainant who initiated purchase discussions through a broker (it is not stated whether the broker disclosed Complainant’s identity or acted anonymously), and it is the broker who communicated a target price of $50,000 USD which gives the impression that it was estimating a number that would motivate the domain registrant to negotiate rather than conveying a firm sale offer from that registrant.
Final decision: Deny the transfer of VictoryCapital.com to the Complainant.
Copyright © 2025 DomainGang.com · All Rights Reserved.Victory Capital Management Inc. v. Erik Moresco
Claim Number: FA2411002127058
PARTIES
Complainant is Victory Capital Management Inc. (“Complainant”), represented by Carrie A. Shufflebarger of Thompson Hine, LLP, Ohio, USA. Respondent is Erik Moresco (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is victorycapital.com, registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on November 27, 2024; Forum received payment on November 27, 2024.
On November 27, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the victorycapital.com domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 3, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@victorycapital.com. Also on December 3, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On December 26, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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
Complainant is a diversified global investment management firm with $176.5 billion in total client assets. It provides specialized investment strategies to institutions, intermediaries, retirement platforms, and individual investors, offering a wide array of investment products, including mutual funds, ETFs, separately managed accounts, alternative investments, third-part ETF model strategies, collective investment trusts, private funds, a 529 Education Savings Plan, and brokerage services. Complainant is headquartered in San Antonio, Texas, U.S.A. and it has offices and investment professionals who service customers throughout the U.S. and around the world, including in the United Kingdom. Since at least as early as 2001, Complainant has provided its services under the trademarks VICTORY CAPITAL MANAGEMENT, VICTORY CAPITAL, and other marks incorporating these terms (the “VICTORY CAPITAL Marks”). These marks are the subject of registrations at the United States Patent and Trademark Office (“USPTO”) including Reg. No. 2696403 dated March 11, 2003, Reg. No. 5023124 dated August 16, 2016, and others. Furthermore, Complainant operates its website at the address www.vcm.com.
The disputed victorycapital.com domain name, registered on May 5, 1999 and acquired by the Respondent in or around May 2021, is identical or confusingly similar to the VICTORY CAPITAL Marks.
Respondent has no rights or legitimate interests in the disputed domain name where it is not commonly known thereby and the domain name resolve to a website displaying the message “Site Offline”.
The disputed domain name was registered in bad faith as Respondent was on constructive notice of Complainant’s rights in the VICTORY CAPITAL Marks. The domain name is used in bad faith based on Respondent’s offer to sell the domain name to Complainant for an excessive price, Respondent’s use of the domain name to disrupt Complainant’s business, and Respondent’s attempt to attract visitors to its website for commercial gain through confusion with Complainant’s marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
– Complainant has demonstrated its ownership of rights to the VICTORY CAPITAL Marks and the victorycapital.com domain name is identical or confusingly similar to the marks;
– There is insufficient evidence to conclude that Respondent has rights or legitimate interests in the disputed domain name and Respondent has not participated in these proceedings to claim otherwise; and
– The submitted evidence does not support the conclusion that Respondent has registered or uses the disputed domain name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a 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.”
Paragraph 4(a) of the Policy requires that Complainant must 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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant asserts rights in its VICTORY CAPITAL Marks through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Here, Complainant provides screenshots from the USPTO website evidencing its trademark registrations. Therefore, the Panel finds that Complainant has rights in the VICTORY CAPITAL Marks under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s victorycapital.com domain name is confusingly similar to its marks because the disputed domain name incorporates the VICTORY CAPITAL mark in its entirety and only omits the “.com” TLD. The use of an entire trademark and the addition only of a TLD is not sufficient to distinguish a disputed domain name from an asserted mark. Rollerblade, Inc. v. Chris McCrady, D2000-0429 (WIPO June 25, 2000) (“There can be no question that Respondent’s domain name ROLLERBLADE.NET is identical to Complainant’s trademark ‘Rollerblade’, and this Panel so finds. It is already well established that the specific 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 thus finds that the disputed domain name is identical or confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.”).
