Golub Capital v janet booth, Michael D Amico and Clarence Mankin

WIPO Case No. D2024-2014

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Golub Capital v. janet booth, Michael D Amico and Clarence Mankin

Case No. D2024-2014

1. The Parties

The Complainant is Golub Capital, United States of America, represented by ZeroFox,

United States of America (“United States”).

The Respondents are janet booth, Michael D Amico, and Clarence Mankin, United States.

2. The Domain Names and Registrar

The disputed domain names <golubcapitall.com> and <golubcapitals.com> are registered with

NameSilo, LLC. The disputed domain name <golubscapital.com> is registered with Hostinger Operations,

UAB. These entities shall be referred to herein as the “Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2024.

On May 21, 2024, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain names. On May 21, 2024, the Registrar transmitted by email to the

Center its verification response disclosing registrant and contact information for the disputed domain names

which differed from the named Respondents (PrivacyGuardian.org llc) and contact information in the

Complaint.

The Center sent an email communication to the Complainant on May 23, 2024 with the registrant and

contact information of nominally multiple underlying registrants revealed by the Registrar(s), requesting the

Complainant to either file separate complaint(s) for the disputed domain names associated with different

underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity

and/or that all domain names are under common control. The Complainant filed an amendment to the

Complaint on June 19, 2024.

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” or “UDRP”), 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the

Complaint, and the proceedings commenced on August 9, 2024. In accordance with the Rules, paragraph 5,

the due date for Response was August 29, 2024. There were no email communications from the

Respondents.

The Center appointed Evan D. Brown as the sole panelist in this matter on September 11, 2024. 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.

4. Factual Background

The Complainant is in the business of credit asset management. It owns the mark GOLUB CAPITAL and

enjoys the benefit of registration of that mark in the United States (Reg. No. 4,944,759, registered on

April 26, 2016).

The disputed domain names were registered on the following dates:

- <golubscapital.com> - January 15, 2024

- <golubcapitals.com> - February 27, 2024

- <golubcapitall.com> - February 29, 2024

As of the time of the filing of the Complaint, the disputed domain names did not resolve to any active web

page, and the Complainant asserts that there is no evidence or archive of any content being hosted in the

past. The Complainant also asserts that each of the disputed domain names has an active MX record

associated with them, which suggests preparations for or the intent to engage in email communication under

the guise of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to the

Complainant’s trademark; that the Respondents have no rights or legitimate interests in respect of the

disputed domain names; and that the disputed domain names were registered and are being used in bad

faith.

B. Respondent

The Respondents did not respond to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy

have been satisfied: (i) the disputed domain names are identical or confusingly similar to a trademark or

service mark in which the Complainant has rights, (ii) the Respondents have no rights or legitimate interests

in respect of the disputed domain names, and (iii) the disputed domain names have been registered and are

being used in bad faith. The Panel finds that all three of these elements have been met in this case.

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A. Preliminary Issue: Consolidation of Multiple Respondents

There are three named Respondents (three underlying registrants disclosed by the Registrars) – one for

each of the disputed domain names. The Complainant requests that all three be consolidated into this

matter. Consolidation is proper, so the Complainant’s request for consolidation is granted.

Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple

domain name disputes in accordance with the Policy and these Rules”. Paragraph 10(c) of the Rules

provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with

due expedition”. Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions,

Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation

of multiple respondents and provides that where a complaint is filed against multiple respondents, panels

consider whether the domain names or corresponding websites are subject to common control, and whether

the consolidation would be fair and equitable to all parties.

The record indicates the disputed domain names are under common control. The following facts support this

conclusion:

- The disputed domain names were all registered within a week of each other.

- The disputed domain names all appear to target the same trademark and use the same or similar

typosquatting strategy.

- The disputed domains all use privacy services that obfuscate the true registration details of the particular

domain name owner.

The Respondents have not presented any arguments as to why consolidation would be unfair or inequitable.

Accordingly, conditions for proper consolidation of the disputed domain names into one matter are present

here.

B. Identical or Confusingly Similar

This first element functions primarily as a standing requirement. WIPO Overview 3.0, section 1.7.

The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward

comparison between the complainant’s trademark and the disputed domain name. Id. This element requires

the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and second,

whether the disputed domain name is identical or confusingly similar to that mark.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark

certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde

Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the

GOLUB CAPITAL mark by providing evidence of its trademark registration. See WIPO Overview 3.0,

section 1.2.1.

The disputed domain names are confusingly similar to the GOLUB CAPTIAL mark. Each of the disputed

domain names contains the entirety of the GOLUB CAPITAL mark, but with just one letter inserted – in the

style of garden variety typosquatting.

The Panel finds that the Complainant has established this first element under the Policy.

C. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a

prima facie showing that the Respondents lack rights or legitimate interests in respect of the disputed domain

names. If the Complainant makes that showing, the burden of production of demonstrating rights or

legitimate interests shifts to the Respondents (with the burden of proof always remaining with the

Complainant).

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On this point, the Complainant asserts, among other things, that: (1) the Respondents have not used or

prepared to use the disputed domain names for any bona fide offering of goods or services, (2) the

Respondents have not made any non-commercial or fair use of the disputed domain names, and (3) the

Complainant has not authorized, licensed or otherwise permitted the Respondents to use the GOLUB

CAPITAL mark within any domain name.

The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not

presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the

balance in the Respondent's favor.

Accordingly, the Panel finds that the Complainant has established this second element under the Policy.

D. Registered and Used in Bad Faith

The Policy requires a complainant to establish that the disputed domain name was registered and is being

used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s

bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a

respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to

[respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark

as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or

service on [the respondent’s] website or location”.

In the circumstances of this case, where the Complainant’s mark has been registered with the United States

Patent and Trademark Office, the Panel finds it likely that the Respondents were aware of the mark when it

registered the disputed domain names. In the circumstances of this case, without the benefit of any

explanation whatsoever from the Respondents as to a possible good faith use of the disputed domain

names, such a showing is sufficient to establish bad faith registration of the disputed domain name. See

Decathlon v. Diana Reyes, WIPO Case No. D2022-3027.

The circumstances also demonstrate bad faith use of the disputed domain name. From the inception of the

UDRP, panelists have found that the non-use of a domain name (including a blank page) would not prevent

a finding of bad faith under the doctrine of passive holding (see section 3.3 of the WIPO Overview 3.0).

The Respondents’ bad faith is evidenced by its establishment of MX records with the disputed domain

names, suggesting the disputed domain names could be used to send fraudulent email. See Carrier

Corporation v. DNS Admin, Domain Privacy LTD, WIPO Case No. D2021-3728 (“if the Respondent is using

the disputed domain name to send fraudulent emails – which the MX records suggest is at least a possibility

– then bad faith use is further obvious”).

The Complainant has established this third UDRP element.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel

orders that the disputed domain names <golubcapitall.com>, <golubcapitals.com> and <golubscapital.com>

be transferred to the Complainant.

/Evan D. Brown/

Evan D. Brown

Sole Panelist

Date: September 27, 2024