Addepar, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2103001936499
Complainant is Addepar, Inc. (“Complainant”), represented by Jessica Sganga of Knobbe Martens Olson & Bear LLP, California, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adedepar.com>, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 12, 2021; the Forum received payment on March 12, 2021.
On March 15, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <adedepar.com> 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 March 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 2021 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@adedepar.com. Also on March 17, 2021, 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 April 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is a wealth management platform. Complainant registered its ADDEPAR trademark with numerous trademarks offices, including with the United States Patent and Trade Office (USPTO) (e.g. Reg. No. 4,244,422, registered on Nov. 20, 2012). The disputed domain name <adedepar.com> is identical or confusingly similar to Complainant’s ADDEPAR trademark because it misspells the trademark by adding an extra letter “e”, while adding a generic top-level domain (“gTLD”), “.com”, to form a domain name.
Respondent has no right or legitimate interests in the disputed domain Name because Respondent is not authorized to use Complainant’s ADDEPAR trademark. Respondent is not making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name, because Respondent is not making any demonstrable preparations to use the disputed domain name.
Respondent registered or is using the disputed domain name in bad faith because Respondent used the disputed domain name in connection with a phishing scheme via email communications. Respondent further acted in bad faith because Respondent has not made active use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 4,244,422 ADDEPAR (word), registered November 20, 2012 for services in class 35
- No. 5,950,964 ADDEPAR (word), registered December 31, 2019 for services in class 36
- No. 5,944,717 ADDEPAR (word), registered December 24, 2019 for goods and services in classes 9 and 42
- No. 6,034,412 ADDEPAR (word), registered April 14, 2020 for services in classes 35 and 42
- No. 4,245,893 A ADDEPAR (fig), registered November 20, 2012 for services in class 35
- No. 4,245,892 A ADDEPAR (fig), registered November 20, 2012 for services in class 35
- No. 5,507,118 A ADDEPAR (fig), registered July 3, 2018 for services in class 42
- No. 4,407,903 A ADDEPAR (fig), registered September 24, 2013 for goods in class 9
- No. 4,278,634 A ADDEPAR (fig), registered January 22, 2013 for goods in class 9
The Complainant is also the owner the following International trademark registrations, registered with the World Intellectual Property Organization (“WIPO”), and designating several countries and regions around the world:
- No. 1 141 244 A ADDEPAR (fig), registered October 12, 2012 for goods and services in classes 9 and 35
- No. 1 140 625 A ADDEPAR (fig), registered October 12, 2012 for goods and services in classes 9 and 35
- No. 1 451 897 ADDEPAR (word), registered April 20, 2018 for services in classes 35, 36 and 42.
Further, the Complainant has several national trademark registrations around the world.
The disputed domain name <adedepar.com> was registered on March 8, 2021.
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”).
The Complainant claims rights in the ADDEPAR trademark through its registration with multiple trademark agencies. Registration of a trademark with multiple agencies is sufficient to establish rights in a trademark under Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Here, Complainant provides registration certificates from those numerous trademark agencies, including with the USPTO (e.g. Reg. No. 4,244,422. Registered on Nov. 20, 2012). The Panel thereby finds that Complainant has rights in its ADDEPAR trademark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <adedepar.com> is identical or confusingly similar to the ADDEPAR trademark because it mispells the trademark by adding an extra letter and the gTLD, “.com”, to form a domain name. The mere addition of a letter does not limit a domain name’s confusing similarity, under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Here, Complainant’s ADDEPAR trademark is used in the disputed domain name. However, the only minor change is the mere addition of a letter “e”. Thus, the Panel finds that the disputed domain name is confusingly similar under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also 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).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name <adedepar.com>, because Respondent was not authorized to use Complainant’s ADDEPAR trademark. Under Policy ¶ 4(c)(ii), a respondent may be found to not be commonly known by a disputed domain name based upon WHOIS information and lack of authorization to use a trademark. 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). Here, Complainant asserts that it has not authorized or licensed Respondent to use the ADDEPAR trademark and the WHOIS information of record lists “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant. Based on this, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The Complainant also argues that Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name because Respondent has not made any demonstrable preparations to use <adedepar.com>. A respondent may not be making any demonstrable preparations for use of a domain name, under Policy ¶¶ 4(c)(i) and (iii), where a respondent does not associate content with the domain name. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Similarly, hosting links at a disputed domain name is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, the disputed domain name resolves to a webpage that does not have any substantive content other than links to other sites. The Panel therefore finds that Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant also argues that Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name because Respondent is using the disputed domain name in connection with a phishing scheme. Using a domain name to send fraudulent emails purportedly from agents of a complainant is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of a domain name under Policy ¶¶ 4(c)(i) and (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be 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)). Here, Complainant claims that Respondent sent emails using the disputed domain name posing as individuals from Complainant’s organization. Through these emails, the Panel finds that Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and is using the disputed domain name in bad faith in connection with a phishing scheme over emails. Bad faith, under Policy ¶ 4(b)(iv), is identified where a respondent uses the disputed domain name to pass itself off as the complainant in a phishing scheme. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Here, Respondent sent emails to a customer of Complainant passing off as an individual from Complainant’s organization. In the emails, it appeared that the email was attempting to trick the recipient into revealing sensitive information. Through this passing off use, the Panel finds bad faith use under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent is using the disputed domain name in bad faith because Respondent is not making active use of the disputed domain name. Failure to actively use a domain name may be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Similarly, use of a disputed domain to display parked hyperlinks evidences bad faith. See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). Here, the website associated with the disputed domain name only lists links and no other substantive content. Thus, the Panel finds bad faith under 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 <adedepar.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 20, 2021
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