J.G. Wentworth S.S.C. Limited Partnership v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1702001718327
Complainant is J.G. Wentworth S.S.C. Limited Partnership (“Complainant”), represented by Charles S. Marion of Pepper Hamilton LLP, Pennsylvania, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jgwentworthco.com>, registered with Internet Domain Service BS Corp.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2017; the Forum received payment on February 21, 2017.
On February 23, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <jgwentworthco.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 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 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@jgwentworthco.com. Also on February 28, 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 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant registered its J.G. WENTWORTH mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,142,341, registered Mar. 10, 1998.), and has rights in the mark under Policy ¶ 4(a)(i).
Respondent’s <jgwentworthco.com> domain name is confusingly similar to Complainant’s mark because it merely inserts the generic term “co” into the fully incorporated J.G. WENTWORTH mark, less the punctuation and spacing.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its J.G. WENTWORTH mark in any fashion, and Respondent is not commonly known by the disputed domain name.
Further, Respondent incorporates the J.G. WENTWORTH mark prominently on the <jgwentworthco.com> website, often appearing in bold letters, presumably to mislead consumers for commercial gain. The website offers “payday loans,” a service closely related to the services offered by Complainant. Such use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii), respectively.
Respondent has registered and is using the <jgwentworthco.com> domain name in bad faith. Respondent is attempting to attract internet traffic and commercially benefit from the goodwill of the J.G. WENTWORTH mark. Respondent creates confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. This use clearly points to a finding that Respondent had actual knowledge of Complainant’s rights in the J.G. WENTWORTH mark when it registered the nearly identical disputed domain name. Lastly, Respondent’s use of a privacy shield is additional evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the J.G. WENTWORTH mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its J.G. WENTWORTH trademark.
Respondent’s <jgwentworthco.com> domain name addresses a webpage displaying Complainant’s trademark and offering loan products, as if it were 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 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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its J.G. WENTWORTH mark with the USPTO is sufficient to allow the Panel to find that Complainant has rights in a mark under the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.)
The at-issue domain name consists of Complainant’s entire J.G. WENTWORTH trademark less its space and periods, followed the generic abbreviation for company, “co.” The domain name is completed by adding a syntactically necessary top level, here “.com.” The slight differences between the domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel finds that the at-issue <jgwentworthco.com> domain name is confusingly similar to Complainant’s CAPITAL ONE mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also, Memoirs, Inc. v. Patel, FA 98244 (Forum Aug. 28, 2001) (finding the domain name to be confusingly similar where a period was omitted from the I.MEMOIRS mark and the gTLD “.com” was added); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Absent contrary evidence of Policy ¶4(c) circumstances, or other evidence supporting a finding of Respondent’s having rights or legitimate interests in the domain name, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “WHOIS PRIVACY CORP.” Further, there is no evidence in the record which otherwise suggests that Respondent is known by the at-issue domain name. Therefore, the Panel concludes for the purposes of Policy ¶ 4(c)(ii) that Respondent is not commonly known by the at-issue domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <jgwentworthco.com> domain name addresses a website that displays Complainant’s trademark and offers competitive services to site visitors while posing as a website endorsed by Complainant. Respondent’s use of the at-issue domain name in this manner, which is apparently designed for Respondent’s ultimate benefit, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See generally Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Circumstances are present which compel the Panel to conclude that, pursuant to paragraph 4(a)(iii) of the Policy, Respondent acted in bad faith in registering and using the at-issue domain name.
As alluded to above regarding rights and interests, Respondent uses the at-issue domain name to attract internet traffic to a website which pretends to be sponsored by Complainant. It is reasonable to assume that in using the domain name for such purpose Respondent intends to ultimately benefit from the misappropriated goodwill associated with Complainant’s J.G. WENTWORTH mark. Using the domain name in this manner to create confusion as to the source, sponsorship, affiliation, or endorsement of the content addressed by the confusingly similar domain name demonstrates Respondent’s registration and use of the domain name in bad faith under to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
Finally, Respondent registered the <jgwentworthco.com> domain name knowing that Complainant had trademark rights in the J.G. WENTWORTH trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from <jgwentworthco.com>’s overt similarity to Complainant’s mark, and from Respondent’s blatant use of the J.G. WENTWORTH mark on the webpage addressed by Respondent’s confusingly similar domain name. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some inoffensive reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <jgwentworthco.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jgwentworthco.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 28, 2017
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