Edfinancial Services, LLC v. PPA Media Services / Ryan G Foo
Claim Number: FA1310001524577
Complainant is Edfinancial Services, LLC (“Complainant”), represented by Martha B. Allard of Bass, Berry & Sims PLC, Tennessee, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <edfinancal.com>, registered with Internet.BS Corp.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 15, 2013; the National Arbitration Forum received payment October 15, 2013.
On October 22, 2013, Internet.BS Corp. confirmed by e-mail to the National Arbitration Forum that the <edfinancal.com> domain name is registered with Internet.BS Corp. and that Respondent is the current registrant of the name. Internet.BS Corp. verified that Respondent is bound by the Internet.BS Corp. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2013, 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@edfinancal.com. Also on October 23, 2013, 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 November 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 makes the following allegations in this proceeding:
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent registered the <edfinancal.com> domain name January 20, 2009.
Respondent’s Contentions
Respondent did not submit a response in this proceeding.
The Panel finds that Complainant established rights to and legitimate interests in the domain name contained in misspelled form in the disputed domain name.
The Panel finds that Respondent has no such rights to or legitimate interests.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark.
The Panel finds that Respondent registered and used 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant claims that it uses the EDFINANCIAL mark in connection with the servicing and disbursement of student loans. Complainant registered the EDFINANCIAL mark with the USPTO (e.g., Reg. No. 3,456,998 registered July 1, 2008). It is widely accepted that USPTO registration evidences Policy ¶ 4(a)(i) rights, whatever the Respondent’s residency. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). The Panel agrees that Complainant met its burden of illustrating rights in the EDFINANCIAL mark under Policy ¶ 4(a)(i).
Complainant next explains that the domain name is confusingly similar to the EDFINANCIAL mark. Complainant points out that Respondent’s <edfinancal.com> domain name merely removes the letter “i” from the EDFINANCIAL mark, and adds the irrelevant gTLD “.com.” The Panel agrees that gTLDs are not considered under a Policy analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel further agrees that this <edfinancal.com> domain name is similar because the only notable difference is the omission of a single letter from the EDFINANCIAL mark. See, e.g., Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes. . . do[es] not change respondent’s infringement on a core trademark held by the complainant). The Panel therefore finds that Respondent’s <edfinancal.com> domain name is confusingly similar to the EDFINANCIAL mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show that it does have such 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 known by this domain name, and does not have any affiliations with, or authorization from, Complainant. The Panel notes that <edfinancal.com> domain name’s WHOIS information lists “PPA Media Services / Ryan G Foo” as the registrant of record. In cases such as this, previous panels have found that there can be no finding of rights in a Respondent under Policy ¶ 4(c)(ii) in the absence of affirmative evidence as to the domain name’s actual owner. See, e.g., St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant next contends that Respondent is using the <edfinancal.com> domain name to promote various hyperlinks to third-party websites, including competitors of Complainant. The Panel notes that Complainant has not provided any evidence to support its assertions as to use; however, the Panel also notes that, although it may request as such proof pursuant to UDRP Rule 12, the Panel finds that Complainant’s shortcomings are not determinative here. Respondent has provided no information at all to show any Policy ¶ 4(c)(i) bona fide offering, nor any Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. Complainant’s allegation is sufficient under such circumstances where other evidence of rights and lack of rights are before the Panel. Where the domain name is being used to promote hyperlink advertisements to various competing and unrelated businesses, this is not bona fide use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant alleges that Respondent’s registration of this <edfinancal.com> domain name amounts to typosquatting. In previous cases, it has usually been held that typosquatting arises when the respondent registers a domain name so as to prey upon a simple or common mistake that Internet users would make in attempting to reach a domain name identical to mark. See, e.g., Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). The Panel finds that omission of the letter “i” from the EDFINANCIAL mark is typosquatting, and the Panel further finds that this behavior weighs against a finding of Policy ¶ 4(a)(ii) rights or legitimate interests for Respondent.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interest in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant suggests that Respondent’s decision to use the domain name solely to promote sponsored hyperlink advertisements evidences an attempt to capitalize on the likelihood that Internet users will believe that the hyperlinks are endorsed by, or affiliated with, Complainant. The Panel again notes that Complainant offered no corroborating evidence as to the actual use of the domain name. The Panel notes as well here that Respondent has not appeared and has not offered any evidence in this proceeding. The Panel also finds that although it may request Complainant to offer such evidence as to the <edfinancal.com> domain name’s use under UDRP Rule 12, the Panel here finds that such evidence would not be dispositive of the final issues in the case because other evidence has been offered to support the outcome Complainant seeks on the merits in this proceeding. The Panel, therefore, accepts Complainant’s uncontroverted contentions for what they are. If Respondent’s conduct amounts to a Policy ¶ 4(b)(iv) bad faith attempt to generate advertising revenue through the likelihood that Internet users will confuse Complainant as a source or affiliate of the content available on the domain name’s website, such conduct would support findings of bad faith. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Nonetheless, although the Panel does not act on Complainant’s unsupported contentions regarding Policy ¶ 4(b)(iv) for purposes of finding bad faith; the Panel may yet agree and find that Complainant may prevail because other evidence here supports findings of bad faith in Respondent’s use and registration of the <edfinancal.com> domain name. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Complainant argues that Respondent’s typosquatting of the <edfinancal.com> domain name is, in and of itself, evidence of Respondent’s bad faith. In the case of Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005), the panel inferred Policy ¶ 4(a)(iii) bad faith when it was clear that the domain name had been typosquatted off of the complainant’s mark, and appeared to be nothing other than an attempt to capitalize on typographical errors made by Internet users. The Panel here likewise agrees that Respondent’s typosquatting behavior provides inferential evidence of Policy ¶ 4(a)(iii) bad faith.
Complainant contends that Respondent registered the <edfinancal.com> domain name with actual or constructive notice of Complainant’s rights in the EDFINANCIAL mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel here finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <edfinancal.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 27, 2013
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