CircleBack Lending, Inc. v. Andy Tang
Claim Number: FA1603001667870
Complainant is CircleBack Lending, Inc. (“Complainant”), represented by Dan Booth of Booth Sweet LLP, Massachusetts, USA. Respondent is Andy Tang (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <circlebacklendinginc.com>, registered with Name.com, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 29, 2016; the Forum received payment on March 29, 2016.
On March 30, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <circlebacklendinginc.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.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 March 31, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 2016 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 email@example.com. Also on March 31, 2016, 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 April 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 domain name be transferred from Respondent to Complainant.
The WHOIS registration for the disputed domain name identifies the Respondent as Andy Tang, with a mailing address of 34221 SW 15 Street, Suite #7728, Deerfield Beach, FL 33442, the phone number 754-227-8755, and the email address firstname.lastname@example.org.
Respondent provided a false mailing address in its WHOIS registration. No such address as 34221 SW 15 Street exists in Deerfield Beach, Florida. Affidavit of Michael Solomon (“Solomon Aff.”) ¶4. Respondent’s initial registration for the disputed domain name, on November 14, 2014, gave a different street address in the same city: 3439 SW 15 Street, Suite #7728, Deerfield Beach, FL 33442. The original registration record also identified “BH Media Inc.” as the registrant organization but otherwise provided the same contact information as in the current registration. That prior registration address was also apparently invalid. On January 23, 2015, Complainant sent a cease-and-desist letter to Respondent at that address (3439 SW 15 Street) then listed for its WHOIS registration. The letter was returned to sender undelivered in February 2015. Moreover, Complainant has been unable to verify the validity of the email address (email@example.com) listed in Respondent’s current and former WHOIS registrations. Respondent did not reply to emails Complainant sent to that email address on January 23, 2015 and on March 12, 2015.
Andy Tang is Respondent’s sole known authorized representative. His sole known contact information is listed in the WHOIS registration discussed above. Rule ¶3(b)(v).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds.
[a.] The contested domain names are identical or confusingly similar to Complainant’s common law service marks. Rule ¶3(b)(ix)(1); URDU ¶4(a)(i).
i. Complainant has common law rights in the service marks CircleBack Lending and circlebacklending.com.
Complainant owns common law rights in the service marks CircleBack Lending and circlebacklending.com, as established through its continuous use of the marks in relation to the sale and marketing of its services, and widespread consumer recognition. Solomon Aff. ¶9. “It is well settled that a Complainant need not have formally registered its trademark to proceed under the Policy.” Nation star Mortgage LLC v. Risk Management / Risk management Room, Claim No. FA1501001601437 (NAF Mar. 8, 2015). Complainant’s common law rights are established both by the inherently distinctive nature of the marks and, in the alternative, by substantial evidence that the marks have source-identifying secondary meaning in the minds of consumers.
A trademark that is fanciful, arbitrary, or no more than suggestive of the services becomes “protectable immediately upon use.” Web House USA, Inc. v. eDollarShop Hostmaster a/k/a eDollarShop.com, Claim No. FA0304000155180 (NAF June 10, 2003). Complainant’s mark “circleback” (or “circle back”) is neither generic nor merely descriptive of lending services. Rather, the mark is inherently distinctive in relation to Complainant’s services. See Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, Case No. D2007-0123 (WIPO Apr. 16, 2007) (finding FAIRVIEW and FAIRVIEW COMMERCIAL LENDING inherently distinctive). “Resolution of the question whether Complainant’s mark is suggestive or arbitrary is not material to the outcome of this proceeding.” Endeavors Technology, Inc. v. Dick In Jar, Case No. D2001-0770 (WIPO July 29, 2001) (“a suggestive mark ... is inherently distinctive”).
