Chrysalis Holdings, LLC v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1702001716446
Complainant is Chrysalis Holdings, LLC (“Complainant”), represented by Meaghan H. Kent of Venable LLP, United States of America. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newdayusacash.com>, (‘the Domain Name’)registered with Internet Domain Service BS Corp.
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.
Dawn Osborne of PBIP as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 8, 2017; the Forum received payment on February 8, 2017.
On February 9, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <newdayusacash.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 February 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2017 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@newdayusacash.com. Also on February 10, 2017, 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 March 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of PBIP 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.
A. Complainant
Complainant’s contentions can be summarized as follows:
Complainant is a mortgage lender and offers consumer financial services to veterans, service members and their families. It owns several USA trade marks containing NEW DAY, its NEWDAY mark being first used in 2002 and its NEWDAY USA mark being first used in 2011. Its exclusive licensee owns NEWDAY USA.com.
Respondent has registered the Domain Name which is confusingly similar to Complainant’s trade mark NEWDAY USA with the addition of the term ‘cash’ which is a descriptor of Complainant’s primary financial product. Respondent appears to be a mortgage lead generator in the business of collecting customer information and reselling it to other lenders in competition with Complainant.
Respondent has no rights to any trade mark consisting of the term ‘Newday USA’. It is not commonly known by that term or ‘Newday USA Cash’. It is not an authorized provider of Complainant’s services. Complainant has never licensed Respondent to use any of its marks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Instead, Respondent is using the Domain Name to cause confusion, diverting Complainant’s customers and potential customers and competing unfairly for Complainant’s customer base.
The Domain Name was registered in 2016. Respondent is misrepresenting its web site as being related to Complainant. This demonstrates an intent to create confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site or of a service on its web site and is likely to misleadingly divert web users trying to locate Complainant and Complainant’s web site. Respondent’s use of the Domain Name in furtherance of competing loan services is likely to cause confusion as to the source or endorsement of those financial products and is bad faith registration and use under Policy 4 (b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a mortgage lender and offers consumer financial services to veterans, service members and their families. It owns several USA trade marks containing NEW DAY, including NEWDAY, this mark being first used in 2002 and NEWDAY USA being first used in 2011.
The Domain Name registered in 2016 has been used to offer financial services in competition with Complainant.
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(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 (Forum July 31, 2000) (holding that 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.”).
The Domain Name consists of Complainant's NEWDAY USA registered mark, the generic term ‘cash’ and the gTLD .com.
Panels have found confusing similarity where only generic terms were added to a mark in a domain. See Yahoo! Inc v Zuccarini, D2000-0777 (WIPO Oct. 2, 2000)(finding that the registration and use of multiple domain names containing Complainant’s mark together with generic words such as ‘chat’ and ‘financial’ were confusingly similar under the Policy). See also Abbott Laboratories v Miles White, FA 1646590 (Forum Dec, 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to Complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4 (a)(i)).
gTLDs do not serve to distinguish the Domain Names from a mark which is the distinctive component of the Domain Names. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Respondent has not responded to Complainant or given any explanation for its use of Complainant’s trade mark in the Domain Name. The Panel has had an opportunity to review Respondent's web site. It was not clear to the Panel upon a quick review of the site that it was not a site authorised by Complainant. As such, the web site must be considered to be misleading by its use of the Domain Name confusingly similar to Complainant’s NEWDAY USA trade mark, and the prominent use of Complainant’s NEW DAY USA mark in its masthead. Previous panels have also found that use by a respondent of a confusingly similar domain name to a well known mark of a complainant to attract Internet users to a competing web site does not constitute a bona fide offering of goods and services nor a legitimate or non commercial fair use. See General Motors LLC v MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that ‘use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods and services pursuant to Policy 4 ( c ) (i) or a legitimate non commercial fair use pursuant to Policy ( c ) (iii). As such, the Panel finds that Respondent lacks any rights or legitimate interests in the Domain Name.
Registration and Use in Bad Faith
Having found that Respondent's web site is confusing and misleading customers the Panel believes that Respondent is attempting to pass itself off as authorised by Complainant, and has intentionally attempted to attract for commercial gain internet users to its web site by creating a likelihood of confusion by using Complainant's marks and logo as to the source or endorsement of its web site under Para 4 (b) (iv) of the Policy, and also causing disruption to Complainant under Para 4 (iii) of the Policy. See DatingDirect.com Ltd. v Aston, FA 593977 (Forum Dec. 28 2005)('Respondent is appropriating Complainant’s mark to divert Complainant's customers to Respondent's competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy 4(b)(iii). See also Asbury Auto, Group, Inc v Tex, Int'l Prop. Assocs., FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith registration and use pursuant to Policy 4(b)(iv)). See also 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 Complainant's mark and the domain name was used to host a commercial web site that offered similar services offered by Complainant under its mark). As such, the Panel finds that the Domain Name has been registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newdayusacash.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 23, 2017
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