Oportun, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1911001872675
Complainant is Oportun, Inc. (“Complainant”), represented by Ryan Compton of DLA Piper LLP (US), District of Columbia, United States. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oportunoffer.com> and <opportuneonline.com> and <opportuneloanonline.com>, and <opportunepersonalloans.com>, registered with Internet Domain Service Bs Corp.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 22, 2019; the Forum received payment on November 22, 2019.
On November 26, 2019, Internet Domain Service Bs Corp confirmed by e-mail to the Forum that the <oportunoffer.com> and <opportuneonline.com> and <opportuneloanonline.com>, and <opportunepersonalloans.com> domain names are registered with Internet Domain Service Bs Corp and that Respondent is the current registrant of the names. Internet Domain Service Bs Corp has verified that Respondent is bound by the Internet Domain Service Bs Corp 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 December 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2020 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@oportunoffer.com, postmaster@opportuneonline.com, postmaster@opportuneloanonline.com, postmaster@opportunepersonalloans.com. Also on December 18, 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 January 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
In the instant proceedings, Complainant has alleged that the entities which control the domain names 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.” The WHOIS information for the at-issue domain names indicates similar registrant information for the nominal registrants. The at-issue domain names were all registered using the registrar Internet Domain BS and the same Cloudflare name servers. Each of the at-issue domain names directs internet users to similar websites displaying Complainant’s name and trademark and offering services competing with those offered by Complainant. Moreover, Complainant’s contentions regarding the common control of the at-issue domain names and its request that the registrants be treated as a common entity in the instant proceeding are unopposed. Therefore, the Panel will treat the domain names’ registrants as a single entity for the purposes of this proceeding.
A. Complainant
Complainant contends as follows:
Complainant is a leading technology-powered provider of personal loans and a certified Community Development Financial Institution.
Complainant has rights in the OPORTUN mark through its registration with the United States and Patent Office (“USPTO”).
Respondent’s <oportunoffer.com>, <opportuneonline.com>, <opportuneloanonline.com>, and <opportunepersonalloans.com> domain names are identical or confusingly similar to Complainant’s OPORTUN mark. Respondent incorporates Complainant’s OPORTUN mark with a minor misspelling or addition to the mark, the inclusion of the term “offer,” “loans,” or “personal loans” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the at-issue domain names as Respondent is not commonly known by the domain names nor did Complainant authorize Respondent to use its OPORTUN mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to divert internet users who are seeking Complainant’s services and offer competing services.
Respondent registered and used the <oportunoffer.com>, <opportuneonline.com>, <opportuneloanonline.com>, and <opportunepersonalloans.com> domain names in bad faith as Respondent has engaged in a pattern of bad faith. Respondent offers similar services to Complainant. Lastly, Respondent had actual knowledge of Complainant’s rights in the OPORTUN mark through its fame and services offered under the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the OPORTUN mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the OPORTUN trademark.
Respondent uses the at-issue domain names to poses as Complainant and offer services competing with those services offered by 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."
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”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the OPORTUN mark with the USPTO demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Additionally, Respondent’s <oportunoffer.com>, <opportuneonline.com>, <opportuneloanonline.com>, and <opportunepersonalloans.com> domain names each incorporate Complainant’s OPORTUN mark followed by one of the generic terms: “offer,” “eonline,” “elonesonline”, or “epersonallones,” and all the domain names end with the generic top-level domain “.com”. Alternatively characterized, in three of the domain names Complainant’s trademark is misspelled by adding an “e” then followed with a generic term, all ending with the top-level domain name “.com.” Under the Policy the differences between each of the domain names and Complainant’s trademark do nothing to distinguish any of the at-issue domain names from Complainant’s trademark. Therefore, the Panel concludes that Respondent’s <oportunoffer.com>, <opportuneonline.com>, <opportuneloanonline.com>, and <opportunepersonalloans.com> domain names are each confusingly similar to Complainant’s OPORTUN trademark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); See Allianz Insurance PLC v. Andrey Ataev / Moniker Privacy Services, D2011-0113 (WIPO March 14, 2011) (finding that the domain name <cornhilldirectinsurance.com> primarily consisted of Complainant’s registered trademark CORNHILL DIRECT, and the addition of the descriptive word “insurance” did nothing to distinguish the disputed domain name from the trademark in which the Complainant had rights)
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. 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 any of the at‑issue domain names.
The WHOIS information for the at-issue domain name identifies the domain names’ registrant as “Domain Admin/Whois Privacy Corp.” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the either the <oportunoffer.com>, <opportuneonline.com>, <opportuneloanonline.com>, and <opportunepersonalloans.com> domain name. The Panel therefore concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). 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, Respondent uses its <oportunoffer.com>, <opportuneonline.com>, <opportuneloanonline.com>, and <opportunepersonalloans.com> domain names to direct internet users who are seeking Complainant’s services to its own websites where similar or competing services are offered. Respondent’s websites also displays Complainant’s name and trademark. Respondent’s use of the domain names in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii) regarding any of the at-issue domain names. See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of any of the at-issue domain names under Policy ¶4(a)(ii).
The at-issue domain names were each registered and used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith regarding each domain name pursuant to Policy ¶ 4(a)(iii).
First, Respondent’s registration of multiple domain names confusingly similar to Complainant’s trademark shows that Respondent is engaging in a pattern of bad faith. Respondent’s pattern of bad faith registration suggests Respondent’s bad faith in the instant case per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Next as mentioned above regarding rights and interests, Respondent uses the at-issue confusingly similar domain names to direct internet users to a websites which offers similar or competing services to those services offered by Complainant. Such use of the domain names indicates bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
Finally, Respondent had actual knowledge of Complainant’s rights in the OPORTUN mark when Respondent registered <oportunoffer.com>, <opportuneonline.com>, <opportuneloanonline.com>, and <opportunepersonalloans.com> as domain names. Respondent’s actual knowledge is evident from Respondent’s use of the domain names to address websites displaying Complainant’s name and trademark and offering services similar to those services offered by Complainant. Respondent’s registration and use of a confusingly similar domain names with knowledge of Complainant’s rights in such domain names shows Respondent’s bad faith pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED/DENIED.
Accordingly, it is Ordered that the <oportunoffer.com>, <opportuneonline.com>, <opportuneloanonline.com>, and <opportunepersonalloans.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 12, 2020
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