Funding Circle Limited v. fundingcirclemarketplace
Claim Number: FA2208002007242
Complainant is Funding Circle Limited (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is fundingcirclemarketplace (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <docusign-fundingcircle.com>, which is registered with Hostinger, UAB.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2022; the Forum received payment on August 4, 2022.
On August 8, 2022, Hostinger, UAB confirmed by e-mail to the Forum that the <docusign-fundingcircle.com> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the name. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 8, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2022, by which Respondent could file a Response to the Complaint, via e-mail message addressed to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, as well as to the attention of postmaster@docusign-fundingcircle.com. Also on August 8, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 2, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant offers a lending marketplace through which investors can lend money to small and medium-sized businesses.
Complainant holds a registration for the FUNDING CIRCLE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”), Registry No. 5,521,796 registered July 24, 2018.
Respondent registered the domain name <docusign-fundingcircle.com> on June 21, 2022.
The domain name is confusingly similar to Complainant’s FUNDING CIRCLE service mark.
Respondent has not been commonly known by the disputed domain name.
Complainant has not licensed or otherwise authorized Respondent to use its FUNDING CIRCLE mark.
Respondent does not use the disputed domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, the domain name resolves to an inactive webpage.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the FUNDING CIRCLE mark when it registered the domain name.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name was registered and is being used in bad faith.
By reason of its registration of the FUNDING CIRCLE service mark with a national trademark authority, the USPTO, Complainant has shown that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding.
See, for example, Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum December 28, 2018) (finding that a UDRP complainant’s registration of its mark with the USPTO sufficiently demonstrated its rights in the mark for purposes of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <docusign-fundingcircle.com> domain name is confusingly similar to Complainant’s FUNDING CIRCLE mark. The domain name incorporates the mark in its entirety, with only the deletion of the space between its terms, and the addition of a hyphen and the commercial-financial term “docusign” (which appropriates the name of a prominent online business specializing in facilitating the electronic execution of legal and financial documents), 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. See, for example, Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum January 2, 2018):
Respondent’s … Domain Name is confusingly similar to Complainant’s … mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).
To the same effect, see also Panera, LLC et ano. v. DOMAIN MAY BE FOR SALE, et ano., FA 1760812 (Forum January 8, 2018) (finding confusing similarity under Policy ¶ 4(a)(i) where a domain name included a UDRP complainant’s mark, with the addition of a second mark belonging to a provider of salary administration services used by that complainant in its business).
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
As to Respondent’s inclusion of a hyphen in its domain name, this alteration of Complainant’s mark in creating the domain name is of no consequence to our analysis because a hyphen adds nothing to the meaning, nor does it change the phonetic character, of the result. See, for example, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum February 18, 2004) (finding that hyphens included in a domain name are irrelevant in an analysis of the question of confusing similarity Policy ¶ 4(a)(i)).
Similarly, we may ignore Respondent’s deletion of the space between the terms of Complainant’s mark in forming the domain name because domain name syntax does not permit the use of blank spaces. See, for example, Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum February 19, 2003):
[S]paces between words are not significant in determining the similarity of a domain name and a mark because … spaces are not reproducible in a domain name.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <docusign-fundingcircle.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the challenged <docusign-fundingcircle.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use its FUNDING CIRCLE mark. Moreover, although the pertinent WHOIS information identifies the registrant of the domain name as “fundingcirclemarketplace,” the domain name was registered only about seventy days ago, on June 21, 2022, and there is nothing in the record before us suggesting that Respondent has become commonly known by that name in the intervening period. On this record, therefore, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1602721 (Forum March 3, 2015) (finding that, although a respondent had listed “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, that respondent could not be found to be commonly known by the disputed domain name as provided in Policy ¶ 4(c)(ii) because it had failed to show any affirmative evidence in that direction beyond the bare WHOIS information).
We next observe that Complainant asserts, without objection from Respondent,
that Respondent has created an e-mail address incorporating the domain name, which it uses to impersonate Complainant’s employees in furtherance of a fraudulent scheme by which it seeks to induce Complainant’s customers to send Respondent money via wire transfer. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum April 4, 2016) (finding that a respondent’s use of disputed domain names to send fraudulent emails, purportedly from agents of a UDRP 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)).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent employs the <docusign-fundingcircle.com> domain name, which we have found to be confusingly similar to Complainant’s FUNDING CIRCLE mark, to enrich itself illicitly by taking advantage of the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name and its associated e-mail address. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding, under Policy ¶ 4(b)(iv), that for a respondent to use a disputed domain name in an e-mail address to pass itself off as a UDRP complainant in furtherance of a fraudulent scheme was evidence of that respondent’s bad faith in registering and using the domain name.
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the FUNDING CIRCLE mark when it registered the <docusign-fundingcircle.com> domain name. This further demonstrates Respondent’s bad faith in registering it. See, for example, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum September 5, 2007), finding that a respondent registered a domain name in bad faith within the meaning of Policy ¶ 4(a)(iii) where that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name".
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <docusign-fundingcircle.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 6, 2022
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