The term “circleback” is quite unique, with almost no currency in the English language. The Google Books Ngram database, a tool for measuring the frequency of word usages, shows the term’s scarcity: it has only recently risen to the point where it appears in one hundred- thousandth of a percent of books annually. See generally Paul M. Schwartz & Daniel J. Solove, The PII Problem, 86 N.Y.U. L. Rev. 1814, 1825 (Dec. 2011) (“Google Ngram ... permits statistical analysis of the frequency of use of specific words and phrases”); Authors Guild, Inc. v. Google Inc., 954 F. Supp. 2d 282, 287-88 (S.D.N.Y. 2013) (discussing “data mining” uses of Google Books database) (“Researchers can examine word frequencies, syntactic patterns, and thematic markers to consider how literary style has changed over time.”); Ben Zimmer, Google’s Ngram Viewer Goes Wild, The Atlantic (Oct. 17, 2013) (discussing “Google’s fabulous language-analysis tool”) (available at http://www.theatlantic.com/technology/archive/2013/10/googles-ngram-viewer-goes- wild/280601/). Likewise, the Trademarks Electronic Search System (“TESS”) database of the United States Patent and Trademark Office shows only nine trademarks that include the words “circle” and “back” for which federal registration has ever been sought, none of which relate to lending services or any other services in the financial industry.
Such a distinctive trademark requires only proof of use as a trademark, not proof of any secondary meaning, to satisfy the burden of proving Complainant’s rights under UDRP ¶4(a)(i). dB Special Instruments Inc. v. AIM Technologies Inc., Claim No. FA1107001397026 (NAF Sept. 6, 2011).
Complainant’s ample proof of trademark use in commerce is more than sufficient. Complainant was formally incorporated on January 18, 2012 in the state of Delaware under its original corporate name, Circleback Lending, LLC. Solomon Aff. ¶12. Complainant registered its domain name circlebacklending.com on January 18, 2012. Solomon Aff. ¶7. Evidence from the Internet Archive’s Wayback Machine shows that Complainant has been promoting its services to borrowers and investors through its circlebacklending.com website since at least October 20, 2012. Solomon Aff. ¶14.
Complainant further registered as a foreign limited liability company in Florida on November 26, 2012. Solomon Aff. ¶15. Complainant adopted its current name, Circleback Lending, Inc., when it converted from an LLC in Delaware on December 18, 2013. Id. ¶16. On the same day Complainant registered as a foreign corporation in Florida under its current name. Id. ¶17.
Complainant made its services available for lenders and borrowers on July 8, 2013, when it launched its website at circlebacklending.com for public viewing and use. Solomon Aff. ¶18. Complainant has been actively using its marks in commerce since July 2013, when it launched its online lending platform to service loans in Georgia and New Mexico. Complainant now services loans through its website in 32 states, the District of Columbia, and to U.S. armed forces in the Americas, Europe, and the Pacific. Solomon Aff. ¶20.
From July 2013 to the present, Complainant has continuously operated its website and has continuously used both its name and circlebacklending.com, the functionally identical name of its website, to identify its services in commerce, namely, Complainant’s online consumer credit platform matching borrowers with lenders. Throughout that time, Complainant’s website has prominently displayed its marks in connection with the platform on its website. By November 6, 2015 Complainant had funded more than 13,000 loans totaling more than $240,000,000 through the platform on its website. Solomon Aff. ¶21.
In addition, and in the alternative, Complainant’s evidence also suffices to show that its marks have obtained secondary meaning among consumers. “Previous panels have held that complainants may establish a common law trademark through evidence such as the manner and amount of promotion of goods available under the mark, the extent of complainant’s use of the mark, and a degree of consumer recognition, all of which contribute to the establishment of a secondary meaning in a mark.” D B Industries, LLC d/b/a Capital Safety USA v. ICS INC., Claim No. FA1501001602653 (NAF Mar. 3, 2015). Complainant has invested substantial resources over an extended period to promote its common-law marks and the services offered thereunder. Solomon Aff. ¶23. Complainant has invested more than $500,000 on website development. Id. ¶
24. In 2014 alone, Complainant spent more than $500,000 on online marketing costs. Id. ¶25. In the first three quarters of 2015 Complainant spent more than $2,900,000 on online marketing costs, and spent approximately the same amount on direct mail costs. Id. ¶26.
Complainant has advertised its services at a wide range of third-party websites, including Lending Tree, Bankrate, Credit Sesame, Top10PersonalLoans.com, Lower My Bills, GuideToLenders.com, PersonalLoans.com, and CreditSpider. Id. ¶27. Complainant has also spent more than $180,000 on investor conferences, presentations, and other public appearances to promote its services in connection with its marks. Id. ¶28. See Cybertania, Inc. v. Right Mobile, Inc. Domain Manager and Right Mobile, Inc. c/o Domain Manager, Claim No. FA0706001015411 (NAF Aug. 6, 2007) (finding such investments showed complainant had acquired secondary meaning in its mark sufficient to establish common law rights). Complainant has promoted its marks by distributing phone chargers, binders, and flyers at investor conferences bearing the marks. Solomon Aff. ¶28. Complainant has more than 200,000 prospects in its email database, more than 3,900 likes on its Facebook page, and more than 1,100 followers on its Twitter account. Id. ¶29. Over the first nine months of 2015, Complainant’s website traffic counts showed an average of more than 43,000 unique users per month. Id. ¶30.
