Sandhills Global, Inc. / 480 Capital, LLC / CurrencyPay, LLC v. JH Kang
Claim Number: FA2107001955931
Complainant is Sandhills Global, Inc. / 480 Capital, LLC / CurrencyPay, LLC (“Complainant”), represented by Tony Deitering of Sandhills Global, Inc., Nebraska, USA. Respondent is JH Kang (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <currencycap.co>, registered with Sav.com, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2021; the Forum received payment on July 20, 2021.
On July 21, 2021, Sav.com, LLC confirmed by e-mail to the Forum that the <currencycap.co> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.com, 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 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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@currencycap.co. Also on July 22, 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 17, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
On August 18, 2021 issued an order requesting Additional Submissions from Complainant, on or before 20 August 2018 and allowing Respondent two days following filing of same, to make submissions thereon and furthermore extending time for rendering a decision, pursuant to rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules").
On August 20 2021, a timely reply to said request was filed by Complainant.
Respondent made no timely submissions thereon.
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 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 disputed domain name be transferred from Respondent to the first named Complainant, Sandhills Global, Inc.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are three Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
This Panel finds that as the second and third named Complainants are wholly owned subsidiaries of the first named Complainant, as a group of companies, they can each claim rights in the disputed domain name and therefore this Complaint may proceed with three named Complainants each of whom have standing under the Policy.
A. Complainant
Complainants state that the second and third named Claimants are wholly owned subsidiaries of the first named Complainant and together claim rights in the CURRENCY trademark established through the group’s ownership and use of the registered trademarks listed below and use of the mark in particular in its financial services business.
Complainants rely on the trademark registrations described below, as the third named Complainant is the registered owner of the CURRENCYPAY mark and the second named Complainant is the as-yet unregistered assignee of the CURRENCY mark. A footnote to the Complaint it is stated that “[a]s of the date of filing of this Complaint, the United States Patent and Trademark Office (“USPTO”) trademark database lists Currency Capital, LLC as the owner of the CURRENCY trademark. Assignment of the CURRENCY trademark from Currency Capital, LLC to 480 Capital has be filed and recorded. Complainants have been informed by the USPTO that it could take up to two months before the database reflects 480 Capital’s ownership of the CURRENCY trademark.
Complainants add that they have an established Internet presence, providing services using the CURRENCY and CURRENCY PAY marks, have provided as evidence, WhoIs records showing that the first named Complainant is the owner of a portfolio of Internet domain names incorporating the CURRENCY mark including <currencycap.com> registered on December 2, 2015 as well as <currencymarketplace.co>; <currencymobile.com>; <currencyoffers.com>; <currencypay.com>; <currencypay.io>; <currencypay.me>; <currencypay.net>; <currencypaycards.com>; <currencypayment.com>; <currencypaypro.com>; <currencypayrebates.com>; <currencypayroll.com>; <currencypays.com>; <currencyprocessing.com>; <currencyrewards.com>; <currencyship.com>; <currencyshipping.com>; <currencythinks.com>.
Complainants submit that the disputed domain name <currencycap.co> is confusingly similar to the CURRENCY trademark as it consists of the trademark in its entirety with the mere addition of the word “cap”.
Complainants submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that to Complainants’ knowledge, Respondent has not been commonly known by the disputed domain name and Internet searches carried out return no examples of secondary materials evidencing Respondent’s legitimate rights or interests in the disputed domain name.
Complainants add that there is no indication that Respondent has made any credible investments in promotional materials for its business or is pursuing any kind of genuine business plan in connection with the disputed domain name.
Also, to Complainants’ knowledge, Respondent has not acquired any trademark or service mark rights in connection with the term “Currency”.
Lastly, in this regard, referring to a screen capture of the website to which the disputed domain name resolves, which has been annexed to the Complaint, Complainants submit that it illustrates that the disputed domain name is being used as the address of a webpage with links to various financial services of third parties.
