Uprova Credit, LLC and Habematolel Pomo of Upper Lake v. anuchai makert
Claim Number: FA2209002013184
Complainant is Uprova Credit, LLC and Habematolel Pomo of Upper Lake (“Complainant”), represented by Renee Reuter, Missouri. Respondent is anuchai makert (“Respondent”), TH.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uprovaloan.com>, registered with Internet Domain Service BS Corp.
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.
Preliminary Issue: Multiple Complainants
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” Forum Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
In the instant proceedings, there are two discrete complainants: Uprova Credit, LLC and Habematolel Pomo of Upper Lake. As pertinent here, the two complainants contend that that sufficient reasons exist to permit them to prosecute this proceeding as a single complainant. In support of this contention, the two complainants submit as follows:
a. Uprova Credit, LLC, (“UC”) is the entity which operates the website copied by Respondent and is found at <uprova.com>;
b. Habematolel Pomo of Upper Lake (“HP”) is a federally recognized Indian tribe and the sole owner of UC;
c. HP is the owner of the mark registration for the UPROVA service mark which is central to this proceeding;
d. UC uses the UPROVA mark under license from HP; and
e. UC is part of a family of entities which together work to create jobs and economic opportunities for members of HP.
It is well established that multiple parties may proceed as one party where they can show a sufficient link to one another. See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games v. Malik, FA 666119 (Forum May 12, 2006), the panel there finding that:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
See also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum December 28, 2003), in which a panel treated two complainants as a single entity where both held rights in trademarks contained within disputed domain names. Likewise, in Amer. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum February 6, 2004), a panel found a sufficient link between multiple complainants where there was a license between them regarding use of a mark at issue in the proceeding.
There being no objection from Respondent, on the facts before us the allegations of the Complaint are deemed sufficient to establish a nexus between Uprova Credit, LLC and Habematolel Pomo of Upper Lake justifying that they be permitted to proceed as a single complainant for all purposes in this proceeding. Accordingly, throughout the remainder of this proceeding, the two entities will be referred to collectively as “Complainant.”
Complainant submitted a Complaint to Forum electronically on September 22, 2022; Forum received payment on September 22, 2022.
On Sep 23, 2022, Internet Domain Service BS Corp confirmed by e-mail to Forum that the <uprovaloan.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 October 18, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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 postmaster@uprovaloan.com. Also on October 18, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 is a tribal lending entity offering to its members installment loans as alternatives to traditional payday loans.
Complainant holds a registration for the UPROVA service mark, which is on file with the United States Patent and Trademark Office (USPTO) as Registry No. 6,403,873, registered on June 29, 2021.
Complainant registered the domain name, <uprova.com> on December 21, 2018, and has ever since employed that domain name in the conduct of its business.
Respondent registered the domain name <uprovaloan.com> on September 11, 2021.
The domain name is confusingly similar to Complainant’s UPROVA mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use its UPROVA mark in a domain name.
Respondent does not use the domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent employs the domain name to resolve to a web page featuring pay-per-click links to websites identified under the headings: “Consolidated Loans,” “Private Lenders” and “Unsecured Personal Loans.”
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent registered the domain name with knowledge of Complainant’s rights in the UPROVA mark.
Respondent has 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
By reason of its registration of the UPROVA service mark with a national trademark authority, the USPTO, Complainant has established 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. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Thailand). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy¶4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy¶4(a)(i), we conclude from a review of the record that the <uprovaloan.com> domain name is confusingly similar to Complainant’s UPROVA mark. The domain name incorporates the mark in its entirety, with only the addition of the word “loan,” which relates to Complainant’s business, 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, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to the mark of a UDRP complainant a gTLD and the term “finance,” which described that complainant’s financial services business conducted under that mark, did not distinguish the resulting domain name from the mark under Policy¶4(a)(i)). See also MTD Prod. Inc. v J Randall Shank, FA 1783050 (Forum June 27, 2018):
The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the … mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.
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.
Under Policy¶4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <uprovaloan.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 domain name <uprovaloan.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the UPROVA mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “anuchai makert,” which does not resemble the domain name. On this record, 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, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that complainant asserts, without objection from Respondent, that Respondent employs the contested domain name to resolve to a web page featuring pay-per-click links to websites identified under the headings: “Consolidated Loans,” “Private Lenders” and “Unsecured Personal Loans.” In the circumstances here presented, we may comfortably presume that Respondent profits from this use of the domain name. This employment is, therefore, 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, TGI Friday’s of Minnesota, Inc. v. Tulip Company, FA 1691369 (Forum October 10, 2016):
Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.
See also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017):
… [The] … domain name resolves to a site containing pay-per-click hyperlinks and advertisements …. Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.
The Panel therefore finds that Complainant has amply satisfied the proof requirements of Policy¶4(a)(ii).
We are persuaded by the evidence that Respondent uses the challenged <uprovaloan.com> domain name, which we have found to be confusingly similar to Complainant’s UPROVA service mark, to profit illicitly from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy¶4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum November 21, 2002) (finding that a respondent registered and used a contested domain name in bad faith within the meaning of Policy¶ 4(b)(iv) where that respondent used a domain name that was confusingly similar to the mark of a UDRP complainant to attract Internet users to its own commercial website). See also Vivint, Inc. v. Online Management, FA1549084 (Forum April 23, 2014) (finding that a respondent registered and used a disputed domain name in bad faith within the compass of Policy¶4(b)(iv) where the domain name resolved to a parking page displaying no content other than sponsored advertisements and links to the websites of other businesses unrelated to that of a UDRP complainant).
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 <uprovaloan.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 17, 2022
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