Wikiloan, Inc. v. Christopher Rowe
Claim Number: FA1112001419806
Complainant is Wikiloan, Inc. (“Complainant”), represented by Mark I. Reichenthal of Branfman Law Group, P.C., California, USA. Respondent is Christopher Rowe (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wikiloans.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Daniel B. Banks, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 13, 2011; the National Arbitration Forum received payment on December 13, 2011.
On December 13, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wikiloans.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2012 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@wikiloans.com. Also on December 21, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on December 22, 2011.
On January 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of the WIKILOAN Trademark and website. Complainant registered the trademark with the USPTO with a first use date of May 21, 2009 and a first use in commerce date of May 21, 2009. The registration date is June 15, 2010. The website provides tools for peer-to peer borrowing and lending. Management tools allow borrowers and lenders to manage the loan process by providing loan documentation, promissory notes, repayment schedules, email reminders, online account access and online repayment. Complainant has been using the WIKILOAN mark on the services listed above continuously and in interstate commerce since the dates of first use listed above. Complainant and its mark is well known throughout the online lending industry.
In addition, Complainant has been using the corporate name WIKILOAN, INC. and is incorporated in the State of Delaware.
Respondent owns the website, WIKILOANS.COM which captures and transmits people's personal data to lenders so these lenders may contact prospective borrowers based on particular loan needs. Respondent is not a lender or a service that provides any sort of loan comparison whatsoever. This domain name has been used to divert traffic away from Complainant and to Respondent's website. The domain name was registered on April 23, 2010, well after the filing date of Complainant's Trademark Application and well after Complainant's stated date of first use. The only difference between Complainant's WIKILOAN mark and the domain name in question is the addition of the letter "S" and the disputed domain name contains Complainant's entire WIKILOAN trademark within it.
Respondent and Complainant are in direct competition with each other and Respondent's use of the disputed domain name for related services has already led to consumer confusion. Future consumers will likely be confused because the disputed domain name and the trademark of the Complainant are virtually identical.
Respondent should be considered as having no rights or legitimate interests in respect of the domain name. Complainant originally incorporated its business in Delaware on June 24, 1988 and has owned the <wikiloan.com> domain name since September 27, 2004. Its trademark application was filed on May 21, 2009 with a stated date of first use of May 21, 2009. These actions took place prior to Respondent's illegitimate use of the WIKILOANS.COM domain. Respondent had ample notice, both constructive and actual, of Complainant's rights to the WIKILOAN Trademark and use of it in commerce.
A cease and desist letter was sent to Respondent on February 18, 2011 regarding Respondent's use of the WIKILOANS trademark. A response was requested by March 3, 2011. Instead of responding, Respondent immediately filed a Trademark Application for the mark WIKILOANS on February 21, 2011. A review of the application shows Respondent's bad faith intentions. The application was filed in the wrong class with no filing basis provided and it appears that Respondent copied Complainant's Registration as Respondent filed for his mark on the Supplemental Register. Applications filed on the Supplemental Register are not published for Opposition so Complainant would not be provided an opportunity to oppose Respondent's Application. The USPTO has issued an initial refusal based on the likelihood of confusion with Complainant's previous registration for WIKILOAN. That action was taken on May 27, 2011 and no response has been filed as of the date of this Complaint
Respondent's use of the WIKILOANS trademark and domain name clearly constitute trademark infringement and therefore, Respondent cannot have any legitimate rights to this domain name.
Respondent is not authorized to use Complainant's trademark and yet the domain name is being used for what is essentially the equivalent of a pay per click website which captures leads and sells them to third parties that actually provide a service. Respondent's website provides no goods or services whatsoever. This is in competition with Complainant. Respondent is clearly hoping to trade in on the goodwill that Complainant has established. Respondent is hoping to attract Internet users to its website in order to capture their names and sell these names to others.
For all the reasons stated above, the Respondent has acted in bad faith. Respondent could have performed a corporate name search, a USPTO search or a simple Internet search, all of which would have produced results related to Complainant, its company, its trademark registration and its website.
B. Respondent
After review of my trademark application for WIKILOANS, the USPTO suggested that I adopt changes to avoid confusion with Complainant's trademarks. I was asked to "Provide demand creation and lead generation activities and services by acquiring and selling contacts as leads for financial services," in International Class 35. I have complied with this request and amended my application. I have suspended all activities related to WIKILOANS and removed the disputed website from the public domain pending a final decision by the USPTO.
On November 4, 2011, Complainant outlined a "shift in strategy" to "aggressively pursue partnerships & reselling opportunities for lead generation." This demonstrates that Complainant's previous strategy had nothing to do with "providing demand creation and lead generation activities and services."
Respondent is not a lender or a service that provides any sort of loan comparison. We do not engage in peer-to-peer lending. Respondent's use of the domain name WIKILOANS.COM is legitimate in connection with a bona fide offering of goods or services. I have put disclaimers on the site which would prevent users from confusing it with the Complainant's site.
