Addepar, Inc. v. Sheila Strong
Claim Number: FA1910001869247
Complainant is Addepar, Inc. (“Complainant”), represented by Jessica Sganga of Knobbe Martens Olson & Bear LLP, California, USA. Respondent is Sheila Strong (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <addepar.app>, registered with GoDaddy.com, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 30, 2019; the Forum received payment on October 30, 2019.
On October 31, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <addepar.app> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 November 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@addepar.app. Also on November 1, 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.
A timely Response was received and determined to be complete on November 25, 2019.
On November 26, 2019, Complainant’s timely additional submission was received.
All submissions were considered by the Panel.
On November 26, 2019, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant offers innovative products and services, including a software app, in the field of wealth and asset management. Complainant has rights in the ADDEPAR mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,278,634, registered Jan. 22, 2013). Respondent’s <addepar.app> domain name is identical or confusingly similar to Complainant’s mark as the name includes the mark in its entirety and adds the “.app” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <addepar.app> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely inactively holding the disputed domain name.
Respondent registered and used the <addepar.app> domain name in bad faith as Respondent is passively holding the disputed domain name. Additionally, Respondent used a privacy service to register the domain name and, Respondent had knowledge of Complainant’s ADDEPAR mark at the time of registration.
B. Respondent
Respondent is the developer of an application that tracks outstanding paperwork of job applicants. Respondent registered the <addepar.app> domain name on May 26, 2019. Respondent’s <addepar.app> domain name is not confusingly similar as the name of Respondent’s product is “Add ePAR” as opposed to Complainant’s mark of ADDEPAR.
Respondent is using the <addepar.app> domain name to offer a bona fide offering of goods or services. Specifically, Respondent intends to use the <addepar.app> domain name to offer tools to HR professionals, which is different from Complainant’s business.
Respondent registered and used the <addepar.app> domain name in good faith, as Respondent registered the domain name in preparation for Respondent’s app development.
C. Complainant’s Additional Submission
There is no evidence to support Respondent’s claims in her Response that she plans to use the disputed domain name in connection with a human resources app called “Add ePAR”.
Respondent attempts to differentiate her product’s name “Add ePAR” from Complainant’s registered ADDEPAR mark by focusing on the space in between “Add” and “ePAR”. This is not convincing as the disputed domain name is <addepar.app> with no spaces or hyphens.
Respondent’s claim that “prior to receiving any notice of the dispute from the Complainant, Respondent began development of the Add ePAR application components” is not adequately supported.
The overwhelming evidence establishes that Respondent acted in bad faith at the date of registration of the disputed domain.
For the reasons set forth below the Panel finds that Complainant is entitled to the requested relief of transfer of the <addepar.app> domain name.
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.
Complainant claims rights in the ADDEPAR mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,278,634, registered Jan. 22, 2013). Registration with the USPTO is sufficient to demonstrate rights in a mark under 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).”). The Panel finds that the Complainant has rights in the ADDEPAR mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <addepar.app> domain name is identical or confusingly similar to Complainant’s mark as Respondent includes the mark in its entirety and adds the “.app” gTLD. Taking a complainant’s mark in its entirety and merely adding a gTLD does not sufficiently distinguish a disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i). Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). The Panel finds that Respondent’s <addepar.app> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 the Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <addepar.app> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interests in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information identifies the Respondent as “Sheila Strong” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next Complainant argues that Respondent fails to use the <addepar.app> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent inactively holds the disputed domain name. Inactively holding a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the disputed domain name’s resolving webpage which appears to be an empty webpage.
Respondent argues that preparations are being made to use the disputed domain name in a business different from Complainant’s. Such an argument is not sufficient to justify the use of another’s trademark in a domain name. The Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant alleges that Respondent registered the disputed domain name in bad faith as Respondent is passively holding the disputed domain name. Registering a disputed domain name merely to hold it as an empty webpage may confuse Internet users as to the status of the complainant and may constitute a disruptive use under Policy ¶ 4(b)(iii). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).) Complainant provides a screenshot of the disputed domain name’s resolving webpage which appears to be an empty webpage. This is evidence that Respondent registered and uses the <addepar.app> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent had knowledge of Complainant’s rights in the ADDEPAR mark at the time of registering the <addepar.app> domain name. Actual knowledge can adequately demonstrate 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”). To support this assertion, Complainant points to its trademark registrations, the fame of its mark and the fact that Respondent used the “.app” gTLD. Respondent does not deny knowledge of Complainant’s trademark before the domain name was registered. The Panel finds that Respondent did have actual knowledge of Complainant’s rights in its mark and registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <addepar.app> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
December 3, 2019
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