Winfield Capital Corp. v. DASC, Inc.
[Indexed as: Winfield Capital Corp. v. DASC, Inc.]
[Indexed as: winfieldcapital.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0349
Commenced: 5 May 2000
Judgment: 11 June 2000
Presiding Panelist: Richard W. Page
Domain name - Domain name dispute resolution policy - U.S. Service mark - Identical - Confusingly similar - Bad faith registration Development services No intent to use domain name.
Complainant, Winfield Capital Corp., was the owner of the U.S. service mark WINFIELD CAPITAL, which has been used since 1972. Respondent registered the domain name, winfieldcapital.com.
HELD, Domain Name Transferred to Complainant.
The registered domain name winfieldcapital.com is identical to complainants
service mark and was not contested by respondent. Respondent also
failed to show any evidence of an intent to use the domain name for its
own purposes and thus had no rights or legitimate interest in the domain
name. It was concluded that the registration and use of the domain
name was in bad faith as Respondent was aware that Winfield Capital did
not have their own web site. Furthermore, Respondent offered Complainant
services for the web site's development.
Policies Referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999.
Page, Panelist: -
1. The Parties
Complainant is Winfield Capital Corp. ("Winfield"), a New York corporation, with a principal place of business located at 237 Mamaroneck Avenue, White Plains, New York 10605 USA.
Respondent is DASC, Inc. ("DASC"), a California corporation with a mailing
address of P.O. Box 5043, Irvine, California 92612 USA
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <winfieldcapital.com>. The registrar is Network Solutions, Inc. (the "Registrar") 505 Huntmar Park Drive, Herndon, Virginia 20170-5139 USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant on April 28, 2000. The Complainant paid the required fee.
On May 2, 2000, the Center sent an Acknowledgment of Receipt of Complaint
to Complainant. Also on May 2, 2000, the Center sent to the Registrar a
request for verification of registration data. On May 3, 2000, the Registrar
confirmed, inter alia, that it is the registrar of the domain
name in dispute and that <winfieldcapital.com> is registered in
the Respondent's name.
On May 5, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On May 5, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On May 26, 2000, the Center advised the Respondent that it was in default. No Response has been received by the Center.
On May 29, 2000 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page, Esq. (the "Presiding Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Presiding Panelist.
4. Factual Background
Founded in 1972, Winfield is a non-diversified company that elects to
be regulated as a business development unit, a type of closed-end investment
company. Using Small Business Administration ("SBA") funds, Winfield lends
to and makes investments in small businesses.
Winfield has been listed on the NASDAQ exchange since 1995 under the
ticker symbol WCAP. As of June 21, 1999, Winfield had a market capitalization
of $96.4 million with 5,255, 904 shares outstanding and over 3,100 beneficial
owners, all of whom know Complainant as
"Winfield Capital."
Complainant owns the service mark WINFIELD CAPITAL, which has been used continuously since 1972 in conjunction with financial services offered to small business concerns throughout the United States.
Since 1972, Complainant has prominently displayed its WINFIELD CAPITAL
mark on all materials advertising, promoting, or describing its services,
including its annual report as well as customer brochures. The WINFIELD
CAPITAL mark has become an indicator of source of
Complainants services as well as the associated goodwill which Complaint
has painstakingly cultivated for the past 28 years that it has been in
business.
Respondent registered <winfieldcapital.com> on June 1, 1999. The domain name does not link to a website or other online presence.
On or about July 1999, Complainant received a letter by facsimile from Jay Aguilar, Respondents listed administrative contact. This letter, which was personally read by Complainants Chairman and CEO, Paul A. Perlin, cannot be located. According to Mr. Perlin, who recalls Mr. Aguilars letter vividly, Mr. Aguilar introduced himself in the letter as a web developer and shareholder of Winfield. Mr. Aguilar further stated that he was aware that Winfield did not have a website of its own and indicated that he wanted Winfield to engage his services to develop its website.
On March 2, 2000, Complainant, through counsel, wrote to Mr. Aguilar.
