DECISION
Nvest, Inc. d/b/a SigFig v. tingchen
Claim Number: FA2405002097059
PARTIES
Complainant is Nvest, Inc. d/b/a SigFig ("Complainant"), represented by Jeanette Eriksson of FairWinds Partners LLC, District of Columbia, USA. Respondent is tingchen ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sigfig.ai>, registered with Jiaoyiyuming.
PANEL
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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on May 8, 2024. Forum received payment on May 8, 2024.
On May 9, 2024, Jiaoyiyuming confirmed by e-mail to Forum that the <sigfig.ai> domain name is registered with Jiaoyiyuming and that Respondent is the current registrant of the name. Jiaoyiyuming has verified that Respondent is bound by the Jiaoyiyuming 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 May 10, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2024 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@sigfig.ai. Also on May 10, 2024, 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 May 10, 2024.
An Additional Submission from Respondent was received on May 12, 2024.
On May 13, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Founded in 2006 Complainant, Nvest, Inc. d/b/a SigFig, offers a variety of digital wealth solutions, including robo-advisory and other platforms for personalized investment advice. Complainant has an international presence, through e.g. the United States, Canada, India and Singapore, and partnerships with the world's leading financial institutions. As a result of the long usage and promotion of its SIGFIG mark, Complainant has become well-known by both industry professionals and members of the general public.
Complainant has rights in the SIGFIG mark through registration with the United States Patent and Trademark Office ("USPTO"). Respondent's <sigfig.ai> domain name is identical to Complainant's SIGFIG mark.
Respondent lacks rights or legitimate interests in the <sigfig.ai> domain name since Respondent is not affiliated with Complainant in any way and is not licensed or authorized to use Complainant's SIGFIG mark. Upon information and belief, Respondent is not commonly known by the disputed domain name or "sigfig", does not operate a business or other organization under the name "sigfig" and does not own any trademark or service mark rights in "sigfig". Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent's <sigfig.ai> domain name resolves to a parked page which merely lists Respondent's contact email, and the disputed domain name is listed for sale at USD 100 000 at Afternic.com.
Respondent registered the <sigfig.ai> domain name in bad faith with actual knowledge of Complainant's rights in the SIGFIG mark and there is no plausible logic or good faith rationale for Respondent to have registered the disputed domain name that contains Complainant's mark in its entirety and imitates Complainant's official <sigfig.com> address, list it for sale for USD 100 000, fail to respond to cease and desist letters, and engage in a pattern of registering domain names containing third-party trademarks. Respondent's actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.
Respondent has a large number of domain names in its portfolio that infringe other trademarks, some of which are active within the very same field as Complainant, namely robo-advisors, such as Schwab and Ellevest, further showing Respondent's obvious knowledge of and targeting of these marks and Complainant's SIGFIG mark. Respondent's registration and ownership of other obviously infringing domain names is highly relevant to the consideration of bad faith in the present case since it shows that Respondent has engaged in a pattern of conduct designed to infringe upon the trademarks of others and is well-familiar with the practice of leveraging trademarks to earn revenue in fraudulent ways.
Furthermore, Respondent's registration of multiple domains that infringe on other brands, and the fact that the majority of such trademarks are based in the United States, demonstrates its familiarity with trademarks and United States, and its specific bad faith intent to target Complainant's SIGFIG mark rather than use the domain name in any other manner for any other purpose.
B. Respondent
In full, the Response reads as follows:
"First, I am a fan of ai 'suffix domain names. Is there any law that says I cannot register Anguilla national top-level domain
The second point, Sigfig.ai, did not adversely affect the complainants
Third point: The complainant was trying to get my sigfig.ai at a low price
He contacted me at Jeanette.Eriksson@fairwindspartners.com
The email said that the background color of my website is the same as his logo color (is the color only available to him) and asked me to transfer sigfig.ai to him for $0"
C. Respondent's Additional Submission
In full, Respondent's Additional Submission reads as follows:
"1. The complainant has failed to meet its burden of proof for all three elements of this policy;
3. The Complainant has not provided sufficient evidence to prove that it holds the internationally well-known trademark "sigfig". The Complainant states that he has common law trademark rights in "Anguilla" and has not provided any actual evidence that he has such rights,
The Complainant has not submitted any evidence of trademark rights for the word "sigfig" in China (i.e., Respondent's country of residence).
4. There is also no paid or free or any other form of advertising on this page of the <sigfig.ai> website, and since the page belongs to the Respondent, it can be said that it has never been used to offer any products and services related to the Complainant or its competitors;
No user who has visited the disputed domain will believe that "this page is in any way associated with the complainant."
5. The Respondent denies that it deprived the Complainant of the right to use the trademark in the corresponding domain name, because it is evident from the screenshots submitted by the Complainant that the domain name <sigfig.com> is already in use."
FINDINGS
Complainant has established all the elements entitling it to relief.
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."
(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 in bad faith.
Identical and/or Confusingly Similar
Respondent says Complainant's sole use of its company trademarks and names in arbitration is not sufficient to satisfy paragraph 4(a)(i) of the Policy. However, Complainant has shown that it has rights in the SIGFIG mark through registration with the USPTO (i.e., Reg. No. 5,518,241, registered on July 17, 2018). It is not necessary for a complainant to prove that it has trademark rights in the country of residence of the respondent.
The Panel finds Respondent's <sigfig.ai> domain name to be identical to Complainant's mark, since the inconsequential ccTLD for Anguilla (".ai") may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent 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; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Although the Whois information provided by the Registrar omits the date on which the <sigfig.ai> domain name was registered, it is clear from the record that it was registered in 2019, the year after the registration of Complainant's mark with the USPTO. It resolves to an inactive website and is offered for sale for "$100,000 Minimum Offer" on the GoDaddy Afternic website.
These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <sigfig.ai> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent says Complainant has not shown that the SIGFIG mark is internationally well-known and has not submitted any evidence of trademark rights for the word "sigfig" in China (i.e., Respondent's country of residence). However, Complainant has submitted evidence that Respondent has registered several domain names comprising trademarks registered with the USPTO, followed by the ".ai" ccTLD. Although Respondent's name is redacted, in each case the Registrant Name, Organization, Street, City State/Province, Postal Code and Country (China) are identical to those of Respondent in this case. These domain names are <affectiva.ai>, <curemetrix.ai>, <ellevest.ai>, <priceline.ai>, <wolframalpha.ai>, <skhynix.ai> and <schwab.ai>. Complainant notes that Schwab and Ellevest operate as robo-advisors in the same field of business as Complainant.
This evidence satisfies the Panel that, despite the absence of any evidence that Complainant has trademark rights in China, Respondent was aware of Complainant's mark when registering the disputed domain name and did so as part of a pattern of conduct involving the registration of domain names incorporating United States registered trademarks together with the ".ai" ccTLD, which, since its release in 2009, has become popular in conveying the idea of artificial intelligence.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
The four illustrative circumstances set out in paragraph 4(b) of the Policy as evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) are not exclusive.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant's SIGFIG mark when Respondent registered the <sigfig.ai> domain name and that Respondent's pattern of conduct in registering several domain names comprising trademarks registered with the USPTO, followed by the ".ai" ccTLD, demonstrates that Respondent's aim in registering the <sigfig.ai> domain name was to profit from or exploit Complainant's trademark. Accordingly, the Panel finds that Respondent registered and is using the domain name in bad faith.
Complainant has established this element.
DECISION
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 <sigfig.ai> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: May 15, 2024
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