Early Warning Services, LLC v. Dekari Wright
Claim Number: FA2007001904407
Complainant is Early Warning Services, LLC (“Complainant”), represented by George C. Chen of Bryan Cave Leighton Paisner LLP, Arizona, USA. Respondent is Dekari Wright (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <zelle-pay.us>, <zelle-review.us>, <zellepayreview.us>, <zellereview.us>, and <zelleinquiry.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com; NameCheap, Inc..
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 July 15, 2020; the Forum received payment on July 15, 2020.
On July 16, 2020; Jul 17, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com; NameCheap, Inc. confirmed by e-mail to the Forum that the <zelle-pay.us>, <zelle-review.us>, <zellepayreview.us>, <zellereview.us>, and <zelleinquiry.us> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com; NameCheap, Inc. and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com; NameCheap, Inc. has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com; NameCheap, Inc. 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 July 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2020 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@zelle-pay.us, postmaster@zelle-review.us, postmaster@zellepayreview.us, postmaster@zellereview.us, postmaster@zelleinquiry.us. Also on July 24, 2020, 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 August 18, 2020, 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.
A. Complainant
Complainant made the following contentions.
Complainant, Early Warning Services LLC, operates a digital payment network. Complainant has rights in the ZELLE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,277,307, registered on August 29, 2017). See Amend. Compl. Ex. 4. The <zelle-pay.us>, <zelle-review.us>, <zellepayreview.us>, <zellereview.us>, and <zelleinquiry.us> domain names are confusingly similar to the ZELLE mark as they each incorporate the mark in its entirety, merely adding generic terms such as “pay,” “review,” and “inquiry,” as well as the “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <zelle-pay.us>, <zelle-review.us>, <zellepayreview.us>, <zellereview.us>, and <zelleinquiry.us> domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the ZELLE mark. Additionally, nothing indicates that Respondent has rights in a mark identical to any of the disputed domain names. Further, Respondent does not make a bona fide offering of goods or services via the disputed domain names, nor a legitimate noncommercial or fair use under. Instead, Respondent merely trades off the goodwill associated with Complainant’s mark to attract Internet users to its website.
Respondent registered or uses the <zelle-pay.us>, <zelle-review.us>, <zellepayreview.us>, <zellereview.us>, and <zelleinquiry.us> domain names in bad faith. Respondent demonstrates a pattern of bad faith registration through the registration of multiple confusingly similar domain names. Also, Respondent uses the domain names to attract users for commercial gain. Additionally, Respondent likely uses the disputed domain names in connection with phishing. Finally, Respondent had actual knowledge of Complainant’s rights in the ZELLE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates a digital payment network.
2. Complainant has established its trademark rights in the ZELLE mark based upon the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,277,307, registered on August 29, 2017).
3. Respondent registered the <zelle-pay.us> domain name on June 6, 2020, the <zellereview.us> domain name on June 16, 2020, the <zelle-review.us> domain name on June 23, 2020, and the <zellepayreview.us> and the <zelleinquiry.us> domain names on June 24, 2020.
4. Respondent has used the disputed domain names to trade off the goodwill associated with Complainant’s mark to attract Internet users to its website.
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 submits that it has rights in the ZELLE mark based upon registration of the mark with the USPTO. Registration of a mark with a trademark authority such as the USPTO demonstrates rights in the mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of registration with the USPTO (e.g., Reg. No. 5,277,307, registered on August 29, 2017) See Amend. Compl. Ex. 4. The Panel therefore finds Complainant has rights in the ZELLE mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s ZELLE mark. Complainant argues that the <zelle-pay.us>, <zelle-review.us>, <zellepayreview.us>, <zellereview.us>, and <zelleinquiry.us> domain names are confusingly similar to the ZELLE mark as they each incorporate the mark in its entirety, merely adding generic words such as “pay,” “review,” and “inquiry,” as well as the “.us” ccTLD. Additions of generic or descriptive words and a ccTLD are generally insufficient to overcome confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i). See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). Thus, the Panel agrees that the disputed domain names are confusingly similar to Complainant’s ZELLE mark.
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”).
