Forerunner Ventures Management, LLC v. robert kearney / forerunner ventures
Claim Number: FA2010001917526
Complainant is Forerunner Ventures Management, LLC (“Complainant”), represented by John W. Crittenden of Cooley LLP, California, USA. Respondent is robert kearney / forerunner ventures (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <forerunnerventures.us>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 19, 2020; the Forum received payment on October 19, 2020.
On October 20, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <forerunnerventures.us> 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 U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 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@forerunnerventures.us. Also on October 27, 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 November 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 usTLD Dispute Resolution Policy ("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 usTLD Policy, usTLD 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 contends as follows:
Complainant is a venture capital firm dedicated to partnering with entrepreneurs and technology-enabled consumer companies in the field of digital commerce, by providing them capital they need to start their businesses and advice in the field of business strategy.
Complainant has common law trademark rights in the FORERUNNER mark through Complainant’s longstanding use of the mark, Complainant’s identical domain name, and Complainant’s two pending trademark applications.
Respondent’s <forerunnerventures.us> domain name is identical or confusingly similar to Complainant’s FORERUNNER mark as it contains the mark in its entirety and merely adds the “.us” country code top-level domain (“ccTLD”).
Respondent lacks rights or legitimate interests in the <forerunnerventures.us> domain name. Respondent is not commonly known by the at-issue domain name nor has Complainant authorized Respondent to use the FORERUNNER mark. Respondent fails to use the at-issue domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain name to deceive internet users into believing that Respondent is associated or affiliated with Complainant in order to solicit business and financial information.
Respondent registered and uses the <forerunnerventures.us> domain name in bad faith. Respondent uses the at-issue domain name to fraudulently solicit business and financial information from internet users. Furthermore, Respondent uses the <forerunnerventures.us> domain name to intentionally attempt to attract internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in FORERUNNER.
Respondent is not affiliated with Complainant and is not authorized to use the FORERUNNER mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in FORERUNNER.
Respondent uses the at-issue domain name to address a website mimicking Complainant’s genuine website so that it may fraudulently solicit business and financial information from internet 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD 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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
There is no requirement under the UDRP that a complainant must show registration of a trademark to demonstrate its rights therein. Rights may be shown by persuasive evidence of common law trademark rights in a mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”). In the instant case Complainant proffers evidence of FORERUNNER having acquired secondary meaning through Complainant’s public use of such mark in commerce over a period of years and otherwise. Moreover, Respondent, having failed to respond to the Complaint, offers no evidence challenging Complainant’s evidence or contentions regarding it rights in the FORERUNNER mark. Therefore, the Panel finds that Complainant has acquired common law trademark rights in the FORERUNNER mark sufficient for the purposes of Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”).
Respondent’s <forerunnerventures.us> domain name is composed of Complainant’s entire FORERUNNER with the suggestive term “ventures” appended thereto, all followed by the generic top-level domain name “.us.” The differences between Complainant’s trademark and Respondent’s domain name materially do nothing to distinguish the at-issue domain name from Complainant’s trademark. Therefore, the Panel concludes that Respondent’s <forerunnerventures.us> domain name is confusingly similar to Complainant’s FORERUNNER trademark pursuant to Policy ¶ 4(a)(i). See Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017) (finding the <danskoshoes.us.com> domain name to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the “.us” ccTLD and the “.com” gTLD).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <forerunnerventures.us> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “robert kearney.” The record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <forerunnerventures.us> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s at-issue domain name directs internet users to a website mimicking Complainant’s official website. Respondent’s capitalizes on the confusingly similar domain name to pass itself off as Complainant and seeks to benefit from internet traffic intended for Complainant. There, Respondent uses a bogus web form pretending to be associated with Complainant to extract business and financial information from start-up companies erroneously believing that they are in fact dealing with Complainant. Such use of the at-issue domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Given the foregoing, Complainant conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <forerunnerventures.us> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned previously regarding rights and legitimate interests, Respondent uses the confusingly similar <forerunnerventures.us> domain name to fraudulently solicit business and financial information from internet users. Respondent’s use of the at-issue domain name to pass itself off as Complainant in furtherance of a fraud demonstrates Respondent’s bad faith registration and use of <forerunnerventures.us> per Policy ¶¶ 4(b)(iv) and (a)(iii). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 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 Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <forerunnerventures.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 25, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page