KMD Partners, LLC v. Domain Admin / GuardPrivacy.org
Claim Number: FA1908001856307
Complainant is KMD Partners, LLC (“Complainant”), represented by Michael A. Marrero of Ulmer & Berne, LLP, Ohio, USA. Respondent is Domain Admin / GuardPrivacy.org (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <creditninjaeasy.com>, registered with Dynadot, LLC.
The undersigned certifies that he has acted independently and impartially and that, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on August 8, 2019; the Forum received payment on August 8, 2019.
On August 11, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <creditninjaeasy.com> domain name (the Domain Name) is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 August 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of September 4, 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@creditninjaeasy.com. Also on August 15, 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 September 6, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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
Complainant has offered consumer loans under the CREDITNINJA mark since 2018. It has rights in the CREDITNINJA mark through its trademark applications with the United States Patent and Trademark Office (“USPTO”) (Ser. No. 87738643, filed Dec. 29, 2017). Complainant also has common law rights in the CREDITNINJA mark based upon its use in commerce as early as 2018. Respondent’s Domain Name is confusingly similar to Complainant’s CREDITNINJA mark as it fully incorporates the mark, merely adding the generic term “easy” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not licensed or authorized to use Complainant’s CREDITNINJA mark and is not commonly known by the Domain Name. Additionally, Respondent uses the Domain Name to impersonate Complainant and offer competing services.
Respondent registered and uses the Domain Name in bad faith. The web site resolving from it impersonates Complainant and deceives users into believing that Respondent is affiliated with or sponsored by Complainant. Respondent is also offering competing lending services. Furthermore, Respondent failed to respond to Complainant’s multiple cease and desist letters. Upon receiving Complainant’s first letter, Respondent switched to a privacy service and revised its contact information.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Name:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that--despite a respondent’s default—a complainant has failed to prove its case.”), 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 alleges rights in the CREDITNINJA mark based upon its two applications for a trademark with the USPTO. It alleges the Serial Numbers for those applications and alleges further that the USPTO notified it on June 20, 2019 that its review of one of the applications was completed. Complainant does not, however, provide a copy of either application or of the alleged USPTO notification that its review was complete. In any event, an application for registration of a mark with the USPTO is generally deemed insufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i).”). Imagine Nation Books Ltd. v LEE, LAWRENCE, FA 1662128 (Forum Mar. 31, 2016) (“Complainant’s only assertion of rights in the mark stem from a trademark application and the statement that Complainant offers ‘services and goods under the name Collective Goods’… [and] pending trademark applications do not establish rights in a mark under Policy ¶ 4(a)(i).”). On the evidence presented, the Panel finds that Complainant’s applications for USPTO registration of the CREDITNINJA mark with the USPTO are not sufficient to establish rights in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant alleges also that it has used the CREDITNINJA mark in commerce since 2018 and thus has common law rights in that mark. Registration is not required to satisfy Policy ¶ 4(a)(i). Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (“A complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out”.), Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Common law rights in a trademark can be established by evidence of secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA 1730673 (Forum June 1, 2017) (holding that Complainant established common law rights in her personal name since “[a] mark can generate a secondary meaning sufficient to establish Complainant’s rights when consistent and continuous use of the mark has created distinctive and significant good will… Complainant has published under the KAREN KOEHLER name extensively, and Complainant’s legal skills have been recognized by various organizations and groups with extensive positive media coverage. Complainant also operates an online blog associated with the KAREN KOEHLER mark.”), Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) ¶ 1.3 lists a number of factors that support a claim of common law trademark rights, including “(i) the nature and duration of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
In this case, Complainant argues that its mark has acquired secondary meaning through its use of the web site resolving from the <creditninja.com> domain name, which it uses for its loan services. The only evidence of Complainant’s use of the CREDITNINJA mark, however, is a screenshot of Complainant’s web site as of July 15, 2019 (Complaint Exhibit E). Complainant alleges that it has used the mark since 2018 but there is no evidence of any use of the mark prior to July 2019. This evidence is wholly insufficient to establish a claim of common law rights sufficient to meet even the admittedly low threshold applicable to a Policy ¶ 4(a)(i) analysis. Complainant’s claim of common law rights in the mark is rejected.
Complainant cites Forum Supplemental Rule 1(e), which defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as “the single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Focusing on the last, “sufficient nexus” phrase of this Rule, Complainant apparently argues that the one screenshot of Complainant’s web site as of July 15, 2019 demonstrates sufficient rights in the CREDITNINJA mark to bring and maintain this Complaint. This argument misreads the relevant phrase of the Forum Supplemental Rule, which by its own terms addresses the issue of whether one of several entities may join in a complaint as party complainants. Further, UDRP panels have consistently required complainants to possess either a registered trademark or a common law mark in order to meet the requirements of Policy ¶ 4(a)(i). WIPO OVERVIEW 3.0, ¶ 1.1. If a complainant could meet those requirements by the simple expedient of registering a domain name and hosting a web site resolving from it immediately before filing a UDRP complaint, the purposes and intent of Policy 4(a)(i) would be completely frustrated.
For the reasons set forth above, the Panel finds that Complainant has failed to demonstrate sufficient rights in the CREDITNINJA mark to meet the requirements of Policy ¶ 4(a)(i).
Rights or Legitimate Interests/Registration and Use in Bad Faith
Since Complainant failed to meet the requirements of Policy ¶ 4(a)(i) it is not necessary for the Panel to address the Policy ¶ 4(a)(ii) and (iii) elements, and it will not do so in any detail. It notes only that while Complainant alleges that Respondent is using the Domain Name for a web site that impersonates and competes with it, Complainant did not present any evidence to support those allegations either. Typically, complainants submit screenshots of the respondent’s web site to demonstrate what uses if any are being made of the contested domain name, but no such evidence was submitted here. This failure would be fatal to Complainant’s case even if the Panel had found for Complainant in the Policy ¶ 4(a)(i) analysis.
For the reasons set forth above, the Panel finds that Complainant failed to establish a prima facie case that Respondent has no rights or legitimate interests in the Domain Name, and failed also to prove that Respondent registered and is using the Domain Name in bad faith.
Complainant having failed to establish any of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <creditninjaeasy.com> Domain Name be RETAINED BY Respondent.
The foregoing Decision is based upon the evidence submitted in this proceeding and is issued WITHOUT PREJUDICE to Complainant’s rights to initiate another UDRP proceeding involving the Doman Name at issue here.
Charles A. Kuechenmeister, Panelist
September 9, 2019
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