ZestFinance, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1507001630474
Complainant is ZestFinance, Inc. (“Complainant”), represented by Kenneth D. Suzan of Barnes & Thornburg LLP, Minnesota, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zestcashcom.com>, registered with TLD Registrar Solutions Ltd.
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 July 24, 2015; the Forum received payment on July 27, 2015.
On July 28, 2015, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <zestcashcom.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. 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 28, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 2015 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@zestcashcom.com. Also on July 28, 2015, 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 19, 2015, 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 the ZESTCASH trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,963,514, registered May 17, 2011). The mark is used on or in connection with banking and related financial services.
The <zestcashcom.com> domain name is confusingly similar to the ZESTCASH trademark because the domain name contains the entire trademark and adds the generic term “com” along with the generic top-level domain “.com.”
Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, the disputed domain name resolves to a webpage offering competing services. Also, Respondent is attempting to phish for the personal information of unsuspecting Internet users.
Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Respondent is attempting to commercially profit from a likelihood of confusion by redirecting Internet users to its confusingly similar website that offers competing services. Respondent is also trying to phish for the personal information of unsuspecting Internet users. Lastly, Respondent had actual knowledge of Complainant’s trademark rights when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ZESTCASH 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 relevant trademarks.
Respondent uses the at-issue domain name to address to a webpage that offers services competing with those of Complainant and also furthers a scheme to phish for personal information.
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(e), 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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in the ZESTCASH mark through its USPTO trademark registration. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The <zestcashcom.com> domain name contains Complainant’s entire ZESTCASH trademark, adds the generic term “com” and appends the top-level domain name “.com” to the resulting string. Prior panels have repeatedly found confusing similarity where an at-issue domain name contains a complainant’s entire trademark and adds a generic term. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Likewise, as a general rule the addition of “.com” to a trademark laden domain name domain name will never distinguish it from such trademark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the differences between the at-issue domain name and Complainant’s trademark are insignificant pursuant to Policy ¶ 4(a)(i) and Respondent’s <zestcashcom.com> domain name is thus confusingly similar to Complainant’s ZESTCASH trademark pursuant to Policy ¶ 4(a)(i).
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 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances 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 lists “Domain Admin” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <zestcashcom.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The at-issue domain name addresses a webpage that offers services competing with those offered by Complainant and additionally attempts to acquire the financial information of unsuspecting Internet users through the use of a phishing scheme. The webpage feigns offering Internet users the ability to obtain personal loans. However in order to acquire one of these putative loans, the webpage also asks that Internet users to disclose their name, email address, phone number, address, and social security number. Using the domain name in this manner 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 Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor 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.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as mentioned above, Respondent uses the confusingly similar domain name to address a webpage which offer services that compete with those of Complainant, undoubtedly so that Respondent may commercially profit. To further confuse webpage visitors into believing that they dealing with Complainant when they are not, the webpage displays images of Complainant’s ZESTCASH trademark. Furthermore, the webpage uses the phrase “zest cash” and appears to offer Internet users the ability to obtain personal loans. Using the confusingly similar domain name to promote services that compete with those of Complainant and profit in the process, demonstrates Respondent’s bad faith registration and use of the <zestcashcom.com> domain name under Policy ¶4 (b)(iv). See 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 the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Second, Respondent shows bad faith under Policy ¶ 4(a)(iii) by attempting to phish for the personal information of unsuspecting Internet users. Ostensibly In order to acquire one of the putative personal loans touted on Respondent’s <zestcashcom.com> webpage, Respondent requires Internet users to input their name, email address, phone number, address, and social security number into a web form when it has no legitimate reason collecting such information. Using the domain name in this manner constitutes a phishing scheme and indicates bad faith under Policy ¶4 (a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Finally, Respondent registered the <zestcashcom.com> domain name knowing that Complainant had trademark rights in the ZESTCASH mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of Complainant’s trademark on Respondent’s webpage, as well as from there offering services that are similar to those offered by Complainant. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <zestcashcom.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. 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 <zestcashcom.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 19, 2015
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