Guggenheim Capital, LLC v. jason smith
Claim Number: FA1609001695171
Complainant is Guggenheim Capital, LLC (“Complainant”), represented by John J. Dabney of McDermott Will & Emery LLP, District of Columbia, USA. Respondent is jason smith (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guggenheimparrtners.com>, registered with Wild West Domains, LLC.
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 September 23, 2016; the Forum received payment on September 23, 2016.
On September 23, 2016, Wild West Domains, LLC confirmed by e-mail to the Forum that the <guggenheimparrtners.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 2016 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@guggenheimparrtners.com. Also on September 26, 2016, 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 26, 2016, 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
i) Complainant registered its GUGGENHEIM PARTNERS with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,110,878, registered July 4, 2006), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <guggenheimparrtners.com> domain name is confusingly similar because it merely omitts the space and adds a single “r” into the entire GUGGENHEIM PARTNERS mark plus a generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its GUGGENHEIM PARTNERS mark in any fashion, and Respondent is not commonly known by the disputed domain name. Respondent is not currently making an active use of the domain name and only uses the domain to send fraudulent emails as part of a phishing scheme. This cannot be construed as a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
iii) Respondent registered and is using the <guggenheimparrtners.com> domain name in bad faith. Respondent had knowledge of Complainant’s GUGGENHEIM PARTNERS mark, and deliberately decided to register a domain name that was a common misspelling of the mark. Respondent is also using the domain name as part of a fraudulent email phishing scheme. All this conduct can also be said to be disrupting Complainant’s business in bad faith under Policy ¶ 4(b)(iii) as well as under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Respondent registered the <guggenheimparrtners.com> domain name on September 20, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. The 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 that it has rights in the GUGGENHEIM PARTNERS mark based on its registration with the USPTO (Reg. No. 3,110,878, registered July 4, 2006). Prior panels have found that such a registration confers rights in a mark pursuant to Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel therefore chooses to decide that Complainant has demonstrated rights in the GUGGENHEIM PARTNERS mark.
Complainant further contends that Respondent’s <guggenheimparrtners.com> domain name is confusingly similar to its GUGGENHEIM PARTNERS mark. Complainant argues that Respondent’s domain name is identical to its mark, but for the addition of a single “r” to PARTNERS, and the omission of spaces and addition of a gTLD. Panels have found that domain names are confusingly similar to a complainant’s mark where they omit a single letter. See Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding the <twitcch.tv> domain name confusingly similar to the TWITCH TV trademark because the domain name consisted of a common misspelling of the mark by merely adding the letter “c”); see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Therefore the Panel holds that <guggenheimparrtners.com> is confusingly similar to Complainant’s GUGGENHEIM PARTNERS mark under Policy ¶ 4(a)(i).
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 contends that Respondent has no rights or legitimate interests in the <guggenheimparrtners.com> domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its GUGGENHEIM PARTNERS mark in any fashion, and that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for the domain name in question lists “jason smith” as the registrant. Previous panels have inferred that a respondent is not commonly known by a domain name from the WHOIS information and lack of contradicting evidence in the record. 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)). Thus, the Panel chooses to find that Respondent is not commonly known by <guggenheimpartners.com> domain name.
Complainant alleges that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is not making any active use of the domain name, and that Respondent is using it as part of an email phishing scheme. The Panel notes Complainant’s submission of an error message at the current resolving page of <guggenheimparrtners.com>. Complainant has also submitted evidence of alleged phishing activity in connection with one of its employees. Panels have held that a respondent does not have rights or legitimate interests in a domain name when they fail to make an active use of it, and that phishing is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name); see also Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Accordingly, the Panel finds that Respondent’s use of the domain is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant asserts that Respondent registered and has been using the <guggenheimparrtners.com> domain name in bad faith. Complainant first argues that Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business. Complainant argues that the domain name is so similar to its GUGGENHEIM PARTNERS mark that Internet users and Complainant’s customers will be diverted to the Respondent’s website that is not being used. Panels have found bad faith where a respondent is not making active use of a domain name. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.). See also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The particular circumstances of this case that the Panel has considered are: i) Complainant has used GUGGENHEIM PARTNERS trademark continuously since 2000, and it has been registered with the USPTO since 2006, and ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names. As the Panel finds such a failure to make an active use here, the Panel finds that Respondent uses the domains in bad faith under Policy ¶ 4(a)(iii).
As the Panel finds this evidence sufficient, it finds that Respondent uses the <guggenheimparrtners.com> domain name in bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). As such, the Panel determines that Respondent registered <guggenheimparrtners.com> for the primary purpose of disrupting Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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 "actual knowledge of Complainant's mark when registering the disputed domain name"). Complainant’s argument is that it has been continuously using its GUGGENHEIM PARTNERS mark since 2000, that its trademark has been registered with the USPTO since 2006, and that Respondent’s domain name is so similar that it must have had notice of the mark. Panels have used the method a respondent registered the domain name and the complainant’s extensive use of a mark as evidence to infer that a respondent had actual notice. See Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Therefore, the Panel chooses to infer that Respondent had actual notice of Complainant’s GUGGENHEIM PARTNERS mark when it registered the <guggenheimparrtners.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Next, Complainant argues that Respondent is using the <guggenheimparrtners.com> domain name as part of an email phishing scheme. Complainant has provided evidence where the Respondent allegedly attempts to solicit financial information from an employee of Complainant. Panels have defined phishing as “a practice that is intended to defraud consumers into revealing personal and proprietary information. Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004). Panels have also found a respondent’s registration of a domain name to be in bad faith, when the domain is used to send phishing emails. See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). As such, the Panel holds that Respondent’s use of the disputed domain name is in violation of Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent has committed bad faith by typosquatting on its GUGGENHEIM PARTNERS mark. Complainant asserts that adding a second “r” to PARTNERS in its mark is a common typographical error, and that Respondent purposely registered the <guggenheimparrtners.com> domain name knowing this fact. Panels have found that the deliberate misspelling of a complainant’s mark constitutes bad faith under Policy ¶ 4(a)(iii). See Twitter, Inc. v. Domain Admin, FA1503001607451 (Forum Apr. 2, 2015) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark when searching for the mark’s associated products or services. In doing so the wayward Internet users are directed to a web presence controlled by the domain name’s registrant where their accidental visits may be exploited. Here, Respondent simply changes a single letter in Complainant’s trademark before incorporating the mark into the at-issue domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith.”). As such, the Panel determines that Respondent is typosquatting on Complainant’s mark, and thus the Panel finds Respondent in bad faith under 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 <guggenheimparrtners.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 3, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page