It is unlikely that I will be denied a patent. However, I may use this domain for alternative purpose such as, using it for a bona fide good or service entirely outside this current scope of business; selling the domain name based on an unsolicited offer already received from an unrelated third party; or reaching an amicable agreement with Complainant if given the opportunity.
Respondent asks for the Panel to make a finding of reverse domain name hijacking.
1 - The disputed domain name is identical or confusingly similar to Complainant's trademark.
2 - Respondent has no rights or legitimate interests in respect of the domain name.
3 - The domain name was registered and is being 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 and is being used in bad faith.
Complainant supplies evidence to the Panel of its trademark registration with the United States Patent and Trademark Office ("USPTO") for its WIKILOAN mark (Reg. No. 3,805,023 filed May 21, 2009; registered June 15, 2010). Such a trademark registration is sufficient for Complainant to establish rights in the WIKILOAN mark under Policy ¶ 4(a)(i) that date back to the original filing date of May 21, 2009. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
The Panel finds that the <wikiloans.com> domain name is confusingly similar to Complainant’s WIKILOAN mark. The domain name contains Complainant’s entire mark in addition to the letter “s” and the generic top-level domain (“gTLD”) “.com.” Previous panels have determined that the addition of a single letter to a mark, as well as the gTLD, does not remove the domain name at issue from being confusingly similar to the asserted mark. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel may accordingly find that Respondent’s <wikiloans.com> domain name is confusingly similar to Complainant’s WIKILOAN mark.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not authorized to use its mark in any way, including in the disputed domain name. Further, the WHOIS information for the disputed domain name identifies “Christopher Rowe” as the registrant. WHOIS information does not show a relationship between the disputed domain name and its registrant that would rise to the level of Respondent being commonly known by the domain name. Based upon this evidence and Complainant’s arguments, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant asserts that Respondent’s resolving website “is being used for what is essentially the equivalent of a pay per click website which captures leads and sells them to third parties that actually provide a service.” Complainant appears to suggest that Respondent’s website operates in a competing manner, but in a slightly different light: namely Complainant argues that Respondent collects Internet users’ information when they inquire about a loan, and then Respondent sells that information to third-parties. Complainant asserts that it operates its business to provide “tools for online peer-to-peer borrowing and lending. People can use the tools on the website to borrow and lend money among themselves at rates that make sense to all parties.” Both parties provide users with information and services for the procurement of loans and money advances. In this instance, Respondent’s competing use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Respondent claims that when its website was operational, it had a valid disclaimer placed upon the website. However, such a disclaimer does not prevent a finding that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). In fact, the placing of the disclaimer demonstrates to this panel the Respondent's knowledge that the site is confusing to users. See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also Las Vegas Sands, Inc. v. Red Group, D2001-1057 (WIPO Dec. 6, 2001) (justifying the conclusion that the respondent wishes to trade on the fame of the complainant’s trademark, regardless of the presence of a small-print disclaimer that is unavailable to Internet users until they have already entered the gambling site, because the disclaimer fails to remedy initial confusion).
Although Complainant has not presented a specific argument under Policy ¶ 4(b)(iii), the Panel finds that, based upon the submitted evidence and Complainant’s arguments under Policy ¶ 4(a)(ii), Respondent registered the domain name in order to disrupt the business of a competitor. Complainant has alleged that Respondent’s website offers similar services, albeit through a different method, in offering Internet users loans and financial service information. The Panel finds that this use inherently disrupts Complainant’s business of providing a peer-to-peer network of financial service providers and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Complainant has also contended that Respondent profits from its use of the domain name. Complainant asserts under Policy ¶ 4(a)(ii) that Respondent’s business collects Internet users information and subsequently sells that information to third-party lenders. Complainant contends that confusion exists because Internet users who are searching for a loan online will think that Respondent’s website is affiliated with Complainant and its services. The Panel finds that Respondent registered the disputed domain name in order to profit from the confusion created between its website and Complainant’s mark and such registration and use is bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Complainant asserts that Respondent had actual and/or constructive notice of Complainant and its rights in the mark prior to registration of the disputed domain name. Complainant contends that prior to Respondent registering the domain name, Complainant had been operating for over a year and had been well known in the online loan industry at that time. Although constructive knowledge has generally not been held sufficient to support a finding of bad faith, it is the finding of this Panel that Respondent had actual knowledge of Complainant's mark. How else would Respondent have chosen the name "wikiloans" without actual knowledge. The Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
While Respondent contends that it had placed a disclaimer upon the resolving website when it was operational, such a disclaimer does not prevent a finding of bad faith under Policy ¶ 4(a)(iii). See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).
REVERSE DOMAIN NAME HIJACKING
The panel finds that there has been no reverse domain name hijacking and Respondent's request for such a finding is denied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be Granted.
Accordingly, it is Ordered that the <wikiloans.com> domain name transferred from Respondent to Complainant.
Daniel B. Banks, Jr. , Panelist
Dated: January 13, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page