Financial Industry Regulatory Authority, Inc. v. S.K Gulati
Claim Number: FA2008001908539
Complainant is Financial Industry Regulatory Authority, Inc. (“Complainant”), represented by Brandon Leahy of Wilson Sonsini Goodrich & Rosati, District of Columbia, USA. Respondent is S.K Gulati (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <finnra.org>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 14, 2020; the Forum received payment on August 14, 2020.
On August 17, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <finnra.org> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 August 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2020 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@finnra.org. Also on August 18, 2020, 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 September 11, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name <finnra.org> be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the FINRA trademark and service mark established by its ownership of the portfolio of United States registrations described below and the goodwill that it has established in the mark through extensive use since as early as July 30, 2007, including on its public-facing website hosted at <finra.org>.
Complainant is the largest independent regulator for securities firms doing business in the United States. It oversees more than 624,000 brokers across the country and analyzes billions of daily market events.
Complainant submits that disputed domain name <finnra.org> is nearly identical to Complainant’s FINRA mark and domain name <finra.org>, but for the inclusion of an additional “n”, which does nothing to differentiate Respondent’s use or limit the risk of consumer confusion between Complainant’s trademark and the disputed domain name. See Humana Inc. v. Cayman Trademark Trust, Case No. D2006-0073 (WIPO March 7, 2006) (finding “typosquatting” and ordering transfer of the disputed domain name that differed from the complainant’s mark by just one letter and stating “[t]his repeated consonant does not significantly affect the appearance or pronunciation of the domain name…and creates a virtually identical and/or confusingly similar mark to the Complainant’s trade-mark”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name alleging that Respondent is not known by the name FINRA and has not acquired any trademark rights in the term FINRA. See Gallup Inc. v. Amish Country Store, Case No. FA 96209 (Forum Jan. 23, 2001) (respondent does not have rights in a domain name incorporating another’s mark when respondent is not known by that mark).
Additionally, Complainant asserts that it has not licensed or otherwise permitted Respondent to use the FINRA mark, or any confusingly similar mark, or to apply for or use any domain name incorporating the mark or a term confusingly similar to the FINRA mark. See Telstra Corp. Ltd. v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 13, 2000) (respondent had no rights or legitimate interests to use the domain name because respondent was not licensed or otherwise permitted to use complainant’s trademark).
Complainant argues that Respondent’s use of the FINRA mark in the disputed domain name is not nominative and can easily be avoided as Respondent does not need to make use of the FINRA name in its own domain name in order to operate its own, independent website. See Six Continents Hotels, Inc. v. Hotel Partners of Richmond, Case No. D2003-0222 (WIPO May 14, 2003) (finding that the use of the complainant’s HOLIDAY INN mark in the domain name <holidayinnhotelreservations.com> was not nominative fair use because it was not an unavoidable and necessary use of a mark to identify respondent’s services).
Referring to a screenshot of the website to which the disputed domain name resolves, which is exhibited in an annex to the Complaint, Complainant submits that it purports to impersonate Complainant as it is nearly identical to Complainant’s website and conspicuously displays Complainant’s protected FINRA mark, Complainant submits that such use is not a legitimate, noncommercial or fair use of the disputed domain name. Urban Outfitters Inc. v. Ju Yu, WIPO Case. No. D2014-0029 (WIPO March 14, 2014) (use of <cheapfreepeople.net> domain name to host a website designed to look like the Free People website is a clear attempt to confuse Internet users as to the source, sponsorship, affiliation or endorsement of the scam website and is not fair use of FREE PEOPLE mark).
Complainant argues that the disputed domain name was registered in bad faith arguing that Respondent clearly had actual knowledge of Complainant’s rights in its name when he/she registered the disputed domain name because Respondent created a nearly identical website using the disputed domain name in order to mislead visitors into providing personally identifiable information (“PII”).
Complainant adds that Respondent had no reason to register the disputed domain name other than to exploit the FINRA name, particularly given that Respondent is using the domain name solely to impersonate Complainant. See Spotify AB v. The LINE The Line / The Line, Case No. FA 1801001765498 (Forum Feb. 6, 2018) (finding that the respondent had actual knowledge of the complainant’s prior rights in and to its trademark given the totality of the circumstances, including the fame of complainant’s mark, and thus the respondent engaged in bad faith use and registration of the disputed domain name when it registered the name).
