MGG Investment Group LP filed a UDRP against the registrant of the domain name mgcinv.com. The Complainant operates from the domain mgginv.com.
The rationale, per the UDRP filing at Forum (NAF):
Respondent’s mgcinv.com domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the MGG mark in its entirety, replaces the letter “g” with the letter “c”, and adds the letters “inv” and the “.com” generic top-level domain
Furthermore, the Complainant asserts that the Respondent’s web site is attempting to pass off (pretend to be) as the Complainant. We don’t see the similarity, in fact, the two web sites could not be more dissimilar:
Per the UDRP, “Respondent contends that Respondent uses an email address incorporating the disputed domain name in conjunction with Respondent’s property management business, and that the domain reflects the name of the business. Respondent provides evidence that it is owned by Matthew Gene Clausen and is acknowledged by the state of Wisconsin as an LLC. A snapshot of its website shows it is a real estate investment and property management company.
And that’s why the sole panelist at the Forum (NAF), Hon. Karl V. Fink, ordered the domain mgcinv.com to remain with the Respondent.
The domain transfer was denied.
MGG Investment Group LP v. M C
Claim Number: FA2209002011207
PARTIES
Complainant is MGG Investment Group LP (“Complainant”), represented by Scott Kareff of Schulte Roth & Zabel LLP, New York, USA. Respondent is M C (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is mgcinv.com, registered with FastDomain Inc..
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl v. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on September 7, 2022; the Forum received payment on September 12, 2022.
On September 8, 2022, FastDomain Inc. confirmed by e-mail to the Forum that the mgcinv.com domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 September 13, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 2022 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@mgcinv.com. Also on September 13, 2022, 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.
A timely Response was received and determined to be complete on September 15, 2022.
On September 23, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, MGG Investment Group LP, offers investment advising services. Complainant asserts common law rights in the MGG mark. Respondent’s mgcinv.com domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the MGG mark in its entirety, replaces the letter “g” with the letter “c”, and adds the letters “inv” and the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the mgcinv.comdomain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the MGG mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an inactive webpage that Complainant contends could be used to pass Respondent off as Complainant in conjunction with a phishing scheme.
Respondent registered and uses the mgcinv.com domain name in bad faith. Respondent registered the disputed domain name to pass itself off as affiliated with Complainant and divert customers for commercial gain. Respondent registered the disputed domain name to participate in phishing. The disputed domain name does not resolve to an active webpage. Respondent fails to provide accurate WHOIS information. Respondent engaged in typosquatting.
B. Respondent
Respondent, M C, is the owner of a small property management business. Respondent registered the mgcinv.com domain name on August 10, 2022. Respondent argues that the disputed domain name is not confusingly similar to Complainants MGG mark, as the domain reflects the name of Respondent’s legitimate business.
Respondent contends that Respondent has rights and legitimate interests in the disputed domain name. Respondent uses an email address incorporating the disputed domain in conjunction with Respondent’s small business, and thus uses the disputed domain name for a bona fide offering of goods or services. Respondent currently makes active use of the domain. Respondent has not engaged nor intends to engage in phishing. Respondent does not purport to be affiliated in any way with Complainant.
Respondent did not register or use the disputed domain name in bad faith. Respondent does not purport to be affiliated with Complainant and does not seek to divert internet users for commercial gain. Rather, Respondent uses the disputed domain name for the legitimate operation of Respondent’s small business. Respondent has not engaged nor intends to engage in phishing or typosquatting. Respondent has not attempted to conceal Respondent’s identity, and the WHOIS information reflects Respondent’s initials as well as Respondent’s full name. Respondent was unaware of the existence of Complainant until the instant proceedings.
FINDINGS
For the reasons set forth below, the Panel finds that Complainant is not entitled to the requested relief of transfer of the mgcinv.com domain name.
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.”
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.
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), then the burden shifts to Respondent to show 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”).
The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
Respondent argues that Respondent has rights and legitimate interests in the disputed domain name because Respondent is making active use of the domain name and uses the disputed domain name in conjunction with Respondent’s legitimate small business. Where a domain name is descriptive of a Respondent’s business, the Panel may find that Respondent has made a bona fide offering of services per Policy ¶ 4(c)(i). See Heart of Success, Inc. v. PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER, FA 1689461 (Forum Oct. 10, 2016) (“The records of the case show that the domain name acquired by Respondent is descriptive of the services it has offered online since the domain name registration date… Therefore, the Panel agrees that the circumstances of the instant case indicate that Respondent has not attempted to take advantage of the trademark value of Complainant’s mark and has made a bona fide offering of services per Policy ¶ 4(c)(i).”); see also SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services). Respondent contends that Respondent uses an email address incorporating the disputed domain name in conjunction with Respondent’s property management business, and that the domain reflects the name of the business. Respondent provides evidence that it is owned by Matthew Gene Clausen and is acknowledged by the state of Wisconsin as an LLC. A snapshot of its website shows it is a real estate investment and property management company.
The Panel finds that Respondent possesses rights and legitimate interests in the disputed domain name, per Policy ¶ 4(a)(ii).
Complainant has not proved this element.
Identical and/or Confusingly Similar and Registration and Use in Bad Faith
Since the Panel concludes that Complainant has not established that Respondent lacks rights or legitimate interests in respect of the domain name, the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
DECISION
Complainant 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 mgcinv.com domain name REMAIN WITH Respondent.
Hon. Karl V. Fink (Ret.) Panelist
September 30, 2022