Complainants argue that such use does not constitute a bona fide offering of services and that Respondent is not making legitimate noncommercial fair use of the disputed domain name. Instead, Complainants submit that such use of the disputed domain name by Respondent demonstrates an intent to mislead and divert consumers to competing products and services for Respondent’s commercial gain.
Complainants then allege that the disputed domain name was registered and is being used in bad faith.
Complainants argue that the disputed domain name was recently registered on May 2, 2021, subsequent to the date of registration of Complainants’ CURRENCY trademark, which indicates that the registrant had actual or constructive notice of Complainants’ marks when the disputed domain name was selected and registered.
Complainants assert that the CURRENCY mark has been in use since May 23, 2016, and the CURRENCYPAY mark has been in use since October 16, 2016.
They add that the first named Complainant owns a registration for the domain name <currencycap.com> that was registered since December 2, 2015. They also produce a list of domain names incorporating the word “currency” which they claim are owned by the first named Complainant.
Complainants further argue that Respondent’s webpage contains numerous links to third party services, which, upon information and belief, pose a security risk and could result in download of malicious malware, etc., which would cause damage to Complainants’ brand.
They state that presumably in an attempt to avoid liability for trademark abuse, Respondent’s website provides the following disclaimer: “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain [sic] any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois).”
Complainants contend that the presence of the above disclaimer does not negate a finding that the Respondent has acted in bad faith and argue that by using the disputed domain name in connection with offering third party services similar to and competitive with those of Complainants, Respondent has demonstrated its intent to use the disputed domain name to create a likelihood of confusion with Complainants’ registered trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The first named Complainant is the parent corporation of the second and third named Complainants. Together they offer a wide range of services among which is a financial technology business which facilitates the purchase, sale, and borrowing of money through various financial services products, for which the service mark CURRENCY has been registered and is used.
The second named Complainant (80 Capital, LLC) owns and uses the CURRENCY trademark registration in the United States, albeit that the recent assignment of its rights is in the process of being registered. The registration details are: United States Registered Service Mark, CURRENCY (stylized) registered on February 2021 for services in international class 36;
The third named Complainant (CurrencyPay, LLC) owns and uses the CURRENCYPAY trademark in the United States. The registration details are: United States Registered Service Mark CURRENCYPAY, registered on March 24, 2020 for services in international class 36.
The disputed domain name <currencycap.co> was registered on May 2, 2021 and resolves to a webpage with links to third-party enterprises.
There is no information available about Respondent except for that provided in the Complaint, the Registrar's WhoIs and the information provided by the Registrar in response to the request for verification of the registration details of the disputed domain name in the course of this proceeding.
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”).
Complainants have made an uncontested claim that as a group it has rights in the CURRENCY trademark established through ownership of the group’s portfolio of registered trademarks and use of the mark in particular in its financial services business including on the Internet.
The uncontested evidence shows that the CURRENCYPAY mark is owned by the eponymous third named Complainant. Furthermore Complainants’ assertion that the second named Complainant is the assignee of the CURRENCY mark is supported by evidence in the form of an application to register an assignment with the USPTO, filed on June 23, 2021.
This Panel finds therefore that Complainants have rights in both the CURRENCY and CURRENCYPAY trademarks.
The disputed domain name consists of the word elements “currency” and “cap” together with the country code Top Level Domain (“ccTLD”) extension <.co>.
The word “currency” is the initial, dominant element of the disputed domain name.
The element “cap” does not in any way serve to distinguish the disputed domain name from Complainants’ CURRENCY mark. Also, in the circumstances of this Complaint, the ccTLD <.co> may be ignored for the purposes of comparison as it would be considered to be a necessary technical element for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the CURRENCY mark in which Complainants have rights and Complainants have therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainants have made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
· to Complainants’ knowledge, Respondent has not been commonly known by the disputed domain name;
· Internet searches return no examples of secondary materials evidencing legitimate rights or interests in the disputed domain name;
· there is no indication that Respondent has made any credible investments in promotional materials for its business or is pursuing any kind of genuine business plan in connection with the disputed domain name;
· to Complainants’ knowledge, Respondent has not acquired any trademark or service mark rights in connection with “Currency”;
· the screen capture of the website to which the disputed domain name resolves which has been annexed to the Complaint, illustrates that the disputed domain name is being used as the address of a webpage with links to various financial services of third parties and such use does not constitute a bona fide offering of services or legitimate noncommercial fair use of the disputed domain name;
· Respondent’s use of the disputed domain name demonstrates an intent to mislead and divert consumers to competing products and services for Respondent’s commercial gain.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interest in a disputed domain name the burden of production shifts to the respondent to prove the existence of such rights or interests.
