Enclave Advisors, LLC v. Willert Morris / Enclave Wealth Management
Claim Number: FA2003001890435
Complainant is Enclave Advisors, LLC (“Complainant”), represented by Alison Frey of Dickinson Wright PLLC, US. Respondent is Willert Morris / Enclave Wealth Management (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enclavewealthmanagement.com>, registered with NameCheap, Inc.
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 March 31, 2020; the Forum received payment on March 31, 2020.
On March 31, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <enclavewealthmanagement.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 April 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2020 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@enclavewealthmanagement.com. Also on April 2, 2020, 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 April 28, 2020, 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 uses the ENCLAVE ADVISORS mark in the operation of its business of providing investment advisory services.
Complainant holds a registration for the ENCLAVE ADVISORS service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,936,543, registered December 17, 2019, on the basis of an application filed as of May 21, 2019.
Respondent registered the <enclavewealthmanagement.com> domain name on May 8, 2019.
The domain name is confusingly similar to Complainant’s ENCLAVE ADVISORS mark.
Respondent is not licensed or otherwise authorized to use Complainant’s ENCLAVE ADVISORS mark.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to host a website devoted to the promotion and operation of a business competing with that of Complainant.
After receiving notice from Complainant, respondent took down the webpage resolving from the domain name and now fails to make active use of it.
Respondent lacks rights to or legitimate interests in the domain name.
Respondent knew of Complainant when it registered the domain name because Complainant had been operating for over 12 years under the ENCLAVE ADVISORS mark and the parties operate in the same industry in the state of New York.
Respondent registered and 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 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 to 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.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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”).
Complainant has rights in the ENCLAVE ADVISORS service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
The Panel is aware that Respondent’s registration of its domain name on May 8, 2019, preceded the registration of Complainant’s competing mark on December 17, 2019, as well as its application for mark registration filed on May 21, 2019. The question of time priority between the mark and domain name registrations is a matter of consequence, which will be taken up under the heading “Registration and Use in Bad Faith,” below.
We turn now to the central question posed by Policy ¶ 4(a)(i), and, in so doing, we conclude from a review of the record that Respondent’s challenged <enclavewealthmanagement.com> domain name is confusingly similar to Complainant’s ENCLAVE ADVISORS service mark. The domain name incorporates the distinctive element of the mark in its entirety, merely adding the generic expression “wealth management,” which describes a critical feature of Complainant’s investment advisory 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, Huron Consulting Group Inc. v. David White, FA 1701395 (Forum December 6, 2016) (finding a UDRP respondent’s <huroninc.net> domain name confusingly similar to each of the marks HURON CONSULTING GROUP and HURON HEALTHCARE under Policy ¶ 4(a)(i), where the domain name contained the dominant portion of the marks and merely appended the corporate identifier “inc” and a gTLD).
See also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business, did not sufficiently distinguish a respondent’s domain name from that mark under Policy ¶ 4(a)(i)).
As to the absence of effect of inclusion of a gTLD in the domain name, 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 lacks rights to and legitimate interests in the contested <enclavewealthmanagement.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 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 Complainant has not licensed or otherwise authorized Respondent to use the ENCLAVE ADVISORS mark. This, taken together with the facts that Respondent’s <enclavewealthmanagement.com> domain name was created less than one year ago and that the pertinent WHOIS information does not indicate that the domain name has been employed as a doing-business-as name, we conclude that Respondent has not been commonly known by the domain name within the meaning of Policy ¶ 4(c)(ii). See, for example, Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant alleges, and, again, Respondent does not deny, that Respondent has used the <enclavewealthmanagement.com> domain name to host a website devoted to the promotion and operation of a business competing with that of Complainant. 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, General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016):
[U]se of a domain to sell products and/or services that compete directly with a [UDRP] complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has adequately satisfied the proof requirements of Policy ¶ 4(a)(ii).
