Opportunity Financial, LLC v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1908001857374
Complainant is Opportunity Financial, LLC (“Complainant”), represented by Liz Brodzinski of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <loansopp.com> and <opploansonlinenow.com>, registered with Internet Domain Service BS Corp.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 14, 2019; the Forum received payment on August 14, 2019.
On August 21, 2019, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <loansopp.com> and <opploansonlinenow.com> domain names are registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the names. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 August 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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@loansopp.com, postmaster@opploansonlinenow.com. Also on August 21, 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 September 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the disputed domain names resolve to similar websites intended to collect personal identifying and financial information from Complainant’s customers. The disputed domain names’ resolving websites both contain similar headings on the front pages, including variations of “Get Started Now” and “How it Works.” Both domain names use Complainant’s trademark in conjunction with claims to offer payday loans of up to $1000 and seek customer input of email addresses and zip codes. See Compl. Ex. 6. Moreover, based on the information available to Complainant at the time of filing, Complainant believes that the disputed domain names both appear to be registered through the same registrar, registrant, privacy service, and hosting provider. See Compl. Ex. 4.
The Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The proceeding may therefore go forward in its present form as the Complaint relates to more than one domain name, but in a real and practical sense they are registered by the same domain name holder.
A. Complainant
Complainant made the following contentions.
Complainant is a financial services company that provides personal, short-term instalment loans. Complainant has rights in the OPPLOANS mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,042,920, registered Sep. 13, 2016). See Compl. Ex. 5. Respondent’s <loansopp.com> and <opploansonlinenow.com> domain names are confusingly similar to Complainant’s OPPLOANS mark as: (1) the <loansopp.com> domain name transposes the first and second portions of the mark and adds a “.com” generic top-level domain (“gTLD”); and (2) the <opploansonlinenow.com> domain name incorporates the mark along with the generic terms “online,” “now,” and a “.com” gTLD.
Respondent has no rights or legitimate interests in the <loansopp.com> and <opploansonlinenow.com> domain names. Respondent is not authorized to use Complainant’s OPPLOANS mark nor commonly known by either disputed domain name. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to sell personal loans and cash advances that directly compete with Complainant’s financial services.
Respondent registered and uses the <loansopp.com> and <opploansonlinenow.com> domain names in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain names where it passes off as Complainant to offer competing, financial services. Furthermore, Respondent had actual knowledge of Complainant’s rights in the OPPLOANS mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of financial services and personal, short-term instalment loans.
2. Complainant has established its trademark rights in the OPPLOANS mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,042,920, registered Sep. 13, 2016).
3. Respondent registered the <loansopp.com> and <opploansonlinenow.com> domain names on December 30, 2016 and August 6, 2018, respectively.
4. Respondent uses the disputed domain names to sell personal loans and cash advances that directly compete with Complainant’s financial services.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the OPPLOANS mark based upon registration of the mark with the USPTO (e.g., Reg. No. 5,042,920, registered Sep. 13, 2016). See Compl. Ex. 5. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the OPPLOANS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OPPLOANS mark. Complainant argues Respondent’s <loansopp.com> and <opploansonlinenow.com> domain names are confusingly similar to the OPPLOANS mark, as (1) the <loansopp.com> domain name transposes the first and second portions of the mark and adds a “.com” gTLD; and (2) the <opploansonlinenow.com> domain name incorporates the mark along with the generic terms “online,” “now,” and a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also T. Rowe Price Group, Inc. v. Venkateshwara Distributor Private Limited. / HEMANG INFRASRUCTURE PRIVATE LIMITED, FA 1705342 (Forum Jan. 16, 2017) (“Respondent’s <tpricerowe.com> differs from the mark by inverting the words “Rowe” and “price” in the mark. Inverting the words in a mark is not sufficient to overcome a finding of confusing similarity.”); Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel therefore finds that the <loansopp.com> and <opploansonlinenow.com> domain names are confusingly similar to the OPPLOANS mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s OPPLOANS trademark and to use it in its domain names, with the <loansopp.com> domain name transposing the first and second portions of the mark and the <opploansonlinenow.com> domain name incorporating the mark along with the generic terms “online” and “now” that do not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <loansopp.com> and <opploansonlinenow.com> domain names on December 30, 2016 and August 6, 2018, respectively;
(c) Respondent uses the disputed domain names to sell personal loans and cash advances that directly compete with Complainant’s financial services
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <loansopp.com> and <opploansonlinenow.com> domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the OPPLOANS mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Domain Admin / Whois Privacy Corp.,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <loansopp.com> and <opploansonlinenow.com> domain names;
(f) Complainant argues Respondent’s lack of rights or legitimate interests in the <loansopp.com> and <opploansonlinenow.com> domain names is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the names resolve to competing websites. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Specifically, Complainant contends that the domain names resolve to a website that purports to offer cash advances and personal loans that arguably compete with Complainant’s business. See Compl. Exs. 6 and 7 (comparing Complainant and Respondent’s websites). Complainant argues that the website gives the false impression that it is affiliated with, and authorized by, Complainant. The Panel therefore finds that Respondent does not have rights or legitimate interests in the <loansopp.com> and <opploansonlinenow.com> domain names.
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 names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits Respondent’s use of the <loansopp.com> and <opploansonlinenow.com> domain names to pass itself off as Complainant in order to compete with Complainant’s business demonstrates that Respondent registered and used the domain names in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant submits the at-issue domain names resolve to a website that offers financial services, including cash advances and personal loans. See Compl. Ex. 6. The Panel therefore finds Respondent registered and used the domain names in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Secondly, Complainant contends that in light of the fame and notoriety of Complainant's OPPLOANS mark, it is inconceivable that Respondent could have registered the <loansopp.com> and <opploansonlinenow.com> domain names without actual knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, as UDRP prior decisions generally decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further asserts that Respondent’s use of the domain names to pass itself off as Complainant in order to offer competing financial services indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the domain names in bad faith.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the OPPLOANS mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <loansopp.com> and <opploansonlinenow.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 13, 2019
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