Pear Ventures Management, LLC v. EOS NZ
Claim Number: FA1911001871512
Complainant is Pear Ventures Management, LLC (“Complainant”), represented by John W. Crittenden of Cooley LLP, California, United States. Respondent is EOS NZ (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pearventures.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 15, 2019; the Forum received payment on November 15, 2019.
On November 18, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <pearventures.com> 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 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@pearventures.com. Also on November 22, 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 December 17, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that it is an early-stage venture capital firm. Complainant and its affiliates were originally named “Pejman Mar Management, LLC,” “Pejman Mar Ventures, L.P.,” and “Pejman Mar Venture GP, LLC,” respectively. The companies amended their names to “Pear Ventures” in February 2016. Since at least as early as August 16, 2016, Complainant has been using the trademark PEAR in connection with the company’s venture capital financing and business incubator services. Complainant owns two United States trademark registrations for the PEAR trademark, filed on December 16, 2015 and claiming use in U.S. commerce at least as early as August 16, 2016. Complainant alleges that Respondent recently registered the disputed domain name on or around January 20, 2019, however it does not provide any evidence to the effect that Respondent was not the original registrant. Complainant states, and provides evidence to show, that one of its principals previously registered the disputed domain name on or about August 6, 2016; however, as a result of an e-mail error, Complainant was unaware of the deadline for renewing the registration, and the registration expired in March 2018.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s mark as it includes the PEAR mark in its entirety, adding the descriptive term “ventures” and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use the Complainant’s PEAR mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant. Specifically, The resolving website purports to be associated with a venture capital firm; it mimics Complainant’s legitimate website <www.pear.vc> and prominently displays the Complainant’s mark and logo (a stylized pear fruit); the resolving website’s design, nearly all of its images, and much of the content, including the names and identities of team members, are taken directly from Complainant’s website.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant for commercial gain. Additionally, Respondent hosts unrelated third-party hyperlinks. Furthermore, Respondent had actual knowledge of Complainant’s PEAR mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark PEAR VENTURES and uses it to market its venture capital services.
Complainant’s rights in its mark date back to December 16, 2015.
Respondent registered the disputed domain name after that date.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website mimics Complainant’s legitimate website, displaying Complainant’s distinctive logo, and it contains links to third-party websites.
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 disputed domain name incorporates Complainant’s PEAR mark in its entirety, merely adding the descriptive term “venture,” and the gTLD “.com.” The addition of a generic and/or descriptive term and a gTLD, does not distinguish a domain name for purposes of Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel therefore find that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: where a response is absent, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, the WHOIS information of record lists the registrant as “EOS NZ.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per ¶ 4(c)(ii).
Respondent uses the disputed domain name to pass off as Complainant. Specifically, Complainant provides evidence showing that the resolving website includes material copied without authorization from Complainant’s actual website, including its distinctive logo, and hosts links that redirect to third-party websites. Passing off behavior 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). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also Bloomberg Finance L.P. v. Syed Hussain / IBN7 Media Group, FA 1721384 (Forum Apr. 26, 2017) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). The Panel therefore finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
According to 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), in general, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.
The earliest date that Complainant puts forward for its trademark rights is December 16, 2015. According to the WHOIS, the disputed domain name was registered on December 9, 2015.
Complainant alleges that Respondent recently registered the disputed domain name on or around January 20, 2019, this being the WHOIS “Updated Date”, which is the most recent date a change was made to the domain’s WHOIS information. However, Complainant does not provide any evidence to the effect that Respondent was not the original registrant of the disputed domain name, even though it does provide evidence showing that a principal of Complainant was shown as registrant in 2016. The WHOIS “Updated Date” is often very recent, even for domain names that have been registered by the same registrant for a very long time.
According to 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), panels have found that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith.
Hence the fundamental question that the Panel must resolve is whether or not the current registrant had registered the disputed domain name prior to Complainant acquiring its trademark rights.
Complainant does not provide evidence that addresses this question.
As noted above, 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”).
However, according to 4.8 of the cited WIPO Jurisprudential Overview 3.0, a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. In particular, the Panel may consult historical resources.
In this case, the Panel was able to obtain a full historical WHOIS record for the disputed domain name via < https://research.domaintools.com/research/whois-history/search/>. The disputed domain name was registered in 2010 to a person in Israel, in 2012 to a different person in the USA, in 2015 to yet a different person in China, and in 2016 to a principal of Complainant. Respondent does not appear to be related to any of those persons.
Consequently, the Panel finds that Respondent did not merely renew a previous registration and it finds that Respondent’s registration is a new registration for the purposes of the instant proceedings. That registration took place after the Complainant acquired its trademark rights.
Therefore, the registration may have been made in bad faith in the sense of the Policy.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to pass off as Complainant by mimicking Complainant’s website. Directing Internet users to a website that mimics a complainant’s website and uses complainant’s distinctive logo is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Therefore the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Furthermore, also as already noted, Respondent the resolving website hosts unrelated third-party hyperlinks. A respondent’s use of a domain name to display third-party hyperlinks is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Accordingly, the Panel agrees finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv) on this ground also.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pearventures.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 18, 2019
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