Complainant argues that Respondent’s knowledge of Complainant is also apparent from the content of the website, including the information displayed, the layout and color scheme utilized, as well as the prominent use of Complainant’s protected FINRA mark. Respondent’s website even goes so far as to indicate “©2020 FINRA. All Rights Reserved.” as a copyright notice at the bottom of its page and to copy and present verbatim Complainant’s Terms of Use and Privacy Policy as Respondent’s own.
Complainant argues that the disputed domain name was therefore registered to take advantage of the value and goodwill associated with the FINRA mark under ICANN Policy ¶ 4(a)(iii) and submits that the registration of a domain name for such a purpose constitutes bad faith. See Ticketmaster Corp. v. Spider Web Design, Inc., Case No. D2000-1551 (WIPO Feb. 4, 2001) (“actual or constructive knowledge of [c]omplainant’s rights in [t]rademark is a factor supporting bad faith”).
Complainant further refers to the website to which the disputed domain name resolves and argues that Respondent is using the disputed domain name in bad faith to lure Internet users to its own website that is branded with the FINRA mark.
Complainant argues that Internet users who are directed to this site are likely to believe that they have successfully accessed a website related to Complainant and its services. Respondent prominently displays on its site a form prompting users to register using their PII. Complainant argues that by impersonating Complainant in this way and prompting users to register on Respondent’s website is itself evidence of bad faith as there can be no good faith explanation for Respondent’s behavior. Sydbank A/S v. Syd Bank, Case No. D2015-0324 (WIPO April 2, 2015) (transferring the disputed domain name to complainant and noting “In particular, there is evidence that the Respondent was willingly suggesting to Internet users that it was affiliated or identical with the Complainant, a bank which handles personal and sensitive financial information…It is also not essential here affirmatively to determine that the Respondent was engaged in “phishing”. The evidence of the Respondent’s behaviour [sic] with respect to the disputed domain name is inconsistent with any good faith explanation, and clearly shows an attempted exploitation of the Complainant’s name and mark for some genre of improper gain within the meaning of the Policy.”).
Complainant adds that, based on Complainant’s fame and strong reputation, consumers who come upon Respondent’s website – either as the result of a typo (mistakenly adding an extra “n” to Complainant’s domain name, as it appears Respondent anticipates), or via a link imbedded in a fraudulent email message – may be lulled into a false sense of security by Respondent’s intentional suggestion that the websites are somehow associated. Complainant argues that this false association could potentially open consumers up to additional vulnerability if they choose to actually provide the PII as prompted. This type of use of a domain name has been recognized as bad faith use in violation of ICANN Policy ¶ 4(b)(iv). See Fossil, Inc. v. wwwfossil-watch.org c/o Hostmaster, Case No. FA 335513 (Forum Nov. 9, 2004) (finding bad faith where respondent attempted to profit from the fame of complainant’s trademark by attracting Internet traffic to his website).
Moreover, Complainant adds that Respondent is using the disputed domain name in connection with at least one associated email address, as provided on Respondent’s infringing website, namely <info@finnra.org> and argues that such use of the disputed domain name in connection with an email address is further evidence of Respondent’s bad faith use and registration. See Covanta Energy Corporation v. Domains By Proxy, LLC / Peter Allen, Covantaholdingcorporation, Case No. D2018-0285 (WIPO Apr. 12, 2018) (“The use of a domain name in an email address meant to confuse the recipient through similarity to a trademark is bad faith use of the disputed domain name…With access to an email address that appears to originate from a legitimate and well-known company, coupled with basic information about that target company, a domain name can be used as the foundation upon which to build an elaborate and potentially long-running multi-target phishing campaign”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the United States Financial Regulatory Authority (FINRA) and is the owner of the following trademark and service mark registrations:
· United States registered trademark FINRA registration number 3,521,850, registered on the Principal Register on October 21, 2008, for goods in international classes 18, 21 and 25;
· United States registered trademark and service mark FINRA, registration number 3,604, 224, registered on the Principal Register on April 7, 2009, for goods and services in international classes 9, 14, 16, 35, 36, 41 and 45;
· United States registered trademark FINRA (stylized), registration number 6,120,509, registered on the Principal Register on August 20, 2020, for goods and services in international classes 9, 35, 36, 41, 42 and 45.
