Oportun, Inc. v. Flavia Griswold / Domain Admin / Whois Privacy Corp. / Not disclosed Not disclosed
Claim Number: FA1904001837687
Complainant is Oportun, Inc. (“Complainant”), represented by Ryan C. Compton of DLA Piper LLP (US), District of Columbia, USA. Respondent is Flavia Griswold / Domain Admin / Whois Privacy Corp. / Not disclosed Not disclosed (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oportuneonline.com>, <oportunonline.com>, <opportuneloansonline.com>, <opportunonline.com>, <oportunloansonline.com>, and <opportunloansonline.com> registered with Internet Domain Service BS Corp; and <oportunloan.online>, registered with GoDaddy.com, 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 April 5, 2019; the Forum received payment on April 5, 2019.
On April 8, 2019 and April 9, 2019, GoDaddy.com, LLC and Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <oportuneonline.com>, <oportunonline.com>, <opportuneloansonline.com>, <opportunonline.com>, <oportunloansonline.com>, <opportunloansonline.com>, <oportunloan.online> domain names are registered with GoDaddy.com, LLC or Internet Domain Service BS Corp and that Respondent is the current registrant of the names. GoDaddy.com, LLC and Internet Domain Service BS Corp have verified that Respondent is bound by the GoDaddy.com, LLC and Internet Domain Service BS Corp registration agreements 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 April 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2019 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@oportuneonline.com, postmaster@oportunonline.com, postmaster@opportuneloansonline.com, postmaster@opportunonline.com, postmaster@oportunloansonline.com, postmaster@opportunloansonline.com, postmaster@oportunloan.online. Also on April 17, 2019, 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 9, 2019, 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 names be transferred from Respondent to Complainant.
A. Complainant
i)Complainant is a leading technology-powered provider of personal loans and a certified Community Development Financial Institution that lends money to hardworking, low-to-moderate income individuals. Complainant has rights in the OPORTUN mark through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,999,048, registered July 12, 2016). See Compl. Annex A. Respondent’s disputed domain names are confusingly similar to Complainant’s OPORTUN mark as they all incorporate the mark in its entirety, along with the generic term “loans” and/or “online,” and a “.com” or “.online” generic top-level domain (“gTLD”). Additionally, the <oportuneonline.com>, <opportuneloansonline.com>, <opportunonline.com>, and <opportunloansonline.com> domain names incorporate common minor misspellings of the mark, either by adding an extra “p” and/or the letter “e.”
ii)Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not licensed or otherwise authorized to use Complainant’s OPORTUN mark. Additionally, Respondent uses the disputed domain name to divert users otherwise seeking Complainant’s services.
iii)Respondent registered and uses the disputed domain names in bad faith. Respondent’s registration of multiple typosquatted domain names demonstrates a pattern of bad faith registration. Furthermore, Respondent was aware of Complainant’s rights in the OPORTUN mark prior to registering the disputed domain names.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain names were registered on:
<oportuneonline.com> December 28, 2018
<oportunonline.com> December 28, 2018
<opportuneloansonline.com> November 19, 2018
<opportunonline.com> January 21, 2019
<oportunloansonline.com> November 19, 2018
<opportunloansonline.com> November 19, 2018
<oportunloan.online> January 17, 2019
2. Complainant has established rights in the OPORTUN mark based upon registration of the mark with the USPTO (e.g., Reg. No. 4,999,048, registered July 12, 2016).
3. The disputed domain names’ resolving websites offer loan services similar to those of Complainant.
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."
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain name at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that all of the disputed domain names were registered between November 2018 and January 2019. Additionally, six of the seven domain names were registered with the Internet Domain BS registrar and use the same Cloudflare nameservers. The rest of the disputed domain names were registered with GoDaddy, LLC and use Domain Control nameservers. Furthermore, all of the disputed domain names have a similar verbal structure, which are identical to Complainant’s OPORTUN marks with additional generic terms or minor misspellings. Finally, all of the disputed domain names purport to offer fast, safe, secure loans under Complainant’s OPORTUN mark.
The Panel finds that all of the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
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”).
Complainant claims rights in the OPORTUN mark based upon registration of the mark with the USPTO (e.g., Reg. No. 4,999,048, registered July 12, 2016). See Compl. Annex A. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the OPORTUN mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s disputed domain names are confusingly similar to the OPORTUN mark, as the names incorporate the mark in its entirety, along with the generic term “loans” and/or “online,” and a “.com” or “.online” generic top-level domain (“gTLD”). Additionally, the <oportuneonline.com>, <opportuneloansonline.com>, <opportunonline.com>, and <opportunloansonline.com> domain names incorporate common minor misspellings of the mark, either by adding an extra “p” and/or the letter “e.” . Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. The Panel therefore determines the disputed domain names are confusingly similar to the OPORTUN mark per 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), 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 argues that Respondent has no rights or legitimate interests in the disputed domain names, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the OPPORTUN mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Flavia Griswold,” “Domain Admin / Whois Privacy Corp.,” or “Not disclosed Not disclosed,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. See Compl. Annex D. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain names.
The Panel notes that Complainant makes no specific allegation as to Respondent’s failure to use the disputed domain names for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Complainant contends Respondent uses the disputed domain names to divert users away from Complainant’s services. Use of a disputed domain name to divert users away from a complainant’s website may indicate a lack of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant provides screenshots of the disputed domain names’ resolving websites, which all offer loan services similar to those of Complainant. See Compl. Annexes E-N.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant contends Respondent’s registration of the disputed domain names is part of a pattern of bad faith registration and use of domain names. A pattern of bad faith registration can be established by a showing of multiple domain names in a present case, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”). The Panel notes that Complainant argues Respondent registered seven (7) disputed domain names all incorporating typosquatted versions of its OPORTUN mark. Therefore, the Panel finds Respondent has engaged in a pattern of bad faith registration per Policy ¶ 4(b)(ii).
Complainant also contends that in light of Respondent’s use of Complainant's OPORTUN mark, it is inconceivable that Respondent could have registered the disputed domain names without actual knowledge of Complainant's rights in the mark. The Panel observes 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 notes that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further asserts that Respondent’s use of the domain names to feature and offer loan services in connection to Complainant’s OPORTUN mark indicates it had actual knowledge of Complainant’s rights. The Panel infers that, due to the manner of use of the disputed domain names, Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the names in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oportuneonline.com>, <oportunonline.com>, <opportuneloansonline.com>, <opportunonline.com>, <oportunloansonline.com>, <opportunloansonline.com>, <oportunloan.online> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 13, 2019
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