KMD Partners, LLC v. David Rodriguez
Claim Number: FA2106001950396
Complainant is KMD Partners, LLC (“Complainant”), represented by Michael A. Marrero of Ulmer & Berne, LLP, Ohio, USA. Respondent is David Rodriguez (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <creditninja2021.com>, registered with eNom, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 9, 2021; the Forum received payment on June 9, 2021.
On June 10, 2021, eNom, LLC confirmed by e-mail to the Forum that the <creditninja2021.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 June 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@creditninja2021.com. Also on June 15, 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 July 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, KMD Partners, LLC, operates a financial services company offering consumer loans and related services. Complainant has rights in the CREDITNINJA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 5,846,273, registered Aug. 27, 2019). See Compl. Ex. G. Respondent’s <creditninja2021.com> domain name is confusingly similar to Complainant’s CREDITNINJA mark, only differing by the addition of the year “2021” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <creditninja2021.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the CREDITNINJA mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, but instead uses the disputed domain name to direct Internet users to Complainant’s competitors. Additionally, Respondent may use the disputed domain name to phish for users’ personal information.
Respondent registered and uses the <creditninja2021.com> domain name in bad faith. Respondent uses the disputed domain name to confuse Internet users into believing Complainant is affiliated with the disputed domain name, and directs users to Complainant’s competitors. Such use displays bad faith attraction for commercial gain. Respondent also may use the disputed domain name to phish for users’ personal and financial information. Additionally, Respondent received a cease-and-desist letter from Complainant regarding the disputed domain, to which Respondent failed to respond.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of consumer loans and related services.
2. Complainant has established its trademark rights in the CREDITNINJA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 5,846,273, registered Aug. 27, 2019).
4. Respondent registered the disputed domain name on September 29, 2020.
5. Respondent uses the disputed domain name to direct Internet users to Complainant’s competitors and potentially to use the disputed domain name to phish for users’ 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(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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the CREDITNINJA mark through its registration with the USPTO. Registration of a mark with a trademark agency, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 5,846,273, registered Aug. 27, 2019). See Compl. Ex. G. The Panel therefore finds Complainant has rights in the CREDITNINJA mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CREDITNINJA mark. Complainant argues that Respondent’s <creditninja2021.com> domain name is confusingly similar to Complainant’s CREDITNINJA mark, only differing by the addition of the year “2021” and the “.com” gTLD. Previous Panels have held that such changes do not necessarily negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Thus, the Panel finds the disputed domain name is confusingly similar to Complainant’s CREDITNINJA mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
(a) Respondent has chosen to take Complainant’s CREDITNINJA trademark and to use it in its domain name, only differing by the addition of the year “2021” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on September 29, 2020;
(c) Respondent uses the disputed domain name to direct Internet users to Complainant’s competitors and potentially to use the disputed domain name to phish for users’ personal information;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <creditninja2021.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the CREDITNINJA mark. When a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent is not commonly known by the domain 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). Here, the WHOIS information of record identifies “David Rodriguez” as the registrant of the disputed domain. See Compl. Ex. D; see also registrar verification email. Thus, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent does not use the <creditninja2021.com> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but rather to direct Internet users to Complainant’s competitors. Such use does not qualify as either a bona fide offer of goods or services, nor is it a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Complainant provides screenshots of the disputed domain name as evidence that Respondent links to Complainant’s competitors within the consumer loan business. See Compl. Ex. K. The Panel thus finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant contends that Respondent uses the<creditninja2021.com> domain name to phish for users’ personal and financial information. Use of an infringing domain name to attempt to obtain sensitive information from Internet users displays a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Here, the screenshots of the disputed domain name offered by Complainant displays Respondent’s attempts to obtain users’ information, offering the chance to enter personal information. See Compl. Ex. K. As the Panel agrees that Respondent uses the disputed domain name in this way, it finds Respondent lacks rights under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <creditninja2021.com> domain name in bad faith as Respondent attempts to confuse Internet users into believing Complainant is somehow affiliated with the disputed domain name and directs users to Complainant’s competitors. Such use evinces bad faith attraction to commercial gain under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As previously noted, Complainant provides screenshots of the disputed domain name as evidence of Respondent’s use of the disputed domain. See Compl. Ex. K. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent uses the <creditninja2021.com> domain name to phish for users’ sensitive information. Use of a domain name to phish for users’ information displays bad faith under Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). Similarly here, the disputed domain name allows users to input personal information, which Complainant submits Respondent may potentially use for fraudulent purposes. See Compl. Ex. K. Thus, the Panel finds Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant also argues that Respondent’s failure to respond to a cease-and-desist letter in regards to the <creditninja2021.com> domain name is further evidence of Respondent’s bad faith registration. Failure to respond to a cease-and-desist letter may display bad faith under Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides a copy of the cease-and-desist letter sent to Respondent as evidence of Respondent’s failure to respond. See Compl. Ex. L. Therefore, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <creditninja2021.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 12, 2021
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