Oportun, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA2009001913461
Complainant is Oportun, Inc. (“Complainant”), represented by Ryan C. Compton of DLA Piper LLP (US), District of Columbia, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oportune.com.co> and <oportuneloan.com>, registered with Internet Domain Service BS Corp; TLD Registrar Solutions Ltd..
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 September 23, 2020; the Forum received payment on September 23, 2020.
On September 24, 2020, Internet Domain Service BS Corp; TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <oportune.com.co> and <oportuneloan.com> domain names are registered with Internet Domain Service BS Corp; TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the names. Internet Domain Service BS Corp; TLD Registrar Solutions Ltd. has verified that Respondent is bound by the Internet Domain Service BS Corp; TLD Registrar Solutions Ltd. 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 October 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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@oportune.com.co, postmaster@oportuneloan.com. Also on October 2, 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 October 27, 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.
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 were registered close to one another in time, have similar verbal structure, and are used in connection with websites that purport to offer the same type of service under Complainant’s marks.
The Panel therefore finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. Thus, the proceeding may go forward on that basis.
A. Complainant
Complainant made the following contentions
Complainant. Oportun Inc., is a technology-powered provider of personal loans. Complainant has rights in the OPPORTUN mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,999,048, registered July 12, 2016). See Compl. Ex. A. Respondent’s <oportune.com.co> and <oportuneloan.com> domain names are confusingly similar to Complainant’s OPPORTUN mark because they each wholly incorporate the mark, merely adding a single letter and/or the term “loan” as well as a top-level domain (“TLD”).
Respondent does not have rights or legitimate interests in the <oportune.com.co> and <oportuneloan.com> domain names. Respondent is not licensed or otherwise permitted to use Complainant’s OPORTUN mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent diverts users seeking Complainant.
Respondent registered and uses the <oportune.com.co> and <oportuneloan.com> domain names in bad faith. Respondent demonstrates a pattern of bad faith registration by registering multiple domain names incorporating Complainant’s mark. Further, there is no good faith explanation for Respondent’s registrations. Finally, Respondent had actual knowledge of Complainant’s rights in the OPORTUN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a technology-powered provider of personal loans.
2. Complainant has rights in the OPPORTUN mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,999,048, registered July 12, 2016).
3. Respondent registered the <oportune.com.co> domain name on July 18, 2020 and the <oportuneloan.com> domain name on May 26, 2020.
4. Respondent has caused the domain names to divert users seeking Complainant to another website that copies Complainant and its website and uses the domain names to extract information from users.
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 OPORTUN mark based upon the registration with the USPTO (e.g., Reg. No. 4,999,048, registered July 12, 2016). See Compl. Ex. A. Registration of a mark with the USPTO is a valid showing of 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).”). Since Complainant provides evidence of its registration of the OPORTUN mark with the USPTO, the Panel finds that Complainant has rights in the 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 OPORTUN mark. Complainant argues that Respondent’s <oportune.com.co> and <oportuneloan.com> domain names are confusingly similar to Complainant’s OPORTUN mark because they each wholly incorporate the mark, merely adding a single letter and/or the term “loan” as well as a TLD. Minor changes such as the addition of individual letters and/or generic or descriptive terms are generally insufficient to overcome confusing similarity between a domain name and a mark under 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).”). Further, the addition of TLDs to a mark are irrelevant in determining confusing similarity. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). Thus, the Panel agrees with Complainant and finds that the disputed domain names are confusingly similar to Complainant’s OPORTUN 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 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 OPORTUN trademark and to use it in its domain names in its entirety;
(b) Respondent registered the <oportune.com.co> domain name on July 18, 2020 and the <oportuneloan.com> domain name on May 26, 2020;
(c) Respondent has caused the domain names to divert users seeking Complainant to another website that copies Complainant and its website and uses the domain names to extract information from users.
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <oportune.com.co> and <oportuneloan.com> domain names because Respondent is not licensed or otherwise permitted to use Complainant’s OPORTUN mark and is not commonly known by the disputed domain names. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), particularly when a privacy service is engaged. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists “Domain Admin / Whois Privacy Corp” as the registrant and no information suggests that Complainant has licensed or authorized Respondent to use the OPORTUN mark. See Amend. Compl. Ex. Y. Thus, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <oportune.com.co> and <oportuneloan.com> domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use but rather simply diverts users seeking Complainant. Use of a confusingly similar domain name to redirect Internet traffic is generally not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is 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).”). Here, Complainant provides screenshots of the pages resolving at the disputed domain names and claims that Respondent uses the domain names to attract users seeking out Complainant. See Compl. Exs. E & F. Complainant additionally notes that the resolving pages purport to offer loan services similar to those of Complainant. The Panel therefore agrees with Complainant that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(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 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 argues that Respondent registered and uses the <oportune.com.co> and <oportuneloan.com> domain names in bad faith because Respondent demonstrates a pattern of bad faith registration. Registration of multiple domain names incorporating the same mark may evidence bad faith pursuant to Policy ¶ 4(b)(ii). See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”). Here, Complainant notes that Respondent has registered two domain names that include the OPORTUN mark. As the Panel agrees, the Panel finds bad faith pursuant to Policy ¶ 4(b)(ii).
Secondly, Complainant argues that there is no good faith explanation for Respondent’s registration of the <oportune.com.co> and <oportuneloan.com> domain names. Under Policy ¶ 4(a)(iii), bad faith registration and use may be found when it is clear from the circumstances that no reasonable good faith use is present. See Albrecht v. Natale, FA 95465 (Forum Sept. 16, 2000) (“The Respondent intentionally registered a domain name which uses the Complainant’s name. There is no reasonable possibility that the name ‘karlalbrecht.com’ was selected at random. There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith.”). Complainant argues that Respondent has presented no legitimate excuse for registering domain names containing Complainant’s OPORTUN mark. As the Panel agrees with Complainant, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the OPORTUN mark. Actual knowledge of a complainant’s marks may evidence bad faith under Policy ¶ 4(a)(iii) and can be shown by the totality of circumstances surrounding registration and use of the domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); 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”). Complainant argues that Respondent’s knowledge is clear from its reference to Complainant’s services on the pages associated with the disputed domain names. As the Panel agrees that actual knowledge is present, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Fourthly, 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 OPORTUN mark and in view of the conduct of Respondent in 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 <oportune.com.co> and <oportuneloan.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 28, 2020
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