IntraFi Network LLC v. John Stevens
Claim Number: FA2109001964234
Complainant is IntraFi Network LLC (“Complainant”), represented by Nicole Friedlander of Sullivan & Cromwell LLP, New York, USA. Respondent is John Stevens (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <assetpointadvisors.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2021; the Forum received payment on September 17, 2021.
On September 20, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <assetpointadvisors.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 September 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 2021 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@assetpointadvisors.com. Also on September 20, 2021, 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 October 15, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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. 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Intrafi Network LLC, provides reciprocal deposit solutions to banks and financial institutions through its wholly-owned subsidiary Assetpoint Financial, LLC.
Complainant has rights in the ASSETPOINT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”). Complainant also has a USPTO registration for the trademark ASSETPOINT FINANCIAL.
Respondent’s <assetpointadvisors.com> domain name is identical or confusingly similar to Complainant’s ASSETPOINT mark, as it incorporates the mark in its entirety, only adding the descriptive word “advisors” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the at-issue domain name. Complainant has not authorized or licensed Respondent to use its ASSETPOINT mark, nor is Respondent commonly known by the at-issue domain name. Further, Respondent is not using the domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the website addressed by the domain name attempts to pass itself off as Complainant in furtherance of fraudulent activities.
Respondent registered and uses the <assetpointadvisors.com> domain name in bad faith. Respondent attempts to attract users for commercial gain, as the <assetpointadvisors.com> website feigns an association with Complainant. Additionally, Respondent had actual notice of Complainant’s rights in the mark, evidenced by Respondent’s attempt to pass itself off as Complainant in a phishing scheme. Finally, Respondent provided false contact information when registering the domain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ASSETPOINT trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the ASSETPOINT trademark.
Respondent uses the at-issue domain name to pass itself off as Complainant and perpetrate fraud.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registrations for the ASSETPOINT mark demonstrates Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(I). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <assetpointadvisors.com> domain name contains Complainant’s entire ASSETPOINT trademark followed by the suggestive term “advisors” and the generic top-level domain name “.com”. The differences between Respondent’s domain name and Complainant’s trademark fail to distinguish the <assetpointadvisors.com> domain name from Complainant’s ASSETPOINT mark under the Policy. Therefore, the Panel concludes that Respondent’s <assetpointadvisors.com> domain name is confusingly similar to Complainant’s ASSETPOINT trademark pursuant to Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “John Stevens” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <assetpointadvisors.com> domain name or by ASSETPOINT. The Panel therefore concludes that Respondent is not commonly known by the <assetpointadvisors.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name).
Respondent uses the at-issue domain name to address a website whose content is designed to suggest that Complainant is the website’s sponsor, when it is not. Among the website’s features falsely messaging that Complainant is the <assetpointadvisors.com> website’s owner are: an overt false assertion that the website belong to a business called Assetpoint Financial LLC (Complainant’s relevant subsidiary business is named Assetpoint Financial, LLC); the assertion that Complainant’s Virginia address is the address for the website owner’s corporate office; multiple devices used to deceive website visitors into believing that the site’s operator, Respondent, is a member of FINRA; and the website’s presenting of a product array similar to that of Complainant’s relevant business. Markedly, Respondent uses <assetpointadvisors.com> to defraud third parties. Using the at-issue domain name in this manner does not indicate a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use), see also Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panellist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also, Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”)
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses the at-issue domain name to address a website dressed to appear as if it is Complainant’s genuine website. Using the at-issue domain name to pass off as Complainant is disruptive to Complainant’s business and indicates an attempt to attract to attract internet users to Respondent’s website by falsely indicating Complainant sponsors the domain name and related website when it does not thereby demonstrating Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii) and (iv). See Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the resolving website to sell the complainant’s products, using images copied directly from the complainant’s website), see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
Next, Respondent uses the at-issue domain name so it may perpetrate fraud on third parties who mistakenly believe, because of Respondent’s deception, that they are dealing with Complainant’s business, when they are not. Complainant suggests that Respondent may be, or is, ultimately using the at-issue domain name to attempt to steal personal information as well as money. Using the <assetpointadvisors.com> to deceive consumers into dealing with Respondent and/or to phish for personal information further shows Respondent’s bad faith registration and use of <assetpointadvisors.com> under the Policy. See, Kaiser Foundation Health Plan, Inc. v. Hines, FA1632754 (Forum Sept. 18, 2015) (“Respondent’s use of the … domain name to engage in a phishing scheme is in itself evidence of Respondent’s bad faith”); see also, Hess Corp. v. GR, FA770909 (Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use where it fraudulently attempted to acquire the personal and financial information of Internet users through the use of a domain name confusingly similar to a another’s mark)
Finally, Respondent had actual knowledge of Complainant’s rights in the ASSETPOINT mark when it registered <assetpointadvisors.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of the ASSETPOINT trademark, from Respondent’s incorporation of Complainant’s trademark in the domain along with the suggestive term “advisors” and from Respondent’s use of the domain name to impersonate Complainant and inappropriately capitalize on the ASSETPOINT trademark as discussed elsewhere herein. Respondent’s registration and use of the <assetpointadvisors.com> domain name with knowledge of Complainant’s rights in such domain name further shows Respondent’s bad faith pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <assetpointadvisors.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 18, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page