Complainant’s marks are widely recognized to indicate Complainant as the source of its services. Id. ¶4.
Complainant’s prior registration and continuous use of a domain name identical to the mark, along with its other supporting evidence, establishes its common law rights. See Boston Technologies, Inc. v. Derek Snedden, Claim No. FA1304001494570 (NAF May 29, 2013); Congregation Shuvah Yisrael, Inc. v. [Registrant] c/o Jeff Neckonoff, Claim No.
FA0707001043126 (NAF Sept. 7, 2007). As a result of Complainant’s extensive marketing and media coverage, and its prosperous business relations with a growing network of loan consumers and investors, Complainant’s marks have achieved a secondary meaning associated with Complainant sufficient to readily distinguish its services from those of others and establish its common law rights.
ii. Complainant’s common law rights in its marks predate Respondent’s registration.
Complainant was the exclusive user of its marks in commerce before Respondent registered the Domain Name. Complainant’s marks had become identified with its services in the public eye well before the contested registration. Complainant launched its online platform on July 8, 2013 and has been actively using its marks in commerce ever since. See Solomon Aff. ¶¶18-19. Over almost three years as a loan provider and platform for institutional loan investors, Complainant has originated and securitized a substantial volume of loans.
On September 23, 2014, almost two months before Respondent registered the Domain Name, Complainant entered into an agreement to facilitate the sale and securitization of up to $500,000,000 aggregate principal amount of consumer loans. Solomon Aff. ¶¶22, 31-32. That securitization agreement was reported by the widely read newspaper Financial Times on September 25, 2014 and by the wire service Reuters on October 2, 2014, among other places. Solomon Aff. ¶¶32-33. Complainant had funded hundreds of loans totaling more than $4,000,000 by October 10, 2014, more than a month before Respondent registered the Domain Name. Solomon Aff. ¶21-22. Since then, Complainant has funded more than 13,000 additional loans totaling more than $236,000,000. Solomon Aff. ¶21.
Evidence of financial transactions, even if far more limited, can establish prior use in commerce. See James Good o/a Pornreports.com v. Anderson, Case No. D2004-0391 (WIPO July 5, 2004) (complainant who claimed $2000 income per month over three months established common law rights). Likewise, it takes little time to establish common law service mark rights in a domain name. See id. (complainant had common law rights in domain name after two years and seven months of use); Utigerverij Crux v. W. Frederick Isler, Case No. D2000-0575 (WIPO Oct. 30, 2000) (complainant established common law rights in CRUX mark through use of crux.be as a subdomain for one year and two months before respondent registered crux.net); Mr. Itay Hasid and Mr. Daniel Assis v. Asha Hussein, Case No. D2015-1026 (WIPO July 23, 2015) (finding common law rights in mark after four months of use). “[C]ommon law trademark rights ... arise from the fact of use rather than the passage of any specified length of time.” Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Weber’s Mackinac Island Florist, Case No. D2001-0653 (WIPO Sept. 17, 2000).
Complainant registered its corporate name in Delaware more than four years ago. Solomon Aff. ¶12; see also Solomon Aff. ¶16. Evidence of such registration, combined with evidence of usage, can establish common law rights in the corporate name as an unregistered mark. See Parcels Abroad GP, LP v. Olena Vankova, Parcelsabroad LLC, Case No. D2014-1988 (WIPO Jan. 26, 2015) (registration of Complainant name as Florida foreign limited partnership two years and four months before complaint sufficed to show common law rights for purposes of Paragraph 4(a)(1) of the UDRP).
