Lifeline Funding, LLC v. Zoya Aminova / US Claim Funding, LLC
Claim Number: FA1205001443200
Complainant is Lifeline Funding, LLC (“Complainant”), represented by Patrick T. Casey of Buchanan Ingersoll & Rooney PC, Pennsylvania, USA. Respondent is Zoya Aminova / US Claim Funding LLC (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usclaimfunding.com>, registered with GoDaddy.com, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 9, 2012; the National Arbitration Forum received payment on May 9, 2012.
On May 10, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <usclaimfunding.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 May 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@usclaimfunding.com. Also on May 11, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 4, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 claims to own trademark rights for its USCLAIMS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,713,823 registered November 24, 2009). Complainant has used the USCLAIMS mark since July 15, 1996, in connection with its financing services and pre-settlement funding business. Complainant owns several domain names using its USCLAIMS mark to promote its services.
Respondent registered the <usclaimfunding.com> domain name in June of 2011. Respondent’s disputed domain name resolves to a website that appears to offer services similar to those of Complainant, but is written in Latin. See Exhibit 5. Respondent is not authorized to use the USCLAIMS mark and makes a profit from wrongfully diverting Internet users from Complainant’s business. Respondent had constructive and actual knowledge of Complainant’s rights in the USCLAIMS mark at the time it registered the disputed domain name. Respondent registered and uses the disputed domain name in bad faith by hosting a website whose offered services compete with those of Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its USCLAIMS mark.
2. Respondent’s domain name, <usclaimsfunding.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the 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 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims to own trademark rights with the USPTO for its USCLAIMS mark (Reg. No. 3,713,823 registered November 24, 2009). Previous panels have established that holding a trademark registration with the USPTO demonstrates rights in a mark pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that Complainant effectively demonstrated rights in its USCLAIMS mark through its trademark registration with the USPTO under Policy ¶ 4(a)(i).
Complainant alleges that the <usclaimfunding.com> domain name is confusingly similar to the USCLAIMS mark and states that adding the generic term “funding,” as well as removing the letter “s” from the end of the mark, fails to distinguish the domain name from Complainant’s mark. The Pane notes that the disputed domain name includes the generic top-level domain (“gTLD”) “.com.” In Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001), the panel found the disputed domain name to be confusingly similar to the complainant’s mark because of the addition of the word “casino,” which described the complainant’s type of business. In Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), the panel stated that a gTLD such as “.com” does not affect the confusing similarity of a domain name. The Panel concludes that, despite the changes made, the disputed domain name is confusingly similar to Complainant’s USCLAIMS mark under Policy ¶ 4(a)(i).
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), and then 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 commonly known by the <usclaimfunding.com> domain name and that it does not have authorization to use or exploit Complainant’s USCLAIMS mark. The Panel notes that the WHOIS information identifies “Zoya Aminova / US Claim Funding, LLC” as the domain name registrant. See Exhibit 4. The panel in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), held that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) based on the WHOIS information provided and all other evidence on record. In St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel stated that a respondent has no rights or legitimate interests in a domain name when no evidence on the record supports a finding that the respondent was commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the <usclaimfunding.com> domain name under Policy ¶ 4(c)(ii) because the WHOIS information does not support such a conclusion and Complainant did not give consent to Respondent to use the USCLAIMS mark.
Complainant alleges that Respondent has no rights or legitimate interests in the <usclaimfunding.com> domain name because the resolving web page is written in Latin and contains hyperlinks to Respondent’s financial factoring and pre-settlement funding services. Complainant argues that it offers “real” financial factoring and pre-settlement funding services. Complainant claims that the use of Latin indicates that the website is under construction or that the website is “deliberately written in a dead language to make the site incomprehensible to users.” Complainant states that it was advised that Respondent expressed an interest in joining the American Legal Finance Association, an organization that Complainant is a member, and alleges that Respondent is preparing to offer similar services to those of Complainant. Complainant contends that viewers visiting the sight might be convinced that an affiliation with Complainant’s business exists. Complainant contends that such use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that using a website to suggest an affiliation with Complainant and offering competing hyperlinks is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant alleges that Respondent uses the <usclaimfunding.com> domain name to design a web page that causes Internet users to believe that they can access information and services related to Complainant’s business and are instead diverted to Respondent’s website for Respondent’s commercial gain. Complainant claims that Respondent provides information and hyperlinks regarding Respondent’s competing services. Complainant argues that Respondent uses the confusingly similar domain name to attract Internet users who believe that Complainant sponsors the website. The panel in Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000), held that the respondent displayed the complainant’s mark on its website and offered identical services to those of the complainant, which demonstrated bad faith registration and use. The panel in Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), found bad faith registration and use existed because the respondent used the disputed domain name to provide links to the complainant’s competitors and commercially benefitted by generating “click-through” fees. The Panel concludes that, by diverting consumers seeking Complainant’s services to Respondent’s own website in order to make a financial gain, Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent had constructive knowledge of Complainant’s rights in the USCLAIMS mark, because the mark was registered 11 years before Respondent registered the disputed domain name. Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the USCLAIMS mark because Respondent’s use of the disputed domain name demonstrates an intention to disrupt Complainant’s business and divert consumers. The Panel finds that constructive knowledge does not support a finding of bad faith registration and use under Policy ¶ 4(a)(iii), but the Panel concludes that Respondent’s use of the <usclaimfunding.com> domain name is evidence that Respondent had actual knowledge of Complainant’s rights and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usclaimfunding.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 17, 2012
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