Complainant first argues that Respondent lacks rights or legitimate interest in the victorycapital.com domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the VICTORY CAPITAL Marks or register domain names using Complainant’s marks. In considering this issue, WHOIS information may be reviewed to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information bore no resemblance to the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS record for the victorycapital.com domain name, as revealed by the concerned Registrar after the Complaint was filed, identifies Respondent as Erik Moresco and there is no evidence that Respondent is known otherwise. Further, Complainant specifically notes that “Respondent is not authorized to use or register Complainant’s VICTORY CAPIAL Marks” and Respondent has not filed a Response or made any other submission to claim otherwise. Therefore, the Panel finds no evidence that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the victorycapital.com domain name in connection with a bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof because Respondent is deceitfully attracting internet traffic away from Complainant to a non-resolving site. Non-use of a disputed domain name, without further explanation, fails to demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Here, Complainant submits a screenshot showing that the disputed domain name resolves only to a website displaying the message “Site Offline. This website has been disabled for technical reasons. Please contact the site administrator for more information.” Respondent has not participated in these proceedings and so, in light of the evidence presented, the Panel is left with no ground upon which to conclude that Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Registration and Use in Bad Faith
The Panel finds that Complainant has failed to meet its burden of proving bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
First, Complainant asserts that Respondent registered the victorycapital.com domain name with knowledge of Complainant’s rights in the VICTORY CAPITAL Marks based on constructive notice of its USPTO trademark registrations. It is now well accepted that UDRP Panels decline to find bad faith as a result of constructive knowledge except under very specific circumstances which do not exist in the present case. See Levine, Gerald M. The Clash of Trademarks and Domain Names on the Internet, Volume 1, 2024, pages 574 (“In the earliest decisions, panelists appeared willing to accept constructive notice if the parties were located in the same jurisdiction…”). However, over the 25-year existence of the UDRP, a consensus has emerged that constructive notice of trademark rights is typically not sufficient to demonstrate bad faith targeting of a complainant’s mark by a disputed domain name. Id. at 575, citing The Way International, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003). Here, the Panel notes that Respondent appears to be located in London, England and there is no evidence that its activities are specifically directed to commerce in the United States of America and so it may not be subject to the constructive notice provisions of United States law (i.e., 15 U.S.C. §1072). Thus, the Panel is unable to find that Respondent was on constructive notice of Complainant’s rights in its VICTORY CAPITAL Marks.
Next, the Panel notes that the original registration of the victorycapital.com domain appears to predate the existence of Complainant’s trademark rights and there is no evidence of Respondent’s later acquisition of the domain name. Under such circumstances, a complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing that the disputed “domain name has been registered and is being used in bad faith” (emphasis supplied) and it is usually not possible for a registrant to target a then non-existent trademark. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (Respondent registered the domain name before Complainant introduced its mark in commerce. “Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”). Here, the evidence of record indicates that the earliest date on which the Complainant asserts rights to its VICTORY CAPITAL mark is May 1, 2001. This is the date on which the mark was first used in commerce as claimed by Complainant in the USPTO trademark application that ultimately resulted in Registration No. 2696403. However, according to the WHOIS record, the disputed domain name was first registered on May 5, 1999, two year prior to the first existence of Complainant’s mark. The Panel takes note of the Complaint’s statement that “[o]n information and belief, Respondent acquired the VictoryCapital.com domain name in or around May 2021 using a domain name broker”. While the “Updated On” date of the WHOIS record for the disputed domain name does show the date May 12, 2021, this alone does not indicate that Respondent acquired the domain name on that date. Such “Updated” information in WHOIS records can appear for reasons other than the transfer or acquisition of a domain name (e.g., a change of registrar). Complainant has not supplied any further evidence, such as archived WHOIS records, and so its claim of Respondent’s 2021 acquisition of the disputed domain name, which would be subsequent to the existence of trademark rights in the VICTORY CAPITAL Marks, is an unsubstantiated assertion. Thus, based on a preponderance of the evidence before it, the Panel cannot accept the argument that Respondent opportunistically targeted the Complainant’s trademark by registering the disputed domain name and it finds that Complainant has failed to meet its burden of proof under Policy ¶ 4(a)(iii).
Although not essential to the ultimate decision in this case, the Panel notes additional shortcomings in Complainant’s pleadings such as its lack of evidence to support its claim that it “service customers … around the world, including in the United Kingdom” and its assertion that “Respondent has registered the VictoryCapital.com domain name in bad faith for the purpose of disrupting the business of a competitor…” While passive holding of a domain name may indicate bad faith, the analysis is heavily dependent on the reputational scope of an asserted trademark as well as other factors. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The totality of Complainant’s evidence related to the reputation of its claimed marks is a single screenshot from its own www.vcm.com website which displays the mark VICTORY CAPITAL but makes no mention of any activities or customers outside of the United States of America. This does not adequately demonstrate the scope of the mark’s reputation with the public, either domestically or internationally.1
Further, the Complaint states that “[p]rior to filing the instant Complaint, Complainant sought to acquire the VictoryCapital.com domain name by using the domain name registrar’s domain broker service, in response to which the domain name broker advised Complainant that, ‘we would need at least $50,000 USD for it to make sense for this specific owner.'” It goes on to argue that “Respondent’s offer demonstrates an attempt to transfer the domain name for valuable consideration in excess of the documented out-of-pocket costs, and constitutes bad faith registration and use under the UDRP.” However, this is also an unsubstantiated assertion as Complainant submits no evidence to support what is a very material element of its claim. In any event, the claim is internally flawed as it appears that there was no “Respondent’s offer”. Rather, it is Complainant who initiated purchase discussions through a broker (it is not stated whether the broker disclosed Complainant’s identity or acted anonymously), and it is the broker who communicated a target price of $50,000 USD which gives the impression that it was estimating a number that would motivate the domain registrant to negotiate rather than conveying a firm sale offer from that registrant.
In sum, and based on the evidence presented in Complainant’s pleadings, the Panel finds that Complainant has not met its burden of proof under Policy ¶ 4(a)(iii).
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the victorycapital.com domain name REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: December 30, 2024