Complainant’s substantial commercial use in commerce for a significant period of time before Respondent’s registration satisfies the standard for common law rights. By September 23, 2014, Complainant had originated more than $4 million in loans and agreed to securitize another $500 million worth of loans originated on its platform. Solomon Aff. ¶¶22 & 32. Complainant was a sponsor featured at American Banker magazine’s P2P Banking & Investing conference, on October 6 and 7, 2014. Solomon Aff. ¶34 By October 11, 2014, Complainant was marketing and facilitating loans in 24 states and the District of Columbia. Solomon Aff. ¶35. Complainant’s services had been widely reported in the mass media and financial industry media before Respondent’s registration of the Domain Name. Complainant advertised its services in connection with its marks on Lending Tree’s website on or before November 11, 2014. Solomon Aff. ¶27. Respondent registered the Domain Name on November 14, 2014, quick on the heels of this extensive wave of publicity for, and use and marketing of, Complainant’s marks in connection with its services. This piggybacking registration came after Complainant had established its common law rights.
iii. Respondent’s domain name is identical or confusingly similar to Complainant’s marks.
In all material respects the Domain Name is highly confusingly similar, if not identical, to Complainant’s common-law marks. It incorporates common law marks of the Complainant in their entirety, adding only non-distinctive matter. The Domain Name circlebacklendinginc.com incorporates Complainant’s common law mark in “CircleBack Lending” in full, as well as Complainant’s full corporate name, CircleBack Lending, Inc., and its primary domain name, circlebacklending.com. It eliminates the space between CircleBack and Lending, but the elimination of spaces between terms does not establish distinctiveness from Complainant’s mark under UDRP ¶4(a)(1). Bond & Co. Jewelers, Inc. v. Texas International Property Associates, Claim No. FA0703000937650 (NAF Apr. 30, 2007).
The Domain Name also adds the suffix “.com” but this gTLD is irrelevant for purposes of the UDRP. “The gTLD .com in the domain name must be disregarded when comparing the disputed domain name to Complainants mark under Policy ¶4(a)(i).” Philip Morris USA Inc. v. Vyacheslav Pyatkovskiy, Claim No. FA1312001534520 (NAF Jan. 20, 2014). “The addition of corporate designations such as ‘inc’ ... does not serve to distinguish the disputed domain name from the Complainant’s mark.” Avant Credit Corporation v. Andy Tang, Case No. D2014-2163 (WIPO Mar. 2, 2015).
The Domain Name also includes the “inc” suffix from Complainant’s corporate entity name, which is also insufficient to distinguish it from Complainant’s marks. See DFDS A/S v. Milena Valenskaya, Case No. D2011-0941 (WIPO Aug. 17, 2011) (transferring dfds-seaways-inc.com) (“the ‘inc’ element is generic and would be regarded as an abbreviation of the term “incorporated”); Ruff GmbH v. Private Registrations Aktien Gesellschaft, Case No. D2010-0434 (WIPO May 10, 2010) (transferring ruff-inc.com) (“The annex ‘-inc’ in the disputed domain name is an abbreviation for incorporated which refers to the legal form of a corporation. The addition of this annex to the Complainant's trademark is not sufficient to avoid confusion.”).
Adding such generic or descriptive matter does not make a domain name any less identical or confusingly similar. Tyson Foods, Inc. v. PrivacyProtect.org / Timmy Smith / Ross Reynolds / Marcus Roland, Case No. D2011-0412 (WIPO Apr. 29, 2011); Magnum Piering, Inc. v.
Mudjackers, Case No. D2000-1525 (WIPO Jan. 29, 2001). Because the Domain Name directs Internet users to a website that misleadingly portrays itself under Complainant’s corporate name, the Domain Name’s inclusion of the “inc” suffix from Complainant’s corporate name actually increases the likelihood of confusion with Complainant. See Solomon Aff. ¶¶36-37. See Cadbury Limited v. Marketing Total S.A., Case No. D2007-0854 (WIPO July 31, 2007).
[b.] Respondent has no rights or legitimate interests in respect of the disputed domain name that is the subject of the complaint. Rule ¶3(b)(ix)(2); UDRP ¶4(a)(ii).
Respondent has no rights or legitimate interests in respect of the Domain Name. Solomon Aff. ¶38. Respondent can show no legitimate purpose for registering a domain name identical with, or confusingly similar to, Complainant’s CircleBack Lending and circlebacklending.com marks. As noted above, Complainant’s services have become synonymous with its marks.