Respondent has failed to discharge the burden of production and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name and therefore Complainants have succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainants have shown that they have registered trademark rights which predate the registration of the disputed domain name on May 2, 2021. The trademark applications claim first use in commerce for the CURRENCY mark since May 23, 2016, and that the CURRENCYPAY mark has been in use since October 16, 2016.
Complainants contend that given the extent of their prior use of the CURRENCY mark it strains reason to believe Respondent was not aware of Complainants’ existing rights at the time it registered the disputed domain name.
However, Complainants have adduced very little evidence of their claimed use of the marks and no evidence of use of the CURRENCY mark prior to the registration of the disputed domain name. In an annex to the Amended Complaint, Complainants submitted a “printout of Complainant’s website” which appeared to be very undeveloped and lacking in normal detail and expected graphics content for an active business. In the Additional Submissions Complainants have provided copies of more developed web pages with similar wording and typical graphic content, together with an undated pages from what appears to be a self-published magazine and part of a web-page from a website <www.sandhills.com/ourbrands>. In this regards Complainants’ evidence of reputation remains weak.
Nonetheless, the first named Complainant holds a large portfolio of Internet domain names incorporating the CURRENCY mark as an element as evidenced by the WhoIs searches for these domain names provided by Complainants.
A WhoIs search provided in the annex to the Complaint stated that the domain name <currencycap.com> registered on December 2, 2015 is owned by a non-party viz. Currency Capital LLC, however when queried by the Panel Complainants’ have adduced a WhoIs report that confirms that the gTLD domain name is in fact registered by the first named Complainant.
The evidence shows that the CURRENCY PAY mark is used offering services on a website to which the eponymous <currencypay.com> domain name resolves.
The screenshot adduced in evidence shows that the CURRENCY mark is used on a website <gocurrency.com>. Although <gocurrency.com> is not among those listed as belonging to the first named Complainant, the Complaint explains that the domain name <currencycap.com> redirects to the website established at website at <www.gocurrency.com>, which serves as the home page where consumers can access all of Complainants’ CURRENCY branded products and services.
Notwithstanding the weakness of the evidence of Complainants’ reputation, taking the evidence as a whole, and considering that despite having been given two opportunities so to do, Respondent has not challenged Complainants’ evidence, this Panel accepts that on the balance of probabilities, the registrant of the disputed domain name had knowledge of Complainants’ name, mark and domain name, website and financial services business when the disputed domain name was registered.
This finding is supported by the evidence that the first named Complainant owns an almost identical gTLD domain name <currencycap.com> which was registered on December 2, 2015. Notwithstanding that there is no evidence that the <currencycap.com> domain name has since acquired any public recognition or reputation as it redirects to a website with a different address, it is improbable that the registrant of the disputed domain name remained unaware of the <currencycap.com> domain name, and Complainants’ ownership of it and that it was unavailable, when the disputed domain name was chosen and registered.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith, intending to target Complainants’ goodwill and reputation to confuse Internet users.
In such circumstances this Panel finds that on the balance of probabilities the disputed domain name, the dominant and distinctive element of which is Complainants’ CURRENCY trademark, is being used in bad faith to attract and divert Internet users to Respondent’s website,
As this Panel has found on the balance of probabilities that the disputed domain name was registered and is being used in bad faith, Complainants have therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and are entitled to succeed in their application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <currencycap.co> domain name be TRANSFERRED from Respondent to the first named Complainant, Sandhills Global, Inc.
James Bridgeman SC
Panelist
Dated: August 23, 2021
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