Moneytree, Inc. v. Alkebu Boyles
Claim Number: FA1409001579548
Complainant is Moneytree, Inc. (“Complainant”), represented by Kathleen T. Petrich of Miller Nash LLP, Washington, USA. Respondent is Alkebu Boyles (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moneytreeloans.org>, registered with 1 & 1 Internet AG (R73-LROR).
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 12, 2014; the National Arbitration Forum received payment September 12, 2014.
On September 17, 2014, 1 & 1 Internet AG (R73-LROR) confirmed by e-mail to the National Arbitration Forum that the <moneytreeloans.org> domain name is registered with 1 & 1 Internet AG (R73-LROR) and that Respondent is the current registrant of the name. 1 & 1 Internet AG (R73-LROR) verified that Respondent is bound by the 1 & 1 Internet AG (R73-LROR) registration agreement and 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 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 8, 2014, 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@moneytreeloans.org. Also on September 18, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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.
i. Complainant owns the MONEY TREE mark through its numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,166,890, registered June 23,1998).
ii. Complainant uses the MONEY TREE mark in connection with its business in financial services.
iii. Complainant operates online through <moneytreeinc.com>, which has been in use since 2000.
i. Under Policy ¶ 4(a)(i):
1. The <moneytreeloans.org> domain name is confusingly similar to Complainant’s MONEY TREE mark because Respondent has simply attached the generic term “loans” to the mark.
ii. Under Policy ¶ 4(a)(ii):
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <moneytreeloans.org> domain name. Respondent is neither licensed nor authorized to use the MONEY TREE mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent currently uses the disputed domain name to fraudulently provide unregulated financial services to unsuspecting consumers passing itself off as Complainant.
iii. Under Policy ¶ 4(a)(iii):
1. Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant’s business.
2. Respondent currently uses the disputed domain name to attract confused Internet users to its own website strictly for commercial gain.
3. Respondent has engaged in a type of phishing scheme by attempting to solicit visitors’ personal and financial information under the guise of providing online lending services.
4. Respondent had actual or constructive knowledge of Complainant’s rights in the mark prior to registering the disputed domain name.
Complainant established rights or legitimate interests in the mark contained in
its entirety within the disputed domain name. Respondent has no such rights to
or legitimate interests in the mark.
The disputed domain name is confusingly similar to Complainant’s mark.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical to or Confusingly Similar
Complainant uses the MONEY TREE mark in connection with its business in financial services. Complainant claims to own the MONEY TREE mark through its numerous trademark registrations with the USPTO (e.g., Reg. No. 2,166,890, registered June 23,1998). Complainant argues that such registrations are sufficient to establish rights in the MONEY TREE mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decisions. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that complainant’s trademark registrations with the USPTO established rights in the BLOOMBERG mark). Accordingly, the Panel finds that Complainant’s USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant claims that the <moneytreeloans.org> domain name is confusingly similar to Complainant’s MONEY TREE mark because Respondent has simply added the generic term “loans” to the mark and attached a generic top-level domain (“gTLD”) “.org.” The mere addition of a generic term and affixation of a gTLD to a mark does not distinguish a disputed domain name under a Policy ¶ 4(a)(i) analysis. See Mead Johnson & Company, LLC v. Chau, FA 1497581 (Nat. Arb. Forum Jun. 18, 2013) (concluding that the addition of the generic term “coupons” and a gTLD did not remove the disputed domain name from the realm of confusing similarity). As such, the Panel finds that Respondent’s changes to the MONEY TREE mark are not sufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant urges that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the <moneytreeloans.org> domain name. The Panel notes that the WHOIS information identifies “Alkebu Boyles” as the registrant of the disputed domain name. Further, Complainant contends that Respondent is neither licensed nor authorized to use the MONEY TREE mark. The Panel recalls that Respondent failed to submit a response and has not refuted any of Complainant’s contentions. Given the lack of evidence to support a contrary finding, the Panel finds that Respondent is not commonly known by the <moneytreeloans.org> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant urges that Respondent currently uses the disputed domain name to pass itself off as Complainant. Complainant believes that Respondent uses the disputed domain name to fraudulently provide unregulated financial services to unsuspecting consumers passing itself off as Complainant. See Complainant’s Ex. C. Previous panels have generally held that passing off behavior is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Thus, this Panel agrees that Respondent is attempting to pass itself off as Complainant, and finds that Respondent has not provided any bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent registered and used the disputed domain name in bad faith. Respondent’s use of the domain name, Complainant urges, seeks to compete with Complainant’s business. The domain name is used to promote loans using Complainant’s mark in an unauthorized manner. See Complainant’s Exhibit C. This Panel finds that such conduct supports findings of bad faith under Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Additionally, Complainant argues that Respondent’s use of the disputed domain name seeks to attract Internet users confused by the offer to Respondent’s own website for commercial gain. Using another’s mark to attract the unsuspecting to a website for ones own commercial gain is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain). Therefore, the Panel finds that Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iv).
Next, Complainant insists that Respondent engaged in a type of phishing scheme in its operation of the disputed domain name. Complainant argues that Respondent portrays itself as Complainant in order to obtain consumers’ personal and financial information. Typically, a respondent that engages in a type of phishing scheme acts in bad faith pursuant to Policy ¶ 4(a)(iii). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (holding that respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates). In this manner, the Panel finds that Respondent’s phishing behavior is further evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant asserts that Respondent had actual or constructive knowledge or Complainant’s rights in the MONEY TREE mark due to Complainant’s extensive use of the mark and the overall fame of the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). On the other hand, the Panel agrees with Complainant that based on Respondent’s use of the mark in the disputed domain name, Respondent displays that it had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and actual knowledge does support findings of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. 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)."
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <moneytreeloans.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 23, 2014
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