Complainant has no relationship with Respondent and has not authorized Respondent to use Complainant’s name or marks. Id. Registration of a mark by an entity with no relationship to the mark itself creates a strong presumption that the Respondent lacks a legitimate interest in the domain name. Novozymes A/S v. Wenying Wang, Case No. D2009-0665 (WIPO July 14, 2009) (“Previous panels have established that use of a well-known mark as a domain name by a person unconnected to products identified by the well-known mark to attract Internet users to a website for commercial gain is opportunistic bad faith registration and use[.]”) (collecting decisions).
There is no evidence that Respondent has been commonly known by the Domain Name, or has used the Domain Name in connection with a bona fide offering of goods or services, or a noncommercial or fair use. See UDRP ¶4(c). “[A] respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, to suggest otherwise.” MSC Headhunting v. Domain Privacy Service FBO Registrant, Claim No. FA1311001529622 (NAF Jan. 20, 2014). The WHOIS registration lists Respondent as Andy Tang. Annex 1.
Respondent uses the Domain Name to promote a website that repeatedly references Complainant’s marks and name and passes itself off as Complainant’s official website. Solomon Aff. ¶¶36-37. The resolving content connected to the Domain Name draws false associations with the Complainant’s domain name and trademarks, trading on Complainant’s goodwill. Id. It resolves to a website designed to collect consumers’ contact information, generating leads for use by lending operations in direct competition with Complainant. Id.
Respondent’s Domain Name resolves to a website entitled CircleBack Lending Inc (Complainant’s corporate name), falsely purporting to be established or authorized by Complainant. Id. Having sown consumer confusion with his misleading domain name and website, Respondent harvests that confusion by collecting the contact information of misled consumers to generate leads for loan offers. Solomon Aff. ¶39. Respondent’s website also contains links describing and marketing various lending services. That is not a legitimate use. See The Royal Bank of Scotland Group Plc v. Domain Admin, WhoIs Privacy Corp., Case No. D2014-1817 (WIPO Jan. 9, 2014) (respondent had no rights or legitimate interests in rbscotlnd.com) (“Respondent’s use of the Complainant’s well-known mark and name in the Domain Name and on the website in connection with banking related links are sufficient to establish, that the Respondent registered and used the Domain Name incorporating the Complainant’s RBS Mark to attract Internet users for commercial gain”). Respondent has no rights or legitimate interests in the Domain Name.
[c.] Respondent adopted Complainant’s trademarks for its domain name, and
registered and uses the domain name, in bad faith. Rule ¶3(b)(ix)(3); UDRP ¶4(a)(iii).
“Given the human capacity for mischief in all its forms, the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to exhaustively enumerate all its varieties.” Worldcom Exchange, Inc. v. Wei.com, Inc., Case No. D2004-0955 (WIPO Jan. 5, 2005). “The requirement to show bad faith under the Policy does not require that positive action be shown on the part of the respondent. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names[.]” DD IP Holder LLC v. Phill Aspden, Claim No. FA1502001603215 (NAF Apr. 8, 2015) (citing Twentieth Century Fox Film Corp. v. Risser, FA 93761 (NAF May 18, 2000)). The UDRP informs respondents that the following circumstances are examples that “shall be evidence of the registration and use of a domain name in bad faith”:
• “you have registered the domain name primarily for the purpose of disrupting the business of a competitor,” UDRP ¶4(b)(iii); or
• “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” UDRP ¶4(b)(iv).
This case offers ample evidence that Respondent registered and is using the Domain Name in bad faith. Through its misleading domain name and website, Respondent is intentionally attempting to attract Internet users to its website for commercial gain, seeking to unjustly enrich itself by misappropriating Complainant’s goodwill and creating a likelihood of confusion with Complainant. Respondent’s unauthorized use of Complainant’s marks, in the Domain Name and on its corresponding website, is only for the purposes of disrupting Complainant’s business and siphoning off Complainant’s prospective customers, exemplifying the bad faith discussed in UDRP ¶4(b)(iii) and (iv).
Respondent’s website operates as a lead generation machine. It features an application form to be filled out by misled consumers who express their interest in consumer loans - which is Complainant’s trade, and the services offered under Complainant’s trademarks. Solomon Aff. ¶
39. Respondent then harvests those contacts in order to sell the leads to Complainant’s competitors. Id. This is Respondent’s modus operandi, as a UDRP panel described last year: “The evidence supports Complainant’s contention that Respondent’s confusingly similar domain name resolves to a commercial website that permits Internet users to apply for fast cash loans. Presumably, as asserted by Complainant, such loans will be made by Complainant’s competitors.” Check Into Cash, Inc. v. Andy Tang, BH Media Inc., Case No. D2014-2057 (WIPO Jan. 15, 2015).
