Chrysalis Holdings, LLC v. Erika Rodriguez / Marketing Company
Claim Number: FA1710001753746
Complainant is Chrysalis Holdings, LLC (“Complainant”), represented by Meaghan H. Kent of Venable LLP, United States of America. Respondent is Erika Rodriguez / Marketing Company (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newdayhomeloans.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 13, 2017; the Forum received payment on October 13, 2017.
On October 16, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <newdayhomeloans.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 October 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@newdayhomeloans.com. Also on October 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 November 9, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Chrysalis Holdings, LLC., is a mortgage lender that provides veterans, service members, and their families with the opportunity to pursue home ownership with affordable, low-money-down loans and other consumer financial services. Complainant uses the NEWDAY mark to provide and market products and services.
2. Complainant has rights in the NEWDAY mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,866,494, registered July 27, 2004). Respondent’s <newdayhomeloans.com> [1]is identical or confusingly similar as it contains Complainant’s NEWDAY mark in its entirety, adding the descriptive term “home loans” and the generic top level domain (“gTLD”) “.com.”
3. Respondent does not have rights or legitimate interests in the <newdayhomeloans.com> domain name. Respondent is not commonly known by the domain name and Complainant has not granted respondent permission or license to use the NEWDAY mark for any purpose. Respondent is not using the domain name to make a bona fide offering of goods or services, or for a legitimate non-commercial or fair use of the domain. Rather, the Respondent is using the <newdayhomeloans.com> domain name to divert Complainant’s customers to Respondent’s competing website.
4. Respondent has registered and used the <newdayhomeloans.com> domain name in bad faith. The domain name attracts internet users to Respondent’s competing website, presumably for financial gain.
5. Finally, Respondent registered the domain name with actual knowledge of Complainant’s rights in the NEWDAY marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NEWDAY mark. Respondent’s domain name is confusingly similar to Complainant’s NEWDAY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <newdayhomeloans.com> domain name and that Respondent registered and uses the domain name 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 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 has rights in the NEWDAY mark based upon its registration with the USPTO (e.g., Reg. No. 2,866,494, registered July 27, 2004). Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant asserts that <newdayhomeloans.com> is confusingly similar to the NEWDAY mark as it contains the mark in its entirety, adding the descriptive term “home loans” and the gTLD “.com.” Slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark, do not distinguish the domain name from the mark incorporated therein. See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”) Similarly, the addition of a gTLD is irrelevant in determining whether a domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that <newdayhomeloans.com> does not contain changes that would sufficiently distinguish it from the NEWDAY mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <newdayhomeloans.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in <newdayhomeloans.com>. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the NEWDAY mark in any way. The WHOIS information of record identifies Respondent as “Erika Rodriguez / Marketing Company.” Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, the lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark shows a lack of rights or legitimate interests in the name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <newdayhomeloans.com> domain name.
Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <newdayhomeloans.com> domain name. Instead, Respondent is using the domain name to divert users to a website in direct competition with Complainant. Use of the <newdayhomeloans.com> domain name to divert users to Respondent’s competing business is not a recognized fair use. See LendingTree, LLC v. Domain Admin / Whois Privacy Corp., FA1512001654032 (Forum Feb. 4, 2016) (holding that Respondent’s use of the disputed domain name to hold itself out to the public as a competing loan service did not give rise to any legitimate interest in the domain name). Therefore, the Panel finds that Respondent is not making a legitimate noncommercial of fair use of the <newdayhomeloans.com>domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and is using <newdayhomeloans.com> in bad faith. Complainant argues that Respondent attempts to attract Internet users for commercial gain by creating confusion as to the source sponsorship, affiliation, or endorsement of the <newdayhomeloans.com> domain name. Using a confusingly similar domain name to mislead users can show bad faith registration and use. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). The Panel agrees with Complainant that Respondent is diverting internet users to Respondent’s competing website, thereby demonstrating bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent registered <newdayhomeloans.com> with actual knowledge of Complainant’s mark. Complainant has provided evidence that Respondent registered the domain name the day after Complainant filed for another U.S. trademark, using Complainant’s entire mark and a term that reflects Complainant’s primary business. Actual knowledge may be proven through a totality of circumstances surrounding the registration of a domain name containing a mark in which a complainant has rights. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.) Under the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the NEWDAY mark when it registered <newdayhomeloans.com>.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newdayhomeloans.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 24, 2017
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