Chrysalis Holdings, LLC v. Dern Luetarn
Claim Number: FA1707001740029
Complainant is Chrysalis Holdings, LLC (“Complainant”), represented by Meaghan H. Kent of Venable LLP, United States of America. Respondent is Dern Luetarn (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newdaypay-com.com>, registered with GoDaddy.com, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 14, 2017; the Forum received payment on July 14, 2017.
On July 14, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <newdaypay-com.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 July 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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@newdaypay-com.com. Also on July 17, 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 August 8, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 provides mortgage and financial services to veterans, service members, and their families. Complainant uses the NEWDAY mark in conjunction with its business services. Complainant registered the NEWDAY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,866,494; registered July 27, 2004). Respondent’s <newdaypay-com.com> is confusingly similar to Complainant’s NEWDAY mark because it incorporates the mark in its entirety, adding the generic terms “pay” and “com,” a hyphen, and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <newdaypay-com.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the NEWDAY mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <newdaypay-com.com> resolves to a website offering loans in direct competition with Complainant, presumably for Respondent’s financial benefit.
Respondent registered and is using <newdaypay-com.com> in bad faith. The disputed domain name attracts internet users to Respondent’s website for commercial benefit, creating confusion as to the affiliation Respondent has with Complainant. Respondent registered <newdaypay-com.com> with actual knowledge of Complainant and its rights to the NEWDAY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <newdaypay-com.com> domain name.
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.”).
Complainant provides mortgage and financial services to veterans, service members, and their families. Complainant uses the NEWDAY mark in conjunction with its business services. Complainant claims it registered the NEWDAY mark with USPTO (e.g., Reg. No. 2,866,494; registered July 27, 2004). The consensus among panels is that registrations with USPTO are sufficient to show rights in a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, the Panel determines that Complainant’s registration with USPTO is sufficient to show rights in the NEWDAY mark.
Complainant asserts that Respondent’s <newdaypay-com.com> is confusingly similar to Complainant’s NEWDAY mark because it incorporates the mark in its entirety, adding the generic terms “pay” and “com,” a hyphen, and the “.com” gTLD. A confusing similarity exists where a disputed domain name contains complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016). Moreover, “[t]he added ‘com’ does not defeat a confusing similarity claim because it takes advantage of a common typographical error. It is a basic mistake to type ‘com’ twice without typing the period after the targeted search term.” Borders Props., Inc. v. Hewitt, FA 114618 (Forum July 23, 2002). Panels also have held that “the addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).” Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003). Thus, the Panel concludes that Respondent’s <newdaypay-com.com> is confusingly similar to Complainant’s NEWDAY mark.
Complainant has proved this element.
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 (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 (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 asserts that Respondent does not have rights or legitimate interests in <newdaypay-com.com>. In support of its assertion, Complainant illustrates that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “Dern Luetarn.” Where “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name,” panels have concluded that the respondent is not commonly known by that name. Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003). “Given the WHOIS contact information for the disputed domain [name],” the Panel may “infer that Respondent . . . is not commonly known by the [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003).
Complainant avers it has not authorized or licensed Respondent to use the NEWDAY mark in any regard, nor is Respondent affiliated with Complainant. Complainant argues that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. To support its argument, Complainant demonstrates that Respondent’s <newdaypay-com.com> resolves to a website offering loans in direct competition with Complainant, presumably for Respondent’s financial benefit. The “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 or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016). Therefore, the Panel finds that Respondent, as a competitor of Complainant, has no rights or legitimate interests in a domain name that utilizes Complainant’s mark for its competing website. See e.g., Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Forum Jan. 2, 2003).
Complainant has proved this element.
Complainant maintains that Respondent registered and is using <newdaypay-com.com> in bad faith. Respondent’s <newdaypay-com.com> resolves to a website offering payday loan services under Complainant’s NEWDAY mark. Complainant asserts that the disputed domain attracts internet users to Respondent’s website for commercial benefit, creating confusion as to the affiliation Respondent has with Complainant. “Respondent’s use of the domain name to sell competing services shows that [r]espondent is attempting to commercially benefit from a likelihood of confusion.” ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015). Moreover, panels have found bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000). Therefore, “[a]s Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant,” the Panel finds bad faith registration and use of <newdaypay-com.com> pursuant to Policy ¶ 4(b)(iv). Amazon.com, Inc. v. Shafir, FA 196119 (Forum Nov. 10, 2003).
Finally, Complainant asserts that Respondent registered <newdaypay-com.com> with actual knowledge of Complainant and its rights to the NEWDAY mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Complainant asserts that in light of the fame and notoriety of Complainant's NEWDAY mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Thus, where the circumstances indicate that Respondent had actual knowledge of Complainant's NEWDAY mark when it registered <newdaypay-com.com>, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <newdaypay-com.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: August 14, 2017
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