Since 2013, Respondent has registered and holds hundreds of domain names that blatantly copy the trade names and trademarks of legitimate commercial businesses in the financial sector, piggy-backing on the successful branding efforts of Complainant and scores of others. Solomon Aff. ¶40. Respondent’s opportunistic domain names typically incorporate trademarks owned by third-party lenders and employed by those lenders in their own domain names. Id. For comparison, Respondent registered the domain name www- towerloan.com, which resolves to a website that (like the website associated with the Domain Name) appropriates the corporate name of another lender, Tower Loan of Mississippi, LLC. Solomon Aff. ¶42. Those third-party lender trademarks featured in Respondent’s registered domain names are consistently, prominently, and misleadingly employed in his corresponding websites. Since 2014, Mr. Tang has lost or acceded to at least four different domain name dispute proceedings, each filed by financial sector complainants. Capital One Financial Corp. v. Andy Tang, Claim No. FA1406001562673 (NAF July 2, 2014) (capitalone-cashadvance.com); Amscot Financial, Inc. v. Andy Tang, Case No.
D2014-1984 (WIPO Dec. 18, 2014) (amscot-cashadvance.com); Check Into Cash, Inc. v. Andy Tang, BH Media Inc., Case No. D2014-2057 (WIPO Jan. 15, 2015) (checkintocashreviews.com); Avant Credit Corporation v. Andy Tang, Case No. D2014-2163 (WIPO Mar. 2, 2015) (avantcreditinc.com, avantcreditreview.com, avantcreditreviewsinc.com and avantcredit247.com); Prosper Funding LLC v. Andy CZM, BH Groups, Case No. D2015-1038 (WIPO July 29, 2015) (prosperloansreviews.com) (noting without deciding on complainant’s allegation that “‘Andy CZM’ is the same person or entity as the ‘Andy Tang’” in related decisions). Solomon Aff. ¶42.
Respondent’s bulk registrations of domain names bearing financial-sector trademarks make it wholly implausible that his registration and use of the Domain Name was innocent or without knowledge of Complainant’s marks. See, e.g., Prosper Funding, LLC v. Pongskorn Petwong, Case No. D2015-1792 (WIPO Nov. 27, 2015) (finding that “it is reasonable to infer that the Respondent knew about the existence of the Complainant's trademarks when registering the disputed domain name,” based on respondent’s registration of “more than eighty domain names related to money lending and cash loans” and “the website to which the disputed domain name resolves”). Instead, Respondent’s bad faith registration and use is his pattern and practice. Respondent registered the Domain Name more than four months after losing his first UDRP decision over another domain name in the financial services sector he registered and used. See Annex 22 As indicated by the several UDRP decisions against him since December 2014, Respondent continues to seek profit by poaching brands in the financial industry. Id.
Such a pattern of conduct manifests bad faith pursuant to ¶4(b)(ii) of the UDRP. See BlackRock, Inc. v. Samantha Garrett, Black Rock Wealth, Case No. D2014-1978 (WIPO Dec. 31, 2014) (“[T]he Panel accepts the Complainant’s evidence that the Respondent has produced identical websites at other domain names, which relate to at least two other financial services companies. Based on this, the Panel can reasonably infer that this series of websites, including the one hosted at the Disputed Domain Name, were likely being used for some illegitimate purpose, and in bad faith.”); First Citizens Bancshares, Inc. v. Richard Davis, Case No. D2014- 2221 (WIPO Feb. 26, 2015).
