Addepar, Inc. v. Javier Davidson
Claim Number: FA2201001980973
Complainant is Addepar, Inc. (“Complainant”), represented by Knobbe Martens Olson & Bear LLP, California, USA. Respondent is Javier Davidson (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <addepars.com> (the “disputed domain name”), registered with NameCheap, Inc. (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 18, 2022; the Forum received payment on January 18, 2022.
On January 19, 2022, the Registrar confirmed by e-mail to the Forum that the <addepars.com> disputed domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. The Registrar 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 20, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2022 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@addepars.com. Also on January 20, 2022, 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 February 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant offers innovative products and services in the field of wealth and asset management and has established a strong reputation in the marketplace in connection with its high-quality products and services offered under the ADDEPAR trademarks. Numerous panels have recognized the reputation of the ADDEPAR trademarks and have ordered the transfer of the respondent’s domain name in those proceedings.
Complainant claims that it has rights in the ADDEPAR trademark through the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., United States Reg. No. 4,407,903, registered on September 24, 2013) (hereinafter referred to as the “ADDEPAR Mark”). In addition, Complainant contends that it has acquired common law rights in the ADDEPAR Mark through use in commerce that Complainant has obtained considerable goodwill associated with the ADDEPAR Mark as a result of such use. Complainant registered the domain name <addepar.com> on September 24, 2009, and operates its official website at “www.addepar.com”.
Complainant contends that Respondent’s <addepars.com> disputed domain name is confusingly similar to Complainant’s ADDEPAR Mark as Respondent incorporates the mark in its entirety, merely adding the letter “s” to the ADDEPAR Mark, followed by the “.com” generic top-level domain (“gTLD”).
Moreover, Complainant claims that the disputed domain name is confusingly similar to Complainant’s ADDEPAR Mark as the disputed domain name incorporates a misspelling of the trademark, adding an “s” to the ADDEPAR Mark, followed by the “.com” gTLD. Complainant further contends that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith, since the disputed domain name was registered on January 4, 2022, over a decade after Complainant began using the ADDEPAR Mark, and the disputed domain name currently resolves to an inactive landing page.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the ADDEPAR Mark based on its trademark registrations with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). In addition, the Panel finds that the disputed domain name is confusingly similar to Complainant’s ADDEPAR Mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Panel finds that the disputed domain name is confusingly similar to the ADDEPAR Mark as set forth below.
The Panel finds that Complainant has rights in the ADDEPAR Mark based on its registration with the USPTO. As stated above, registration of a trademark with the USPTO is sufficient to establish rights pursuant to Policy ¶4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Here, Complainant provides copies of its ADDEPAR Mark with the USPTO (e.g., United States Reg. No. 4,407,903, registered on September 24, 2013). Therefore, the Panel finds that Complainant has rights in the ADDEPAR Mark per Policy ¶4(a)(i).
In the present case, the disputed domain name consists of a misspelling[i] of the ADDEPAR Mark, merely adding the letter “s” to the ADDEPAR Mark, and then followed by the gTLD “.com“. Registration of a domain name that merely adds one letter to a trademark does not distinguish the disputed domain name from the mark per Policy ¶ 4(a)(i).)). In addition, adding a gTLD to a complainant’s mark does not prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See TXDC, L.P. v. Kevin Americain, FA 2106001953061 (Forum July 26, 2021) (finding that the addition of the letter “s” plus the gTLD “.com” in the disputed domain name <zalesoutlets.com> do not substantially diminish the similarity between the disputed domain name and complainant's trademark ZALES OUTLET); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD to a disputed domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Respondent misspells Complainant’s ADDEPAR Mark merely by adding the letter “s” to result in “addepars”. Therefore, the Panel concludes that the disputed domain name is confusingly similar to the ADDEPAR Mark.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond.
In support, the Panel finds that Respondent is not commonly known by the disputed domain name or any name similar to it, nor has Complainant authorized or licensed Respondent to use its ADDEPAR Mark in the disputed domain name. In addition, Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead currently inactively holds the disputed domain name. Under Policy ¶ 4(a)(ii), failure to make active use of a disputed domain name is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name where it failed to make an active use of the domain name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
First, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith because the disputed domain name currently resolves to an inactive parking page with no substantive content. Failure to make active use of a disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”).
Second, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Third, Respondent registered and is using the disputed domain name in bad faith as Respondent engaged in typosquatting. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, Respondent engaged in typosquatting by merely adding the letter “s” to the ADDEPAR Mark (resulting in “addepars”). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, the renown of the ADDEPAR Mark, which was used and registered by Complainant about a decade in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the ADDEPAR Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainant or its ADDEPAR Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademarks before registering a domain name is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <addepars.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: February 21, 2022
[i] This misspelling is an example of typosquatting, a situation in which a disputed domain name includes a misspelled term.
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