Complainant is also the owner of the domain name <finra.org> which is used as the address of its website.
The disputed domain name was registered on February 6, 2020. It resolves to a website that is almost identical to Complainant’s website and is used on Respondent’s website as a contact email address <info@finnra.org>.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name. Respondent uses a proxy service to conceal his/her identity, which has been disclosed by the Registrar in the course of this proceeding.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced clear, convincing and uncontested evidence of its rights in the FINRA trademark and service mark established by its ownership of the portfolio of United States registrations described above and the goodwill that it has established in the mark at common law through extensive use since as early as July 30, 2007.
The disputed domain name consists of Complainant’s FINRA mark with an additional letter “n” in combination with the generic Top Level Domain <.org> extension.
The repeated consonant does not significantly affect the appearance of the disputed domain name as compared with the FINRA mark, and the pronunciation of both would be identical.
In the circumstances of this Complaint, the gTLD <.org> extension may be disregarded under the first element confusing similarity test, because a domain name extension is a standard requirement for registration.
This Panel finds therefore that the disputed domain name <finnra.org> is confusingly similar to the FINRA trademark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging:
· that Respondent is not known by the name FINRA;
· that Respondent has not acquired any trademark rights in the term FINRA;
· that Complainant has not licensed or otherwise permitted Respondent to use the FINRA mark, or any confusingly similar mark, or to apply for or use any domain name incorporating the mark or a term confusingly similar to the FINRA mark;
· that Respondent’s use of the FINRA mark in the disputed domain name is not nominative and could easily be avoided;
· that the screenshot of the website to which the disputed domain name resolves, shows that Respondent is using the disputed domain name to impersonate Complainant and confuse Internet users; and
· that such use is not a legitimate, noncommercial or fair use of the disputed domain name. Urban Outfitters Inc. v. Ju Yu, WIPO Case. No. D2014-0029 (WIPO March 14, 2014) (use of <cheapfreepeople.net> domain name to host a website designed to look like the Free People website is a clear attempt to confuse Internet users as to the source, sponsorship, affiliation or endorsement of the scam website and is not fair use of FREE PEOPLE mark).
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Having considered the record, the submissions and the evidence adduced, this Panel finds on the balance of probabilities that the registrant of the disputed domain name had actual knowledge of Complainant’s rights in the FINRA name and mark when the disputed domain name was chosen and registered. This is illustrated by several factors including the strong reputation of Complainant; the fact that the disputed domain name is almost identical to Complainant’s domain name which resolves to Complainant’s website address <finra.org>.
This Panel finds therefore that on the balance of probabilities the disputed domain name was chosen and registered with Complainant’s reputation and goodwill in mind, in an exercise in typosquatting whereby a single additional letter has been added to Complainant’s name, mark and domain name to divert Internet traffic intended for Complainant.
The screenshot of the website to which the disputed domain name resolves which has been exhibited in an annex to the Complaint, shows that Respondent’s website is almost identical to Complainant’s website. It is clearly designed to impersonate Complainant. It does not suggest in any way that it is not owned or controlled by Complainant and in fact is designed to create the false impression that it is Complainant’s own website. As Complainant points out, this is apparent from the content of the website, including the information displayed, the layout and color scheme utilized, as well as the prominent use of Complainant’s protected FINRA mark. Respondent’s website even goes so far as to indicate “©2020 FINRA. All Rights Reserved.” as a copyright notice at the bottom of its page and to copy and present verbatim Complainant’s Terms of Use and Privacy Policy as Respondent’s own.
Of great concern is that Respondent is inviting unsuspecting and intentionally misled, Internet users to divulge their PII and to engage in correspondence with Respondent using the <info@finnra.org> email address. This Panel finds that on the balance of probabilities Respondent is using the disputed domain name in bad faith as an exercise in typosquatting, for the purposes of phishing, luring and misleading Internet users into the belief that they have successfully accessed a website related to Complainant and its important regulatory services.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <finnra.org> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: September 14, 2020
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