Respondent could not have registered the Domain Name in good faith. The Domain Name includes, and expressly refers to, Complainant, its marks, and its lending services. It is not reasonably possible that Respondent had not heard of Complainant and its trademark before registering the infringing Domain Name. Complainant and its marks had been widely reported in the mass media and financial industry media before the disputed domain names’ registration. In addition, Complainant’s trademark is a rare coinage, with almost no currency in the English language. Moreover, Complainant’s Boca Raton headquarters is less than ten miles from Respondent’s purported Deerfield Beach address. See Solomon Aff. ¶4. If Respondent were in Deerfield Beach, its knowledge of Complainant’s rights in the mark at the time of registering the Domain Name could be inferred. Philadelphia Consolidated Holding Corporation d/b/a/ Philadelphia Insurance Companies v/ Scott Johnson / George Hoffman / IV Marketing, Inc., Case No. D2014-0758 (WIPO July 25, 2014). It is not plausible that Respondent’s registration and use of the Domain Name were innocent or without knowledge of Complainant’s marks. Respondent’s website, littered with references to Complainant and its marks, leaves no doubt that Respondent registered and uses the Domain Name to falsely suggest to Internet users a connection between the Domain Name and Complainant. Respondent’s use of the Domain Name to generate leads for Complainant’s competitors supports a finding of Respondent’s bad faith registration and use. See Philadelphia Consolidated Holding Corporation.
Respondent’s false contact information provided in the WHOIS registration is further evidence of Respondent’s bad faith. Complainant sent a demand letter to Registrant via both mail and email on January 23, 2015 in a good-faith attempt to negotiate a voluntary transfer of the Domain Name. Respondent did not reply to the email and the letter was returned to Complainant undelivered. Solomon Aff. ¶¶6-7. Instead, on November 12, 2015, Respondent renewed his registration, changing the listed mailing address to a non-existent address. Id. ¶¶3-4. Providing false contact information in a domain name registration is evidence of bad faith. Forte Communications, Inc. v. Service for Life, Case No. D2004-0613. (WIPO Sept. 22, 2004); Yapi v. Kredi Bankasi A.S. v. Burak Balibey, Case No. D2006-0571 (WIPO July 6, 2006); Caterpillar, Inc. v. Yanh Chao / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, Case No. D2014-1750 (Nov. 24, 2014) (noting “other indications of bad faith” including “the failure to respond to the Complainant’s cease and desist letter ... and the provision of a false address to the Registrar”).
After renewing the registration, Respondent added to the website corresponding to the Domain Name a new page, dated January 12, 2016. Solomon Aff. ¶44. The new page on Respondent’s website offers “payday loans.” Id. Complainant does not offer payday loans, which are widely viewed as predatory. Solomon Aff. ¶45. When a Complainant is in the financial industry, the Respondent’s use of a contested domain name to resolve to a website that purports to offer “cash payday loans” supports a finding of bad faith. See Dollar Bank, Federal Savings Bank v. rasin trirattanachote /WhoisGuard, Inc., Case No. D2015-1674 (WIPO Nov. 20, 2015). “The evidence supports Complainant's contention that Respondent's confusingly similar domain name resolves to a commercial website that permits Internet users to apply for fast cash loans. Presumably, as asserted by Complainant, such loans will be made by Complainant's competitors.” Check Into Cash, Inc. v. Andy Tang, BH Media Inc., Case No. D2014-2057 (WIPO Jan. 15, 2015) (finding each element of the UDRP satisfied against Respondent).
Respondent failed to submit a Response in this proceeding.
(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.
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 the following three elements to obtain an order cancelling or transferring a domain name:
(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(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 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 does not claim to have rights in the CIRCLEBACK LENDING mark based upon registration of the mark with a governmental trademark agency (such as the United States Patent and Trademark Office). However, the Policy does not require trademark registration if a complainant can demonstrate common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant claims to have common law rights in the CIRCLEBACK LENDING mark dating back to January 18, 2012. A complainant must show its mark has acquired a secondary meaning to have common law rights. Relevant evidence of secondary meaning includes ownership of a domain name identical to the mark, continuous use in commerce and evidence of investment and sales made under a mark. See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Cybertania, Inc. v. Right Mobile, Inc. Domain Manager, FA 1015411 (Nat. Arb. Forum Aug. 6, 2007) (finding that a complainant had acquired secondary meaning sufficient to establish common law rights in a mark pursuant to Policy ¶4(a)(i) where the complainant had invested “enormous resources” in promoting the goods and services available under the complainant’s mark). Complainant has provided the following evidence: its incorporation in Delaware on January 18, 2012, its record of registration for the <circlebacklending.com> domain name on January 18, 2012, use of the <circlebacklending.com> domain name to promote lending services since October 20, 2012, the registration of Complainant’s current business name in Florida (which the Panel researched independently because the copy provided by Complainant filed to open properly), use of the <circlebacklending.com> domain name to provide services since July 2013, recognition of Complainant’s use of the mark (including articles about Complainant and a press release), and costs incurred in promoting and using the mark. This evidence adequately demonstrates secondary meaning. Complainant has common law rights in the CIRCLEBACK LENDING mark according to Policy ¶4(a)(i).
