Addepar, Inc. v. Brittney Mickel
Claim Number: FA2110001971109
Complainant is Addepar, Inc. (“Complainant”), represented by Lori Yamato of Knobbe Martens Olson & Bear LLP, California, USA. Respondent is Brittney Mickel (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <addepar.club>, <addepar.holdings>, <addepar.investments>, <addepar.press>, and <addepar.vip>, registered with 1&1 IONOS SE; 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on October 28, 2021; the Forum received payment on October 29, 2021.
On October 29, 2021 NameCheap, Inc. confirmed by e-mail to the Forum that the <addepar.holdings>, <addepar.investments>, <addepar.press>, and <addepar.vip> domain names are registered with it, and that Respondent is the current registrant of those domain names. On November 2, 2021, 1&1 IONOS SE confirmed by e-mail to the Forum that the <addepar.club> domain name is registered with it, and that Respondent is the current registrant of that domain name. Both registrars have verified that Respondent is bound by their respective registration agreements 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”). The five domain names involved in this proceeding are referred to as the “Domain Names.”
On November 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of November 29, 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@addepar.club, postmaster@addepar.holdings, postmaster@addepar.investments, postmaster@addepar.press, postmaster@addepar.vip. Also on November 8, 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 December 6, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 a Response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE DOMAIN NAMES
The Complaint relates to five Domain Names. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant notes that all five of them were created within four days of each other (WHOIS report submitted as Complaint Annex A). The WHOIS information furnished to The Forum by the registrar lists the same person, Brittney Mickel, as the registrant of all five Domain Names and lists the same telephone number for the registrant of all of them. Three of the Domain Names redirect to a web site resolving from a fourth Domain Name. Four of the five Domain Names are registered with the same registrar. On these facts the Panel finds that all five Domain Names are registered to the same person or entity or are under common control. The Panel will proceed as to all of them.
A. Complainant
Complainant offers innovative products and services in the field of wealth and asset management. Complainant has rights in the ADDEPAR mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <addepar.club>, <addepar.holdings>, <addepar.investments>, <addepar.press>, and <addepar.vip> Domain Names are confusingly similar to Complainant’s ADDEPAR mark, as they incorporate the mark in its entirety, merely adding the “.club,” “.holdings,” “.investments,” “.press,” and “.vip” generic top-level domains (“gTLDs”).
Respondent has no rights or legitimate interests in the Domain Names. Complainant has not authorized or licensed Respondent to use its ADDEPAR mark and Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, she attempts with four of the Domain Names to trade off the goodwill of Complainant’s ADDEPAR mark, and is making no active use of the fifth Domain Name.
Respondent registered and is using the Domain Names in bad faith by attempting to disrupt the business of Complainant, by attempting to attract for commercial gain Internet users to her web site by creating a likelihood of confusion with Complainant’s mark, and by passively holding one of the Domain Names. Also, Respondent had actual knowledge of Complainant’s rights in the ADDEPAR mark when she registered the Domain Names.
B. Respondent
Respondent did not submit a Response in 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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The ADDEPAR mark was registered to Complainant with the USPTO (Reg. No. 4,278,634) on January 22, 2013 (USPTO Registration Certificate included in Complaint Annex D). Complainant’s registration of the ADDEPAR mark with the USPTO is sufficient to establish its rights in that mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <addepar.club>, <addepar.holdings>, <addepar.investments>, <addepar.press>, and <addepar.vip> Domain Names are confusingly similar to Complainant’s ADDEPAR mark, as they all incorporate that mark in its entirety, merely adding a gTLD. This change does not distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the change described above, Complainant’s mark is clearly recognizable within the Domain Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the ADDEPAR mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Complainant has not authorized Respondent to use its ADDEPAR marks, and (ii) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because she uses four of them to benefit from the goodwill associated with Complainant’s marks and is making no active use of the fifth Domain Name. These allegations are addressed as follows:
Complainant states that it has never authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”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.”).
Complaint Annex K is a screenshot of the web site resolving from the <addepar.press> Domain Name. Complainant alleges that the <addepar.holdings>, <addepar.investments> and <addepar.vip> Domain Names all redirect to the web site at <addepar.press>. There is no evidence to the contrary and the Panel takes this allegation as true. The pages at this site contain information about a “Future / Space Art Museum.” The information is presented more as a news item about the museum rather than an advertisement. There is no solicitation for donations. There is no verbal reference to Complainant or to products or services in the field of wealth and asset management, nor does the ADDEPAR mark appear verbally anywhere on this site. Apart from the presence of Complainant’s mark in the URL for this site, the only association this site has with Complainant is a small image of the stylized “A” logo which appears in the upper left-had corner of each page, and which is registered to Complainant with the USPTO (USPTO Registration Certificate for Reg. No. 4,278,634 included in Complaint Annex D). While on balance any association of this site with Complainant is faint at best, the Panel recognizes that an Internet user attracted to it by the presence of Complaint’s mark in the URL would be looking for an association with Complainant and the presence of Complainant’s logo on each page does falsely imply such an association. Respondent’s conduct here is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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).”
Next, although Complainant does not address the Policy ¶ 4(c)(ii) element, the WHOIS information furnished to the Forum by the registrar lists “Brittney Mickel” as the registrant of the Domain Names. This name bears no resemblance to any of the Domain Names. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), 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). The Panel is satisfied that Respondent has not been commonly known by the Domain Names for the purposes of Policy ¶ 4(c)(ii).
Complaint Annex J is a screenshot of the web site resolving from the <addepar.club> Domain Name as of October 25, 2021. Its only substantive content is a “This page isn’t working” message. The site is clearly inactive. Passively holding a confusingly similar domain name is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the ¶ 4(b) purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use. First, Respondent registered and is using the Domain Names, which fully incorporate the ADDEPAR mark. As discussed above, however, Respondent has no connection with that mark or its owner, the Complainant. This may not fit precisely within any of the circumstances set forth in Policy ¶ 4(b) but Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The nonexclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering and using a domain name that is confusingly similar to a trademark with which the respondent has no connection is evidence of opportunistic bad faith. Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent chosen [sic] to register a well-known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue.”), Google LLC v. Noboru Maruyama / Personal, FA 2001001879162 (Forum Mar. 3, 2020) (“the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith.”).
Second, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Names in February 2021 (the WHOIS reports submitted as Complaint Annex A show creation dates). Complainant’s ADDEPAR mark has been used since 2011 and is well known in the wealth management support industry (Google search information describing the Complainant submitted as Complaint Annex I). The ADDEPAR mark is unique and whimsical in nature. Respondent copied it verbatim into the Domain Names, using the mark as the dominant element of all five Domain Names. Again, given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Finally, the <addepar.club> Domain Name resolves to an inactive web site. Passive holding of a domain name is also evidence of bad faith. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and UDRP panels have often held that failure to make active use of a confusingly similar domain name is evidence of bad faith. Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Complainant alleges that Respondent’s conduct falls within the circumstances described in Policy ¶¶ 4(b)(iii) and (iv). The Panel finds no evidence to support those allegations. There is no evidence of competition between Complainant and Respondent as contemplated by Policy ¶ 4(b)(iii), nor is there any evidence of commercial gain as contemplated by Policy ¶ 4(b)(iii). Those allegations are not proven.
Notwithstanding Complainant’s failure to prove Policy ¶¶ 4(b)(iii) or (iv) circumstances, for the reasons first set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <addepar.club>, <addepar.holdings>, <addepar.investments>, <addepar.press>, and <addepar.vip> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: December 8, 2021
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