(a) Respondent has chosen to take Complainant’s ZELLE trademark and to use it in its domain names, adding generic words such as “pay,” “review,” and “inquiry” which do not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <zelle-pay.us> domain name on June 6, 2020, the <zellereview.us> domain name on June 16, 2020, the <zelle-review.us> domain name on June 23, 2020, and the <zellepayreview.us> and the <zelleinquiry.us> domain names on June 24, 2020;
(c) Respondent has used the disputed domain names to trade off the goodwill associated with Complainant’s mark to attract Internet users to its website;
(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 <zelle-pay.us>, <zelle-review.us>, <zellepayreview.us>, <zellereview.us>, and <zelleinquiry.us> domain names because Respondent is not commonly known by the disputed domain name and has not been authorized by Complainant to use the ZELLE mark. When no response is submitted, WHOIS information and evidence of authorization may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(iii). 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). The WHOIS information of record lists the registrant as “Dekari Wright” and no information suggests that Complainant authorized Respondent’s use of the ZELLE mark. The Panel therefore finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(iii) ;
(f) Complainant submits that Respondent has no rights in a mark identical to any of the disputed domain names. Lack of evidence of any rights in a mark corresponding with the disputed domain names indicates a lack of rights and legitimate interests in the domain names under Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Since Respondent provides no evidence of trademark rights, the Panel concludes that Respondent has failed to meet the requirements of Policy ¶ 4(c)(i);
(g) Complainant argues that Respondent does not make a bona fide offering of goods or services via the disputed domain names, nor a legitimate noncommercial or fair use and instead merely trades off the goodwill associated with Complainant’s mark to attract Internet users to its websites. Use of a confusingly similar domain name to attract users to one’s own website is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv). See Pfizer Inc. v. Internet Gambiano Prods LLC., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was “clearly well-known” at the time of the respondent’s registration of the domain name the panel could infer that the respondent acted for the purpose of “capitalizing on the confusion created by the domain name’s similarity to the [m]ark”). Complainant provides screenshots of the websites at the disputed domain names and submits that Respondent uses the ZELLE mark to mislead consumers and tarnish Complainant’s reputation. See Amend. Compl. Exs. 7-11. As the Panel agrees, the Panel finds that Respondent does not use the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).
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 or 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 contends that Respondent registered the <zelle-pay.us>, <zelle-review.us>, <zellepayreview.us>, <zellereview.us>, and <zelleinquiry.us> domain names in bad faith since Respondent demonstrates a pattern of bad faith registration through the registration of multiple confusingly similar domain names. Registration of multiple domain names incorporating the same mark may evidence a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Since Respondent registered five domain names incorporating the ZELLE mark, the Panel agrees that Respondent has established a pattern of bad faith registration under Policy ¶ 4(b)(ii).
Secondly, Complainant also argues that Respondent registered and uses the disputed domain names in bad faith since Respondent uses the domain names to attract users for commercial gain. Use of a disputed domain name to generate Internet traffic by trading off the reputation of a Complainant is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Complainant provides screenshots of Respondent’s websites and claims that Respondent utilizes Complainant’s mark to divert potential users from Complainant’s sites to Respondent’s sites for its own commercial benefit. See Amend. Compl. Exs. 7-11. The Panel agrees with Complainant and finds bad faith registration and use under Policy ¶ 4(b)(iv).
Thirdly, Complainant claims that Respondent likely uses the disputed domain names in connection with phishing. Use of a disputed domain name in connection with a phishing scheme is evidence of bad faith under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant notes that the contact information listed on Respondent’s webpages generally seems accurate for Complainant’s business except for a single customer service phone number. See Amend. Compl. Exs. 7-11. Complainant claims that Respondent is likely attempting to pass itself off as Complainant in order to deceive Complainant’s customers into providing confidential personal or account information. The Panel agrees with Complainant and finds bad faith pursuant to Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the ZELLE mark. Actual knowledge of a complainant’s rights in a mark may demonstrate bad faith registration under Policy ¶ 4(a)(iii) and may be shown through registration of multiple domain names incorporating the same mark. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). Complainant claims that Respondent must have had knowledge of Complainant’s rights in the ZELLE mark since the mark has no common meaning and Respondent uses it entirely in each of the five disputed domain names. As the Panel agrees that actual knowledge is evident, the Panel finds bad faith pursuant to Policy ¶ 4(a)(iii).
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 <zelle-pay.us>, <zelle-review.us>, <zellepayreview.us>, <zellereview.us>, and <zelleinquiry.us> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 19, 2020
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