Funding Circle Limited v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org)
Claim Number: FA2110001970686
Complainant is Funding Circle Limited (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is Domain Admin / Privacy Protect, LLC (PrivacyProtect.org) (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <funding-circle.us.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 October 27, 2021; the Forum received payment on October 27, 2021.
On October 27, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <funding-circle.us.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 November 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@funding-circle.us.com. Also on November 2, 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 November 29, 2021, 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 CDRP 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 is a well-known, well-respected company that provides a lending marketplace to small and medium sized businesses. Complainant has rights in the FUNDING CIRCLE mark through its registrations with the United States Patent and Trademark Office (“USPTO”) and World Intellectual Property Office (“WIPO”) (e.g. USPTO Reg. 4,533,121, registered May 20, 2014; WIPO Reg. 1,379,744, registered Nov. 1, 2017). See Compl. Exs. B and C. Respondent’s <funding-circle.us.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds a hyphen, as well as the “.us” country code top-level domain (“ccTLD”) and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <funding-circle.us.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed 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, but instead inactively holds the disputed domain name’s resolving website, while passing off as Complainant in emails.
Respondent registered and/or uses the <funding-circle.us.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant in emails. Respondent inactively holds the disputed domain name’s resolving website. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the FUNDING CIRCLE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a well-known, well-respected company that provides a lending marketplace to small and medium sized businesses.
2. Complainant has established its trademark rights in the FUNDING CIRCLE mark through its registrations with the United States Patent and Trademark Office (“USPTO”) and World Intellectual Property Office (“WIPO”) (e.g. USPTO Reg. 4,533,121, registered May 20, 2014; WIPO Reg. 1,379,744, registered Nov. 1, 2017).
3. Respondent registered the <funding-circle.us.com> domain name on June 9, 2021.
4. Respondent inactively holds the disputed domain name’s resolving website, while passing itself off as Complainant in emails, showing that Respondent has no rights or legitimate interests in the disputed domain name and that it was registered and/or used in bad faith.
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 has 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 prior UDRP decisions 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 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 FUNDING CIRCLE mark through its registrations with the USPTO and WIPO (e.g. USPTO Reg. 4,533,121, registered May 20, 2014; WIPO Reg. 1,379,744, registered Nov. 1, 2017). See Compl. Exs. B and C. Registration with multiple trademark agencies is generally considered sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Synovus Financial Corp. v. Elizabeth Fagin / Wells & Wadw, FA 1601001655021 (Forum Feb. 5, 2016) (finding that Complainant had demonstrated its rights in the SYNOVUS mark through its registration with the USPTO); see also Häfele Vietnam LLC v. Cong Hoan, FA 1813668 (Forum Nov. 28, 2018) (“Registration of a mark with the WIPO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, as the Panel agrees, it finds Complainant has rights in the 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 Respondent’s <funding-circle.us.com> domain name is identical or confusingly similar to Complainant’s FUNDING CIRCLE mark. Under Policy ¶ 4(a)(i), is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Gen. Elec. Co. v. Bakhit, D2000-0386 (WIPO June 22, 2000) (finding that placing a hyphen in domain name between “General” and “Electric” is confusingly similar to the complainant’s mark); see additionally 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). The disputed domain name incorporates the FUNDING CIRCLE mark in its entirety, with a hyphen separating the words, and adds the “.us” ccTLD and the “.com” gTLD. Therefore, as the Panel agrees, it finds Respondent’s domain name is identical or 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 only a hyphen to space the words in the mark and adding both the “.us” ccTLD and the “.com” gTLD which do not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <funding-circle.us.com> domain name on June 9, 2021;
(c) Respondent inactively holds the disputed domain name’s resolving website, while passing itself off as Complainant in emails;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <funding-circle.us.com> domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS Information, or lack thereof when hidden behind a privacy service may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. 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.”); see also 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 only a privacy service, and nothing in the record rebuts Complainant’s submission that it never authorized or licensed Respondent to use its FUNDING CIRCLE mark in the disputed domain name. See Registrar Verification Email. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <funding-circle.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), inactively holding a disputed domain name’s resolving website while using the domain name to send fraudulent emails is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. 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 purportedly from agents of complainant to be 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)); see also Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ 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).”). Here, Complainant provides screenshots of the disputed domain name’s resolving website, which features no substantive content, along with pictures of allegedly fraudulent emails sent from the disputed domain name, which purport to offer financing services. See Compl. Exs. E and F. Therefore, 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) and (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 has been 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 and/or used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and/or uses the <funding-circle.us.com> domain name in bad faith. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to pass off as an agent of a Complainant in fraudulent emails may demonstrate bad faith disruption for commercial gain. See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). The Panel recalls Complainant’s screenshots of emails from the disputed domain name, where Respondent purports to offer financing services as Complainant. See Compl. Ex. F. Therefore, as the Panel agrees, it finds Respondent registered and/or used the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent registered and/or uses the <funding-circle.us.com> domain name in bad faith by inactively holding the disputed domain name’s resolving website. Inactively holding a disputed domain name’s resolving website is generally considered evidence of bad faith registration and/or use under Policy ¶ 4(a)(iii). See Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014) (“Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which features no substantive content. See Compl. Ex. E. Therefore, as the Panel agrees, it finds Respondent registered and/or uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered the <funding-circle.us.com> domain name in bad faith as it had actual knowledge of Complainant’s rights in the FUNDING CIRCLE mark at the time of registration. Actual knowledge may be demonstrated under Policy ¶ 4(a)(iii) through incorporation of a well-known mark into a disputed domain name, as well as Complainant’s use of the domain name. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel recalls that the disputed domain name incorporates Complainant’s FUNDING CIRCLE mark in its entirety and uses the domain name to send emails passing itself off as Complainant. See Compl. Ex. F. Therefore, as the Panel agrees, it finds Respondent registered the disputed domain name in bad faith 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 <funding-circle.us.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 30,2021
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