Oportun, Inc. v. saifhaComp / Patiyan Wongsupan
Claim Number: FA2107001955174
Complainant is Oportun, Inc. (“Complainant”), represented by Ryan Compton of DLA Piper LLP, District of Columbia, USA. Respondent is saifhaComp / Patiyan Wongsupan (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oportuntoday.com>, registered with NameSilo, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 14, 2021; the Forum received payment on July 14, 2021.
On July 14, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <oportuntoday.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 July 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2021 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@oportuntoday.com. Also on July 16, 2021, 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 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist (the "Panel").
After appointment of the Panel, the Forum received a message from Respondent stating: “I wish to transfer the registration of the domain name to you. The domain has been inactive for a long time. If Need transfers please Contact Registrar.”
Having reviewed the communications records, 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 a formal Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in OPORTUN and submits that the domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant’s business and has since used the domain name for a nefarious purpose and in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides financial loan services by reference to the trademark, OPORTUN, registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 4,999,048, registered on July 12, 2016;
2. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating that trademark;
3. Respondent registered the disputed domain name on March 22, 2021 and has since used it to resolve to a website purposing to offer a “Loan online service”, using graphics taken from Complainant’s website in the past; and
4. the domain name is no longer in use.
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.”
As stated, Respondent contacted the Forum offering to transfer the domain name after it got the Complaint. The Panel is in these circumstances permitted to order immediate transfer of the domain name but has taken the view, for reasons which follow, that Respondent acted in bad faith and considers that a decision on the record is in the general interest. Accordingly, the Panel goes on to apply the Policy which under paragraph 4(a) requires that Complainant must prove each of the following three elements to obtain an order that the domain name be 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 based on 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[i].
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[ii]. Complainant provides evidence of several USPTO registrations for OPORTUN and OPORTUN formative marks. Some are in Complainant’s name; some are not. The registration for the word mark, OPORTUN, referenced above, is not in the name of Complainant.
The Complaint states that “Oportun’s predecessor-in-interest, Progreso Financiero was founded in 2005. In January 2015, Progreso Financiero changed its name to Oportun.” This is of little assistance to the Panel since the USPTO registration for OPORTUN is not in the name of Progreso Financiero either.
There is no explanation of this matter and another panelist may have refused the Complaint at this point. However, the Panel observes that a later registration in Complainant’s name carries an endorsement stating the Complainant is the owner of, inter alia, the USPTO registration referenced above and so, after some unnecessary deductive work, the Panel finds that Complainant has rights in the trademark, OPORTUN.
The domain name takes the trademark to which it adds the word “today” together with the gTLD, “.com”. Neither of those additions carries any distinctive value and the trademark remains the recognizable part of the disputed domain name. It follows that the Panel finds the disputed domain name to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[iii].
Accordingly, Complainant has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The publicly available WhoIs information shielded the name of the underlying domain name registrant by a privacy service provider but in consequence of these proceedings the Registrar disclosed the name of the holder as “saifhaComp/Patiyan Wongsupan”. That name does not provide any prima facie evidence that Respondent might be known by the disputed domain name. There is nothing else to suggest that Respondent is commonly known by the domain name and there is no evidence it has trademark rights of its own.
Complainant provides screenshots of the resolving webpages at a time when the domain name was in use. It shows the offer of competitive financial loan services. Complainant questions whether the purportedly competitive services were ever on offer and posits that the website existed only to phish for sensitive personal information.
In either case, the Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name since the use is not a bona fide offering of goods or services or legitimate noncommercial or fair use under the Policy[v].
The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted. The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. The Panel has already found the disputed domain name to be confusingly similar to the trademark. In terms of the Policy, the Panel finds that Respondent has intentionally used the domain name to attract, for commercial gain, Internet users to the resolving website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website.
The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy[vi].
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oportuntoday.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: August 16, 2021
[i] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, for example, Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Forum Jan. 11, 2001) finding <nationalgeographics.com> confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark.
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Florists’ Transworld Delivery v. Malek, FA 676433 (Forum June 6, 2006) holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name; Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) finding that inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”
[vi] See, for example, DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
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