Complainant claims Respondent’s <circlebacklendinginc.com> domain name is confusingly similar to the CIRCLEBACK LENDING mark because it contains the entire mark (less the space) combined with the term “inc” and the gTLD “.com.” The term “inc” is generic or descriptive because it is merely a shortened form of the word “incorporated.” The lack of a space in the domain name must be ignored under a Policy ¶4(a)(i) analysis because spaces are prohibited characters in domain names. Likewise, the present of a TLD under a Policy ¶4(a)(i) analysis must be ignored because domain name syntax requires a TLD (whether a gTLD or a ccTLD). Therefore, the <circlebacklendinginc.com> domain name is confusingly similar to the CIRCLEBACK LENDING mark pursuant to Policy ¶4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i)).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the <circlebacklendinginc.com> domain name because Respondent has not been authorized to use the CIRCLEBACK LENDING mark and because the WHOIS information lists “Andy Tang” as Registrant. There is no obvious relationship between “Andy Tang” and <circlebacklendinginc.com>. Lacking any evidence to the contrary, the Panel must conclude Respondent is not commonly known by the <circlebacklendinginc.com> domain name according to Policy ¶4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims Respondent fails to use the <circlebacklendinginc.com> domain name to provide (i) a bona fide offering of goods or services or (ii) a legitimate noncommercial or fair use because the resolving website is used to pass off as Complainant to collect information that is sold to Complaint’s competitors. Respondent’s web site gathers financial information from internet visitors seeking consumer loans. This is done to collect contact prospect information, which is then sold to provide leads to Complainant’s competitors. In short, Respondent passes itself off as Complainant to gain a commercial advantage at Complainant’s expense. It seems clear Respondent fails to use the <circlebacklendinginc.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶4(c)(i) and Policy ¶4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has demonstrated a pattern of bad faith registration and use of domain names through prior decisions found against it. Complainant suggests such actions violate Policy ¶4(b)(ii). This Panel thinks not because Complainant has not been prevented from reflecting its mark in a domain name. This is a required element under Policy ¶4(b)(ii). While this information certainly explains Respondent’s motive and method of operation, it is not a sufficient basis upon which to find bad faith registration and use.
Complainant claims Respondent uses the <circlebacklendinginc.com> domain name to disrupt Complainant’s business because the resolving website is used to collect consumer contact information, which is then sold to Complainant’s competitors. This is sufficient to show Respondent uses the <circlebacklendinginc.com> domain name in bad faith under Policy ¶4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶4(b)(iii)). There is no other explanation for Respondent’s actions, which leads the Panel to conclude Respondent registered and use the domain name in bad faith.
Complainant claims Respondent uses the <circlebacklendinginc.com> domain name to attract consumers for commercial gain by confusing them about whose web site it is. Certainly there is nothing on the web site to explain the difference between the parties. Their names are confusingly similar and Respondent’s web site clearly suggests Respondent is in Complainant’s business (except Complainant will not do payday loans). Respondent uses the confusion to collect information about prospects looking for Complainant. The prospects’ contact information is sold to Complainant’s competitors. Respondent is attempting to trade on Complainant’s goodwill for profit. Respondent registered and uses the <circlebacklendinginc.com> domain name in bad faith under Policy ¶4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
Complainant claims Respondent’s registration of the <circlebacklendinginc.com> domain name was done in bad faith because Respondent knew about Complainant’s mark. Given Respondent’s past history, the actual use of the web site, this seems clear. Respondent could not have decided to use the domain name as it did without knowledge of Complainant’s mark and business. The fictitious address Respondent provided in its WHOIS information is within 10 miles of Complainant’s own Boca Raton address (further showing Respondent’s attempt to confuse the public). It seems obvious Respondent registered and uses the <circlebacklendinginc.com> domain name in bad faith. 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 Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration).
Finally, Respondent has provided false contact information in its WHOIS contact information. In the commercial context, this raises the rebuttable presumption of bad faith registration and use of the domain name. Respondent has done nothing to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered that the <circlebacklendinginc.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, April 28, 2016
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