Robinhood Markets, Inc. v. Money Ferrari
Claim Number: FA1705001729682
Complainant is Robinhood Markets, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Money Ferrari (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <robinhood.global>, registered with NameCheap, Inc.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 1, 2017; the Forum received payment on May 1, 2017.
On May 1, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <robinhood.global> 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 May 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 2017 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@robinhood.global. Also on May 5, 2017, 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 May 31, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
Summarize Complainant's contentions here
i) Complainant contends it registered its ROBINHOOD mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,761,666, registered June 23, 2015), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <robinhood.global> domain name is identical or confusingly similar to Complainant’s mark because it merely appends the generic top-level domain (“gTLD”) “.global” to Complainant’s fully incorporated mark.
ii) Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its ROBINHOOD mark in any fashion and Respondent is not commonly known by the disputed domain name. Respondent is using the resolving webpage to pass itself off as Complainant and to offer counterfeit products, and services identical to Complainant. Such use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
iii) Respondent has registered and is using the <robinhood.global> domain name in bad faith. Respondent attempts to disrupt the business of Complainant—under Policy ¶ 4(b)(iii)—by offering competing services and counterfeit products. Respondent is also attempting to attract Internet traffic and commercially benefit from the goodwill of the ROBINHOOD mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Respondent’s actual knowledge of Complainant’s rights in the ROBINHOOD mark is further evidence of bad faith.
B. Respondent
Respondent did not submit a Response. The Panel notes that the disputed domain name was registered on October 1, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
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 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 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 (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.”).
Complainant contends it registered its ROBINHOOD mark with the USPTO (Reg. No. 4,761,666, registered June 23, 2015), and has rights in the mark under Policy ¶ 4(a)(i). A USPTO registration confers rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (FORUM Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Thus, the Panel may find that Complainant has rights in the ROBINHOOD mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <robinhood.global> domain name is identical or confusingly similar to Complainant’s mark because it simply appends the gTLD “.global” to Complainant’s fully incorporated mark. The “.global” domain has been held to render a finding of confusing similarity where appended to a complainant’s mark. See Kellogg North America Company v. Lakhvinder Singh, FA 1686534 (Forum Sept. 20, 2013) (“.global is a generic top level domain and does not distinguish [<kelloggs.global> and <kellogg.global>] from the Complainant’s KELLOGG’s mark.”). Similarly, the Panel holds that Respondent’s <robinhood.global> domain name is identical or confusingly similar to Complainant’s mark.
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 shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its ROBINHOOD mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel notes that the <robinhood.global> WHOIS information lists “MONEY FERRARI” as the registrant. As such, the Panel holds that Respondent is not commonly known by <robinhood.global>.
Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name. Respondent is using the resolving webpage in a competitive manner to divert potential customers away from Complainant and to gain profits from commercial transactions. Use of a disputed domain name for the purpose of offering products and services that directly compete with Complainant’s business may not be construed as a bona fide offering of goods or services or legitimate noncommercial or fair use of a domain. See j2 Global Canada, Inc. and Landslide Technologies, Inc. v. VIJAY S KUMAR / STRATEGIC OUTSOURCING SERVICES PVT LTD, FA 1647718 (Forum Jan. 4, 2016) (finding that the disputed domain purports to offer for sale goods and services in the field of electronic marketing, which directly overlap with the services covered by Complainant’s registrations and offered by Complainant online, and therefore Respondent does not have rights or legitimate interests through its competing use). Here, Complainant has provided screenshot evidence of Respondent’s website which offers financial services similar to Complainant’s and products that appear to be affiliated with Complainant. On this evidence, the Panel holds that Respondent has failed to make a bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain.
Complainant asserts that Respondent is disrupting its business by attempting to divert potential customers away from Complainant by offering information that directly competes with Complainant. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Complainant has provided screenshot evidence of Respondent’s resolving webpage which displays content and services similar to Complainant. As such, the Panel holds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Complainant contends Respondent has registered and is using the <robinhood.global> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the ROBINHOOD mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Here, Complainant has provided screenshot evidence of <robinhood.global> displaying competing products that are advertised as being affiliated with Complainant. Therefore, the Panel concludes that Respondent created a likelihood of confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant further contends that Respondent registered and is using the disputed domain name in bad faith because Respondent had actual knowledge of Complainant’s rights in the mark. Registration of a disputed domain name with actual knowledge of the complainant and its trademark rights is evidence of bad faith. The use of a domain name to sell counterfeit goods bearing the infringed mark provides sufficient basis to deduce a respondent’s actual knowledge. See Mycoskie, LLC v. William Kelly, FA 1488105 (Forum Apr. 23, 2013) (“While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.”). Here, Complainant has provided screenshot evidence showing the disputed domain name’s resolving webpage which offers identical services and products to Complainant’s business. Therefore, the Panel infers that Respondent possessed actual knowledge of Respondent’s rights in the ROBINHOOD mark at the time of registration.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <robinhood.global> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 5, 2017
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