This letter, which was sent both via overnight U.S. mail and facsimile
to the addresses that Respondent provided to the domain name Registrar,
informed Mr. Aguilar that the domain name registration was
unlawful and demanded that Mr. Aguilar execute a domain name transfer
agreement. The copy of this letter sent via U.S. mail was returned to Complainant
with the message "box closed, no order," indicating the listed address
is not correct. Neither Respondent nor Mr. Aguilar
acknowledged receipt of Complainants counsels facsimile transmission
of this letter. Moreover, the registers of company names and business names
in California do not disclose a registration of a company name or business
name for DASC, Inc., making it impossible for
Complainant to contact Respondent via mail.
5. Parties Contentions
A. Complainant contends that the domain name <winfieldcapital.com> is identical with and confusingly similar to the WINFIELD CAPITAL service mark pursuant to the Policy paragraph 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interest in the domain name <winfieldcapital.com> pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the domain name <winfieldcapital.com> in bad faith in violation of the Policy paragraph 4(a)(iii).
B. Respondent presented no evidence contesting that the domain name <winfieldcapital.com> is identical with or confusingly similar to the WINFIELD CAPITAL service mark.
Respondent presented no evidence contending that it has rights or legitimate interest in the <winfieldcapital.com> domain name.
Respondent presented no evidence contending that it has registered and
used the <winfieldcapital.com> domain name in good faith.
6. Discussion and Findings
Even though Respondent has filed no Response and has offered no evidence
attacking the contentions of Complainant, the Presiding Panelist hereby
reviews the evidence before him to determine whether the Complainant has
supported each of the required elements in its
contentions within the existing record.
Identity or Confusing Similarity.
Complainant is the sole and exclusive owner of the WINFIELD CAPITAL service mark. The domain name <winfieldcapital.com> contains the identical phrase "Winfield Capital." Respondent does not contest that the phrase is identical. Therefore, the Presiding Panelist finds that the domain name <winfieldcapital.com> is identical with and confusingly similar to the service mark WINFIELD CAPITAL pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest.
The evidence demonstrates that since registering the domain name on
June 1, 1999, Respondent has not used <winfeildcapitala.com> to link
to a website or to any other online presence. Respondent has not shown
any demonstrable evidence of an intent to use the domain
name <winfieldcapital.com> for its own purposes prior to the dispute
arising with Complainant. Therefore, the Presiding Panelist finds that
Respondent has no rights or legitimate interest in the domain name <winfieldcapital.com>
pursuant to the Policy paragraph 4(a)(ii).
Bad Faith
The Presiding Panelist has found that Respondent has not used or intended to use the domain name <winfieldcapital.com> for its own purposes prior to the dispute arising with Complainant.
Complainant has offered the testimony of its Chairman and CEO, Paul
A. Perlin, regarding the contents of a letter Complainant received from
Jay Aguilar as Respondents listed administrative contact. Neither the
original nor a copy of the letter can be located. Therefore, Mr. Perlins
testimony is the best evidence of the letters existence and content.
Furthermore, Respondent has not contested either the existence or the content
of the letter.
According to Mr. Perlins recollection, the July 1999 letter to Complainant from Mr. Aguilar, offered Mr. Aguilars services to Complainant for development of a website. Mr. Aguilar asserted he was a shareholder of Winfield at the time he made this offer. Mr. Aguilar further stated that he was aware that Winfield did not have a website of its own.
Therefore, the Presiding Panelist finds that Respondent has registered and used the domain name <winfieldcapital.com> in bad faith pursuant to the Policy paragraph 4(a)(iii).
7. Decision
The Presiding Panelist concludes (a) that the domain name <winfieldcapital.com>
is identical with and confusingly similar to the service mark WINFIELD
CAPITAL, (b) that Respondent has no rights or legitimate interest in the
domain name and (c) that Respondent registered
and used the domain name in bad faith. Therefore, pursuant to paragraphs
4(i) of the Policy and 15 of the Rules, the Panel orders that the domain
name <winfieldcapital.com> be transferred to Complainant Winfield Capital
Corp.