Sezzle Inc. v. Charles Youakim / Sezzle Inc.
Claim Number: FA2204001991544
Complainant is Sezzle Inc. (“Complainant”), represented by Eran Kahana of Maslon, LLP, Minnesota, USA. Respondent is Charles Youakim / Sezzle Inc. (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sezzle.us>, registered with Gandi SAS.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 8, 2022; the Forum received payment on April 8, 2022.
On April 11, 2022, Gandi SAS confirmed by e-mail to the Forum that the <sezzle.us> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 11, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 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@sezzle.us. Also on April 11, 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 May 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides processing services for electronic funds transfers and payments on credit and debit card accounts.
Complainant holds a registration for the SEZZLE service mark, on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,044,997, registered September 20, 2016, on the basis of an application filed February 9, 2016, and claiming a first use in commerce as of January 24, 2016.
Complainant is the owner of the domain name <sizzle.com>, which was registered February 27, 2011.
Respondent registered the domain name <sezzle.us> on December 21, 2015.
The domain name is identical to Complainant’s SEZZLE mark.
Respondent lacks rights to and legitimate interests in the domain name.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use its SEZZLE mark in a domain name.
Respondent does not use the domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent inactively holds the domain name, which resolves to a website containing the message “account suspended.”
Respondent supplied a false contact address and other false information in its domain name registration application in order fraudulently to impersonate Complainant and its CEO, Mr. Charles Youakim.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical and confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is now being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used by Respondent in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has rights in the SEZZLE service mark sufficient to establish its standing to pursue its Complaint against Respondent under the terms of Policy¶4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Recreational Equipment, Inc. v. Liu Chan Yuan, FA 1954773 (Forum August 9, 2021):
Registration of a mark with the USPTO is sufficient to demonstrate [a complainant’s] rights in the mark per Policy¶4(a)(i).
Turning to the central question posed by Policy¶4(a)(i), we conclude from a review of the record that Respondent’s <sezzle.us> domain name is confusingly similar to Complainant’s SEZZLE service mark. The domain name incorporates the mark in its entirety, with only the addition of the country code Top Level Domain (“ccTLD”) “.us.” Many panels have found that the addition of a ccTLD or other TLD to the mark of another in forming a domain name is irrelevant in determining the question of identity or confusing similarity under Policy¶4(a)(i). See, for example, Blue Cross and Blue Shield Assoc. v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018):
A TLD (whether a gTLD, … or ccTLD) is disregarded under a Policy¶4(a)(i) analysis because domain name syntax requires TLDs.
See also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Forum March 21, 2005) (finding a respondent’s domain name to be identical to a complainant’s mark because “[t]he addition of “.us” to a mark fails to distinguish the [resulting] domain name from the mark pursuant to the [usTLD] Policy”).
Under Policy¶4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the domain name <sezzle.us>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy¶4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the domain name that are cognizable under the Policy.
We begin by noting that there is nothing in the record before us suggesting that Respondent is the owner or beneficiary of a trademark or service mark that is identical to the <sezzle.us> domain name. We conclude, therefore, that Respondent has no claim of rights to or legitimate interests in the domain name under Policy¶4(c)(i). See, for example, Pepsico, Inc. v. Becky, FA 117014 (Forum September 3, 2002), finding that, because there was no evidence showing that a respondent owned a trademark or service mark reflecting a specific domain name, it could not lay claim to rights or legitimate interests in that domain name under Policy¶4(c)(i).
We next observe that Complainant asserts, without objection from Respondent, that Respondent makes no active use of the <sezzle.us> domain name (a practice called “passive holding”). Because Respondent makes no active use of the domain name, it cannot be said to use it in connection with a bona fide offering of goods or services within the contemplation of Policy¶4(c)(ii). See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine LLC, FA 1785347 (Forum June 8, 2018):
Inactive holding of a domain name does not qualify as a bona fide offering of goods or services ….
We turn then to Complainant’s contention, which Respondent, once again, does not deny, that Respondent has not been commonly known by the challenged <sezzle.us> domain name. In this connection we note that the pertinent WHOIS information identifies the registrant of the domain name only as “Charles Youakim,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(iii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018), finding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent only as “Bhawana Chandel.”
Finally, under this head of the Policy, because Respondent evidently does not currently make any active use of the <sezzle.us> domain name, we cannot conclude that Respondent is now making a legitimate noncommercial or fair use of it within the meaning of Policy¶4(c)(iv).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy¶4(a)(ii) by showing that Respondent has no rights to or legitimate interests in the challenged domain name.
We are persuaded by the evidence that Respondent registered the <sezzle.us> domain name primarily, if not solely, for the eventual purpose of selling it to Complainant at an extortionate price. The record reflects that, late in 2015, Respondent, who resides in the United States, where Complainant is headquartered, registered the domain name, which captures the commercially valuable “.us” country code, only a few months before Complainant filed its USPTO application for registration of the SEZZLE service mark, and that Respondent has left the domain name dormant for the succeeding six years. What clinches the question of Respondent’s intentions in this regard is its fraudulent inclusion, in its domain name registration application, of the name of Complainant’s Chief Executive Officer as its putative administrative and technical contact. We are thus compelled to the conclusion that Respondent registered the domain name in bad faith within the compass of Policy¶4(a)(iii). See, for example, Marsh Supermarkets Company, LLC v. Choi Sungyeon, FA1532854 (Forum February 25, 2014):
Therefore, the Panel finds that Respondent registered … the … domain name in bad faith pursuant to Policy¶4(a)(iii) because Respondent has failed to make an active use of the … domain name.
See also Video Direct Distrib. Inc. v. Video Direct, Inc., FA 94724 (Forum June 5, 2000) (finding that a respondent registered a domain name in bad faith by providing false information to the registrar regarding its ownership).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <sezzle.us> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 10, 2022
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