Forerunner Ventures Management, LLC v. Susan Mayfield / Willis Management
Claim Number: FA2112001975654
Complainant is Forerunner Ventures Management, LLC (“Complainant”), represented by John Paul Oleksiuk of Cooley LLP, District of Columbia, USA. Respondent is Susan Mayfield / Willis Management (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <forerunnervc.com>, registered with GoDaddy.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 2, 2021; the Forum received payment on December 2, 2021.
On December 3, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <forerunnervc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 December 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@forerunnervc.com. Also on December 7, 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 December 31, 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 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a leading venture capital firm, offering capital to entrepreneurs and companies involved in the field of digital commerce. Complainant has rights in the FORERUNNER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,225,792, registered on December 22, 2020). See Amend. Compl. Ex. C. Respondent’s <forerunnervc.com> domain name is identical or confusingly similar to Complainant’s FORERUNNER mark, as it incorporates the mark in its entirety, only adding the abbreviation “vc” for “Venture Capital” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the FORERUNNER mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website attempts to pass off as Complainant in furtherance of a phishing scheme. Additionally, the resolving website is currently inactive.
Respondent registered and uses the <forerunnervc.com> domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant in furtherance of a phishing scheme. Additionally, the disputed domain name is currently inactive. Furthermore, the use of the disputed domain name in furtherance of a phishing scheme is itself evidence of bad faith. Finally, Respondent had actual notice of Complainant’s rights in the mark, as evidenced by the use implemented of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a leading venture capital firm, offering capital to entrepreneurs and companies involved in the field of digital commerce.
2. Complainant has established its trademark rights in the FORERUNNER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,225,792, registered on December 22, 2020) and its common law rights in the mark from the year 2010.
3. Respondent registered the <forerunnervc.com> domain name on December 27, 2019.
4. Respondent has caused the domain name to resolve to a website where Respondent attempts to pass itself off as Complainant in furtherance of a phishing scheme and the resolving website is currently inactive.
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 FORERUNNER mark through its registration of the mark with the USPTO (e.g., Reg. No. 6,225,792, registered on December 22, 2020). See Amend. Compl. Ex. C. Registering a mark with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”). Therefore, the Panel finds Complainant has sufficiently established its rights in the FORERUNNER mark.
The question also arises whether Complainant has common law rights in the FORERUNNER mark. Under Policy ¶ 4(a)(i), a complainant is not required to own a registered trademark prior to the registration of the disputed domain name if it can establish common law rights in the mark. See Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA 1763598 (Forum Jan. 22, 2018) (“While Complainant does not specifically argue that it has common law trademark rights in FIND YOUR BALANCE, the Panel finds Complainant’s evidence infers that the Complainant has acquired secondary meaning within the FIND YOUR BALANCE mark.”); see also Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Thus, the Panel finds that Complainant need not provide evidence of trademark registration prior to the registration of the disputed domain name to show rights in the FORERUNNER mark if it can establish common law rights to the mark.
Common law rights in a mark may be established through evidence that the mark has acquired a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Here, Complainant submits it has used the FORERUNNER mark in connection with its services since 2010 and provides evidence that the mark has been used to promote Complainant’s services under that name on social media and online. See Amend. Compl. Exs. D, F & G. Additionally, Complainant provides evidence of the notoriety and recognition of the FORERUNNER mark and the fact that Complainant and its trademark have been widely recognized by the venture capital and financial communities and in the media. See Amend. Compl. Ex. H. Thus, the Panel finds that Complainant has sufficiently established common law rights in the FORERUNNER mark dating back to 2010.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s FORERUNNER mark. Complainant argues Respondent’s <forerunnervc.com> domain name is identical or confusingly similar to Complainant’s FORERUNNER mark, as it incorporates the mark in its entirety, only adding the descriptive term “vc” and the “.com” gTLD. Merely adding a descriptive term and a gTLD is not sufficient to differentiate the disputed domain name from the mark. 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).”); see also Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). Here, the term “vc” references Complainant’s venture capital services and its inclusion in the domain name with Complainant’s trademark makes it clear that the domain name is confusingly similar to the trademark. The Panel therefore finds the <forerunnervc.com> domain name is confusingly similar to Complainant’s FORERUNNER mark.
