DECISION

Swell Investing LLC v. Zhi Hao

Claim Number: FA1808001804014

PARTIES

Complainant is Swell Investing LLC (“Complainant”), represented by Cathleen Miller of Pacific Life Insurance Law Department, California, USA. Respondent is Zhi Hao (“Respondent”), Singapore.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <swellinvestment.com>, registered with NameCheap, Inc..

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 29, 2018; the Forum received payment on September 5, 2018.

On August 30, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <swellinvestment.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 September 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 2018 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@swellinvestment.com. Also on September 6, 2018, 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 September 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant

1. Complainant, Swell Investing LLC, a subsidiary of Pacific Life Insurance Company, provides investment management services. Complainant has rights in the SWELL mark based upon Pacific Life Insurance Company’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,928,672, registered Mar. 29, 2016). See Compl. Ex. 1. Complainant also has common law rights in the SWELL mark through its registration of the <swellinvesting.com> domain name. Respondent’s <swellinvestment.com> domain name is confusingly similar to Complainant’s SWELL mark as it merely adds the term “investment.”

2. Respondent lacks rights and legitimate interests in the <swellinvestment.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert users to a website that prompts users to submit personal information.

3. Respondent registered and uses the <swellinvestment.com> domain name in bad faith. Respondent attempts to create confusion with Complainant’s SWELL mark for commercial gain by resolving to a login page designed to phish for Internet users’ personal information. Further, Respondent registered the disputed domain name with actual and constructive knowledge of Complainant’s rights in the SWELL mark. Finally, Respondent used a privacy service to conceal its identity when Respondent registered the <swellinvestment.com> domain name.

B. Respondent

1. Respondent did not submit a response.

FINDINGS

1. Respondent’s <swellinvestment.com> domain name is confusingly similar to Complainant’s SWELL mark.

2. Respondent does not have any rights or legitimate interests in the <swellinvestment.com> domain name.

3. Respondent registered or used the <swellinvestment.com> domain name in bad faith.

DISCUSSION

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.”).

Identical and/or Confusingly Similar

Complainant contends it has rights in its SWELL mark through registration with the USPTO (e.g., Reg. No. 4,928,672, registered Mar. 29, 2016). See Compl. Ex. 1.

Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds that the Complainant has rights in the SWELL mark under Policy ¶ 4(a)(i).

domain name in 2014. See Compl. Ex. 2. Further, Complainant argues it uses its SWELL mark in various promotional and advertising materials featured in print, on television and on numerous social media platforms. See Amend. Compl. p. 4. Therefore, the Panel also finds that Complainant established common law rights in its SWELL mark.

Next, Complainant asserts that Respondent’s <swellinvestment.com> domain name is confusingly similar to Complainant’s SWELL mark because it incorporates the mark in its entirety and adds the term “investment.” The addition of a descriptive term is insufficient to distinguish a disputed domain name from a Complainant’s mark. See King Ranch IP, LLC v. E Miller, FA 1785596 (Forum June 6, 2018) (“Complainant’s trademark is used in-part with regard to barbecue related goods and services; the term “bbq” is thus suggestive of the KING RANCH trademark. Therefore, the Panel finds that the <kingranchbbq.com> domain name is confusingly similar to Complainant’s KING RANCH mark.”). Additionally, though the Panel notes that Respondent’s <swellinvestment.com> domain name adds the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD may not sufficiently distinguish a disputed domain name from a mark. See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (finding that the addition of a generic term and the generic top-level domain “.com” insufficient to differentiate the <nanodark.com> domain name from the NANO mark). Therefore, the Panel concludes that Respondent’s <swellinvestment.com> domain name is confusingly similar to Complainant’s SWELL mark under Policy ¶ 4(a)(i).

Rights 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).

Complainant asserts that Respondent lacks rights and legitimate interests in the <swellinvestment.com> domain name. Specifically, Complainant claims Respondent is not authorized to use Complainant’s SWELL mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”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.”). The Panel notes the WHOIS of record identifies the Respondent as “Zhi Hao,” and no information in the record shows that Respondent was commonly known by the <swellinvestment.com> domain name or authorized to use Complainant’s SWELL mark in any way. Accordingly, the Panel concludes that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).

Additionally, Complainant asserts Respondent fails to use the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant claims Respondent uses the <swellinvestment.com> domain name to collect personal information from Complainant’s customers. Using a disputed domain name to procure users’ personal information is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nordstrom, Inc. v. Above.com Domain Privacy, FA 1654490 (Forum Feb. 1, 2016) (finding respondent failed under Policy ¶¶ 4(c)(i) and (iii) as it phished for internet users’ personal information via a fake survey). Here, Respondent’s domain name’s resolving webpage features a login form where users may enter a username and password. See Compl. Ex. 4. Therefore, the Panel concludes that the Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

Registration and Use in Bad Faith

Complainant asserts Respondent registered and uses the <swellinvestment.com> domain name in bad faith because Respondent uses the domain name to attract users for commercial gain by creating a likelihood of confusion as to the source or affiliation of Respondent’s webpage. Use of a domain name to create confusion with Complainant Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Here, Complainant asserts that because Respondent’s <swellinvestment.com> domain name is confusingly similar to Complainant’s SWELL mark and Complainant’s <swellinvesting.com> domain name, users may confused as to the source or affiliation of Respondent’s webpage. Further, Complainant provides a screenshot of the disputed domain name’s resolving webpage, which features a login form where users may enter personal information, and Complainant claims Respondent’s goal is to use that personal information for financial or identity theft. See Compl. Ex. 4. Therefore, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iv).

Further, Complainant asserts Respondent uses the <swellinvestment.com> domain name to conduct a phishing scheme. Use of a disputed domain name to conduct a phishing scheme generally establishes bad faith under Policy ¶ 4(a)(iii). See United States Postal Service v. kyle javier, FA 1787265 (Forum June 12, 2018) (“Use of a domain name to phish for Internet users’ personal information is evidence of bad faith.”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage, which features a login form where users may enter personal information. See Compl. Ex. 4. Therefore, the Panel concludes that Respondent uses the <swellinvestment.com> domain name to phish for Complainant’s customers’ personal information, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).

Finally, Complainant alleges Respondent registered the <swellinvestment.com> domain name in bad faith based on Respondent’s knowledge of Complainant’s rights in the SWELL mark. Specifically, Complainant asserts Respondent must have known of the SWELL mark based on the fame of the mark and Respondent’s construction of the disputed domain name. Actual knowledge of complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii), and can be established by the fame of the mark and a respondent’s use of it. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018)

(“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant provides a screenshot of Complainant’s website, the domain name for which (<swellinvesting.com>) is confusingly similar to the <swellinvestment.com> domain name. See Compl. Ex. 3. Complainant also provides screenshots of various social media profiles and a listing of media coverage of Complainant’s business. See Compl. Ex. 3. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the SWELL mark when Respondent registered the <swellinvestment.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <swellinvestment.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: October 10, 2018