As noted above, Respondent’s registration, on May 8, 2019, of its contested <enclavewealthmanagement.com> domain name preceded the registration of Complainant’s competing mark on December 17, 2019, as well as its application for mark registration filed on May 21, 2019. The question of time priority between the mark and domain name registrations is a matter of consequence because it can be difficult for a UDRP complainant to make out a case of bad faith registration of a domain name in instances in which its rights in a mark subsumed in the domain name came into existence only after the domain name registration occurred.
However, it is possible for a UDRP complainant to overcome this difficulty in certain cases, as where a domain name registrant disingenuously registers a confusingly similar domain name shortly before the anticipated registration of a mark by a commercial rival. See, for example, Glasgow 2014 Limited v. Tommy Butler, D2012-2341 (WIPO January 12, 2013). There a panel confronted a case in which a domain name was registered in January 2006, while a UDRP complainant’s subsumed trademark was not applied for until September of that year. To address this issue, the panel looked for guidance to the World Intellectual Property Organization’s WIPO Overview of WIPO Panel Views on Selected UDRP Questions. That Overview, now in its third edition, is commonly referred to as the WIPO Jurisprudential Overview 3.0. Section 3.82 of the Overview recites as follows:
3.8.2 Domain names registered in anticipation of trademark rights
As an exception to the general proposition described above in 3.8.1 [providing that, where a respondent registers a domain name before a complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent], in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.
Here, Complainant contends that Respondent is its commercial rival, and that Complainant had been operating for over 12 years under the ENCLAVE ADVISORS mark before Respondent registered its domain name, and that the parties operate in the same industry in the state of New York. Respondent, despite having the opportunity to counter these assertions, has elected to remain silent. In these circumstances, we may comfortably conclude that Respondent made a conscious choice, only thirteen (13) days before Complainant filed its application for mark registration, to profit off of its rival’s good will, established over more than a decade of development of the mark in commerce, while also preventing Complainant from employing a similar domain name to facilitate its wealth management practice. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s registration and use of the domain name in bad faith. See, for example, LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (finding that a respondent’s use of a disputed domain name to offer competing financial services disrupted a UDRP complainant’s business, thus demonstrating bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii)).
It is also plain from the record that Respondent’s employment of the
<enclavewealthmanagement.com> domain name, which we have found to be confusingly similar to Complainant’s ENCLAVE ADVISORS mark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with it. Under Policy ¶ 4(b)(iv), this too demonstrates Respondent’s bad faith in registering and using the domain name. See, for example, CAN Financial Corporation v. William Thomson / CNA Insurance, FA1541484 (Forum February 28, 2014) (finding that a respondent had engaged in bad faith registration and use under Policy ¶ 4(b)(iv) by employing a domain name that was confusingly similar to the mark of a UDRP complainant to attract Internet users to its own website where it sold competing financial services).
The panel in Glasgow 2014, cited above, concluded similarly on the facts there presented, which closely track those found here:
Parties do not register the trade marks of their competitors for no reason at all and in the particular circumstances of this case, the Panel feels entitled to infer that the Respondent's intentions were abusive.
* * * **
The Panel is satisfied that in the hands of the Respondent, a competitor, the Domain Names constitute an abusive threat hanging over the Complainant's head, which equates to a bad faith use under the Policy ….”
Finally, under this head of the Policy, we note that Respondent’s recent conversion of the domain name to inactive use, or passive holding, does not change the outcome of our analysis because Respondent’s continued holding of the domain name still prevents Complainant from reflecting the domain name in one of its own for the promotion of its wealth management practice. See, for example, Tom Welling v. Kenneth Gold, FA1393893 (Forum July 29, 2011), finding bad faith registration and use, where:
[B]y registering a domain name identical to the Complainant’s name, … [the Respondent] … effectively prevented the Complainant from reflecting his mark in a domain name, thereby necessarily causing confusion to visitors to the website who might well think that the website had some endorsement from the 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 <enclavewealthmanagement.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 30, 2020
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