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 FORERUNNER trademark and to use it in its domain name, adding the term “vc” which references Complainant’s venture capital services and which does not negate but confirms the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <forerunnervc.com> domain name on December 27, 2019;
(c) Respondent has caused the domain name to resolve to a website where Respondent attempts to pass itself off as Complainant in furtherance of a phishing scheme and the resolving website is currently inactive;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights and legitimate interests in the <forerunnervc.com> domain name because Respondent is not authorized to use the FORERUNNER mark, nor is Respondent commonly known by the disputed domain name. To determine whether a Respondent is commonly known by the disputed domain name, the Panel may reference WHOIS information. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS Information shows Respondent is known as “Susan Mayfield / Willis Management” and there is no evidence to suggest Complainant authorized Respondent to use the FORERUNNER mark in any way. See Registrar Verification Email. As the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent does not use the <forerunnervc.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website previously mimicked Complainant’s website, which is an attempt to pass Respondent off as Complainant in furtherance of a phishing scheme, and which is currently inactive. Past panels have agreed that it is not a bona fide offering of goods and services to confuse users into believing the resolving website is associated or affiliated with the complainant. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Likewise, failure to make active use of a disputed domain name is also not considered a bona fide offering of goods and services or legitimate noncommercial or fair use. See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant provides a screenshot of the resolving website prior to being taken down, as well as Complainant’s website, showing Respondent attempts to copy Complainant’s website’s layout. See Amend. Compl. Exs. F & I. Complainant also submits that the disputed domain name no longer resolves to an active website. Thus, the Panel finds Respondent is not using the disputed domain name to provide a bona fide offering of goods and services or legitimate noncommercial or fair use.
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 was registered in bad faith and 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 used in bad faith. That is so for the following reasons.
First, Complainant first submits that Respondent registered and uses the disputed domain name in bad faith because Respondent used the disputed domain name to pass itself off as Complainant in furtherance of a phishing scheme. Using a disputed domain name to pass off as a Complainant is evidence of bad faith under Policy ¶ 4(b)(iv). 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 Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website). The Panel recalls that Complainant provides screenshots showing the resolving website for the disputed domain name mimicked Complainant’s own website, prior to Respondent taking the website down. See Amend. Compl. Exs. F & I. Therefore, the Panel agrees and finds bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant contends Respondent acted in bad faith because Respondent uses the resolving website to phish for users’ passwords. Using a disputed domain name to perpetuate a phishing scheme indicates bad faith. See 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).”); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). In the present case, the Panel has referenced the screenshot of the resolving website, which shows how users are prompted to put in their passwords. See Amend. Compl. Ex. I. Therefore, the Panel finds Respondent acted in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that the resolving website is currently inactive or passive. Using a disputed domain name to host an inactive website may indicate bad faith, per Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”); see also VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). In the present case, Complainant submits that Respondent deactivated the resolving website for the disputed domain name on or around November 22, 2021, when Complainant initiated this action. Therefore, as the Panel agrees, it finds Respondent acted in bad faith.
Fourthly, Complainant submits that Respondent had actual notice of Complainant’s rights in the FORERUNNER mark, evidenced by Respondent’s use of the mark. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the name chosen and the use the respondent makes of the domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Availity, L.L.C. v. lin yanxiao, FA 1955211 (Forum Aug. 17, 2021) (Respondent uses the disputed domain name to advertise health insurance. Each of the links directs users to competitors of Complainant. . . .[t]he Panel infers, due to the manner of use of the disputed domain name and the way of making the disputed domain name combining Complainant’s AVAILITY mark with the term “insurance” for which Complainant’s mark is used that Respondent registered with actual knowledge of Complainant’s rights in the AVAILITY mark, thus constituting bad faith registration under Policy ¶ 4(a)(iii).”); see additionally 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.”). Here, the Panel references the fact Respondent used a confusingly similar domain name to redirect users to a website that portrayed Complainant’s mark and attempted to obtain information from users by mimicking Complainant’s website. See Amend. Compl. Ex. I. As the Panel finds Respondent had actual notice of Complainant’s rights in the FORERUNNER mark, the Panel finds Respondent acted in bad faith.
Finally, 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 name using the FORERUNNER mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it 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 <forerunnervc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated:
January 4, 2022
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