Funding Circle Limited v. WhoisGuard Protected / WhoisGuard, Inc.
Claim Number: FA2008001910724
Complainant is Funding Circle Limited (“Complainant”), represented by Emily S. Voorheis, Virginia, USA. Respondent is WhoisGuard Protected / WhoisGuard, Inc. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fundingcircle.us.com>, registered with 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 participated in the mandatory CentralNic Mediation, and the mediation process was terminated.
Complainant submitted a Complaint to the Forum electronically on August 31, 2020; the Forum received payment on August 31, 2020.
On September 1, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <fundingcircle.us.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On September 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 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@fundingcircle.us.com. Also on September 3, 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 September 29, 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 to the CentralNic Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP 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 made the following contentions.
Complainant runs a lending platform for small and midsize businesses. Complainant has rights in the FUNDING CIRCLE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 5,521,796, registered Jul. 24, 2018; Reg. 4,533,121, registered May 20, 2014). See Compl. Ex. B. Respondent’s <fundingcircle.us.com> domain name is identical or confusingly similar to Complainant’s FUNDING CIRCLE mark as it incorporates the mark in its entirety and removes the space, while adding the “.us” and “.com” country-code top level domain (“ccTLD”) and generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <fundingcircle.us.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant never authorized Respondent to use its FUNDING CIRCLE mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent hosts competing pay-per-click ads on the disputed domain name’s resolving website.
Respondent registered or uses the <fundingcircle.us.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by hosting competing pay-per-click ads at the disputed domain name’s resolving website. Respondent also disrupts Complainant’s business by attempting to pass off as Complainant and phish for confidential information in email exchanges. Respondent registered the disputed domain name with knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United Kingdom company that operates a prominent lending platform for small and midsize businesses.
2. Complainant has established its trademark rights in the FUNDING CIRCLE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 5,521,796, registered Jul. 24, 2018; Reg. 4,533,121, registered May 20, 2014).
3. Respondent registered the <fundingcircle.us.com> domain name on April 5, 2019.
4. Respondent uses the disputed domain name to host competing pay-per-click advertisements on its resolving 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 or is being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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”).
Identical and/or Confusingly Similar
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 FUNDING CIRCLE mark through its multiple registrations with the USPTO. (e.g. Reg. 5,521,796, registered Jul. 24, 2018; Reg. 4,533,121, registered May 20, 2014). See Compl. Ex. B. Registration with the USPTO is generally sufficient in establishing rights in a mark under Policy ¶ 4(a)(i). 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). Therefore, the Panel finds Complainant has rights in the FUNDING CIRCLE 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 FUNDING CIRCLE mark. Complainant argues that the <fundingcircle.us.com> domain name is identical or confusingly similar to its FUNDING CIRCLE mark as it incorporates the mark in its entirety, eliminates the space between the mark’s words, and adds both the “.us” ccTLD and the “.com” gTLD to the end. Under Policy ¶ 4(a)(i), removing a space and adding both a ccTLD and a gTLD are generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”); see also W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the gTLD “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance). The disputed domain name incorporates the mark in its entirety and removes the space between the two words, while adding the both the “.us” ccTLD and the “.com” gTLD to the mark. Therefore, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark under 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 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”).
(a) Respondent has chosen to take Complainant’s FUNDING CIRCLE trademark and to use it in its domain name, adding what purports to be the “.us” and “.com” gTLDs which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <fundingcircle.us.com> domain name on April 5, 2019;
(c) Respondent uses the disputed domain name to host competing pay-per-click ads on its resolving website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <fundingcircle.us.com> domain name, as Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its FUNDING CIRCLE mark in the disputed domain name. Where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii), even where Respondent’s information is hidden behind a WHOIS privacy guard. See Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”). Respondent’s WHOIS information is hidden behind a privacy guard, and nothing in the record rebuts Complainant’s assertions that Respondent is not commonly known by the disputed domain name and is not authorized to use its mark in the disputed domain name. See Compl. Ex. A. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(a)(i);
(f) Complainant argues that Respondent does not use the <fundingcircle.us.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii), but instead hosts pay-per-click links for competing and related services at the disputed domain name’s resolving website. Using a disputed domain name to divert internet users seeking Complainant’s services to a disputed domain name’s resolving website, where Respondent hosts hyperlinks related to and competitive with Complainant’s business is generally not considered a bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the disputed domain name’s resolving website, which features pay-per-click links to sites that Complainant claims are competitors with Complainant’s business. See Compl. Ex. C. As the Panel agrees, it finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
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 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 name was registered in bad faith or has 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 name was registered or used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered or uses the <fundingcircle.us.com> domain name in bad faith by disrupting Complainant’s business for commercial gain. Attempting to divert internet users seeking Complainant’s services to a disputed domain name’s resolving website, where Respondent hosts competing pay-per-click links, is generally considered bad faith disruption for commercial gain under Policy ¶ 4(b)(iii) and (iv). See For Your Ease Only, Inc v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1791755 (Forum July 16, 2018) (“[T]he evidence shows that Respondent previously used the domain names to resolve to websites which hosted links to Complainant’s competitors; this demonstrates bad faith under Policy ¶¶ 4(b)(iii) and (iv).”). Using a disputed domain name to pass off as Complainant in emails is also considered disruptive under Policy ¶ 4(b)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel recalls Complainant’s screenshot of the disputed domain name’s resolving website, which features presumably pay-per-click links to sites that Complainant argues compete with Complainant’s business. Complainant also provides screenshots of an email exchange with someone using the disputed domain name to send emails asking for confidential information. See Compl. Ex. D. As the Panel agrees, it finds Respondent registered or uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent registered the <fundingcircle.us.com> domain name in bad faith as it had knowledge of Complainant’s rights in the mark at the time of registration. Under Policy ¶ 4(a)(iii), constructive knowledge is generally insufficient to establish bad faith, but actual knowledge may be sufficient, and may be demonstrated by Respondent incorporating a well-known/used mark into its disputed domain name. 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”). The Panel notes that Complainant has trademark rights in the FUNDING CIRCLE mark. Complainant also argues it has used the mark since as early as April 2011. Therefore, the Panel finds Respondent registered the disputed domain name in bad faith with actual knowledge of Complainant’s rights in the mark under 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 CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fundingcircle.us.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 30, 2020
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