Robinhood Markets, Inc. v. Sven Dahlmeier
Claim Number: FA2201001980168
Complainant is Robinhood Markets, Inc. (“Complainant”), represented by Emily A. DeBow of Kilpatrick, Townsend & Stockton LLP, California, USA. Respondent is Sven Dahlmeier (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <robinhood.shop>, registered with Global Domains International, Inc. DBA DomainCostClub.com.
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.
Eugene I. Low as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 12, 2022; the Forum received payment on January 12, 2022.
On January 13, 2022, Global Domains International, Inc. DBA DomainCostClub.com confirmed by e-mail to the Forum that the <robinhood.shop> domain name is registered with Global Domains International, Inc. DBA DomainCostClub.com and that Respondent is the current registrant of the name. Global Domains International, Inc. DBA DomainCostClub.com has verified that Respondent is bound by the Global Domains International, Inc. DBA DomainCostClub.com 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 January 17, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2022 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 email@example.com. Also on January 17, 2022, 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.
A timely Response was received and determined to be complete on February 1, 2022.
On February 4, 2022, Additional Submission was received from Complainant. On February 5, 2022, Additional Submission was received from Respondent.
On February 8, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eugene I. Low 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant offers online financial services and commission-free investing. Complainant has rights in the ROBINHOOD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,761,666 registered June 23, 2015). Respondent’s <robinhood.shop> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the ROBINHOOD mark in its entirety and adds the “.shop” generic top-level domain (“gTLD”)
Respondent has no legitimate interests in the <robinhood.shop> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the ROBINHOOD mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves a page offering competing goods and services.
Respondent registered and uses the <robinhood.shop> domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ROBINHOOD mark.
Respondent argues that the disputed domain name was purchased on July 15, 2021. Additionally, Respondent contends that the screenshots of the disputed domain name provided by the Complainant are from before the disputed domain name was purchased, over which Respondent had no control. Respondent argues that it had no knowledge of Complainant before it was contacted by Complainant’s lawyers. Respondent purchased the disputed domain name and uses it for the operation of an online store for the sale of baby and children clothes. Respondent argues that Complainant is unknown in Indonesia where Respondent is based. Respondent also argues that “Robin Hood” is a generic term and is used for a legendary heroic outlaw originally depicted in English folklore and subsequently featured in literature and film.
C. Additional Submissions
Both Complainant and Respondent made unsolicited Additional Submissions. The gist of their respective Additional Submissions have been summarized in Sections A and B above.
Under Paragraph 7 of the Forum’s Supplemental Rules, it is within the discretion of the Panel to accept or consider additional unsolicited submission(s). In this case, the Panel has considered and taken into account both parties’ Additional Submissions.
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.
The Panel considers that Complainant has satisfied this element.
Complainant asserts rights in the ROBINHOOD mark based on its trade mark registrations (including registration with the USPTO (e.g., Reg. No. 4,761,666 registered June 23, 2015). Registration of a mark is a valid showing of rights in a mark under this element. In addition, the Panel is satisfied that Complainant has acquired common law rights in the ROBINHOOD mark through actual use and promotion in relation to financial and investment services.
The disputed domain name is identical or confusingly similar to Complainant’s ROBINHOOD mark as the disputed domain name contains the ROBINHOOD mark in its entirety and merely adds the “.shop” gTLD. It is a well-established principle that the addition of a generic or descriptive gTLD generally fails to sufficiently distinguish a disputed domain name from a mark for the purpose of this element.
The Panel finds in favor of Complainant under this element.
Under this element, 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.
Complainant contends Respondent lacks rights or legitimate interests in the <robinhood.shop> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the ROBINHOOD mark. The WHOIS information for the disputed domain name lists the registrant as “Sven Dahlmeier,” and there is no other evidence to suggest that Respondent was authorized to use the ROBINHOOD mark.
Furthermore, Complainant has adduced evidence that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the <robinhood.shop> domain name redirects to another site offering competing goods and services. Based on the parties’ evidence, there appears to be a period of time as recently as in Dec 2021/Jan 2022 (see Annex M-6 of Complainant’s Additional Submission) that the disputed domain name directed users to website contents offering cryptocurrency investment services which are arguably competing with or similar to Complainant’s businesses. The Panel notes that Respondent seems to contest the authenticity of such historical website screenshots in the said Annex. However, in the absence of contradicting evidence, the Panel can only decide the case based on the materials submitted before it, relying on the certification of the parties as to the authenticity of their respective evidence. The Panel also notes that Respondent has not adduced much evidence to substantiate its claim that the disputed domain name has been used as an online clothing store subsequent to the alleged purchase of the disputed domain name in July 2021 – on the contrary it appears from Complainant’s materials (namely Annexes M2 to M5 of Complainant’s Additional Submission) that from Sep 2021 to Dec 2021 the disputed domain name was associated with an online shop at an “Etsy” e-commerce site, but notably with no items on display or sale (the Panel also tried to access robinhood.shop and www.robinhood.shop to try to get a better idea of the current status of use, but neither domain names were accessible). In light of the above, the Panel finds that Respondent fails to establish a bona fide offering of goods or services or a legitimate noncommercial or fair use under this element.
The Panel finds in favor of Complainant under this element.
Both parties do not dispute that the disputed domain name was purchased by Respondent in or around July 2021. Based on the case materials before the Panel, it appears that both before and subsequent to the purchase, the disputed domain name had been used in relation to website contents which relate to cryptocurrency investment services. The Panel considers that cryptocurrency investment services are arguably competing with or similar to Complainant’s businesses and do also fall within the scope of Complainant’s trademark registrations. Use of a disputed domain name to offer competing goods or services can be evidence of bad faith use under this element.
As to whether there was bad faith in the registration of the disputed domain name, the Panel considers that the relevant time was the date of purchase of the disputed domain name (i.e. July 2021) but not the date of creation of the disputed domain name. At or around that time of purchase, Complainant has already registered its ROBINHOOD mark and has put the mark into use for a considerable time. In addition, at or around that time of purchase, Complainant wrote to the then owner(s) of the disputed domain name to put on record Complainant’s rights and complaints. In the circumstances, the Panel is prepared to infer that registration of the disputed domain name by Respondent was also in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <robinhood.shop> domain name be TRANSFERRED from Respondent to Complainant.
Eugene I. Low, Panelist
Dated: February 16, 2022
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