Randall E. Ellington v. Jonathan Williams / SmartWealth
Claim Number: FA1904001838728
Complainant is Randall E. Ellington (“Complainant”), represented by Jaime Rich Vining of Friedland Vining, P.A., Florida, USA. Respondent is Jonathan Williams / SmartWealth (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smartwealthllc.com>, registered with Network Solutions, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 15, 2019; the Forum received payment on April 15, 2019.
On April 15, 2019, Network Solutions, LLC confirmed by e-mail to the Forum that the <smartwealthllc.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 April 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2019 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@smartwealthllc.com. Also on April 17, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i)Complainant is the principal and Managing Member of Florida-based SmartWealth, LLC. Since at least as early as 2003, Complainant, through SmartWealth, LLC, has assisted clients with financial balance and navigating through the labyrinth of tax, legal, practical, and family considerations with respect to wealth management and estate planning. Complainant has rights in the SMARTWEALTH mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,978,974, registered July 26, 2005). See Compl. Ex. B. Respondent’s disputed domain name is confusingly similar to Complainant’s mark as it incorporates the entire SMARTWEALTH mark while adding the corporate designator “LLC” along with the “.com” generic top-level domain (“gTLD”).
ii)Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name because even though the WHOIS information lists the registrant as “Jonathan Williams / SmartWealth,” no other entity in the State of Florida is known by the terms “smart” and “wealth.” See Compl. Ex. A. Further, Complainant has neither authorized nor licensed Respondent to use or register a domain name that incorporates Complainant’s SMARTWEALTH mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts to commercially benefit off Complainant’s mark by reproducing the mark and Complainant’s business name throughout the resolving webpage. See Compl. Ex. F.
iii)Respondent registered and uses the <smartwealthllc.com> domain name in bad faith. Respondent uses the domain name in an attempt to commercially benefit by falsely suggesting an association with Complainant and divert Internet users to its competing website, thereby disrupting Complainant’s business. See Compl. Ex. F. Further, Respondent failed to respond to Complainant’s attempts to resolve this matter outside of legal proceedings. Additionally, as Respondent appears to be a Florida-based competitor, Respondent undoubtedly had actual knowledge of Complainant’s SMARTWEALTH mark prior to registering the domain name.
B. Respondent
Respondent did not submit a response in this proceeding.
1. Respondent registered the disputed domain name on August 21, 2018.
2. Complainant has established rights in the SMARTWEALTH mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,978,974, registered July 26, 2005).
3. The resolving webpage of the disputed domain name displays the “SmartWealth” name in various locations and purports to offer information relating to wealth management and growth.
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.
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”).
Complainant claims rights in the SMARTWEALTH mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,978,974, registered July 26, 2005). See Compl. Ex. B. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of 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).”). Accordingly, the Panel finds that Complainant has established rights in the SMARTWEALTH mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s disputed domain name is confusingly similar to Complainant’s mark as it incorporates the entire SMARTWEALTH mark while adding the corporate designator “LLC” along with the “.com” gTLD. The addition of generic or descriptive terms and a gTLD generally fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel therefore finds that the disputed domain name is confusingly similar to the SMARTWEALTH mark under Policy ¶ 4(a)(i).
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”).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name despite the WHOIS information listing otherwise, and Complainant has neither authorized nor licensed Respondent to use or register a domain name that incorporates Complainant’s SMARTWEALTH mark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). Further, absent affirmative evidence, a respondent is not automatically considered commonly known by a domain name where the WHOIS information suggests an affiliation. See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). The WHOIS identifies “Jonathan Williams / SmartWealth” as the registrant, however Complainant states that no other entity besides Complainant in the State of Florida is known by the terms “smart” and “wealth.” See Compl. Exs. A and E. Complainant also avers that it never authorized Respondent to use the mark for any purpose. Accordingly, the Panel agrees that Respondent is not commonly known by the <smartwealthllc.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent attempts to commercially benefit off Complainant’s mark by reproducing the mark and Complainant’s business name throughout the resolving webpage. Using a confusingly similar domain name to pass off as a complainant can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”). Complainant provides various screenshots of the resolving webpage, which displays the “SmartWealth” name in various locations and purports to want “to see more people educated in a truly successful wealth-creation process and embark on a journey that will enrich their lives over the long term.” See Compl. Ex. F. Accordingly, the Panel finds that Respondent attempts to pass off as Complainant, failing to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant claims that Respondent uses the disputed domain name in an attempt to commercially benefit by falsely suggesting an association with Complainant and divert Internet users to its competing website, thereby disrupting Complainant’s business. Using a confusingly similar domain name to trade upon the goodwill of a complainant and offer competing services for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) where the respondent used the domain name to offer competing cryptocurrency products).
The Panel recalls Complainant’s various screenshots of the resolving webpage, which displays the “SmartWealth” name in various locations and purports to offer information relating to wealth management and growth. See Compl. Ex. F. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the SMARTWEALTH mark at the time of registering the <smartwealthllc.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that Respondent’s knowledge can be inferred as Respondent appears to be a Florida-based competitor, where Complainant principally operates. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <smartwealthllc.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 13, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page