Complainant is Kabbage, Inc., of Atlanta, Georgia, United States of America ("United States"), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, Atlanta, Georgia, United States.
Respondents are Robert Hanssen, Ridiculous File Sharing, of Las Vegas, Nevada, United States and Oneandone Private Registration of Chesterbrook, Pennsylvania, United States. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with 1&1 Internet AG (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 14, 2015. On May 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 27, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to Complaint on May 28, 2015.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2015. An Individual purporting to act on behalf of the Respondent sent to the Center two email communications on June 2, 2015.
The Center appointed Jordan Weinstein as the sole panelist in this matter on July 7, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On July 10, 2015, the Center issued Administrative Panel Procedural Order Number 1. In the Procedural Order, the Panel afforded Complainant time to comment on Respondent's two email communications of June 2, 2015. The Panel further afforded Respondent time to reply to any comments received from Complainant in response to the Order. As a result, the due date for the Panel's decision was extended until July 31, 2015.
On July 13, 2015, counsel for Complainant filed a response to Procedural Order Number 1, together with a Declaration. No comments were received on behalf of Respondent. 4. Factual Background
Complainant is the owner of U.S. Trademark Registration Nos. 3,905,311 and 4,682,136 for the trademark KABBAGE. The registrations were issued on January 11, 2011 and February 3, 2015, respectively, each claiming first use in commerce on June 30, 2010.
The Disputed Domain Name was registered on March 1, 2013. 5. Parties' Contentions A. Complainant
Complainant asserts that it was founded in 2008 to provide working capital to small businesses. It pioneered technology to enable small businesses to obtain funding in less than seven minutes. Complainant leverages data generated through business activity to understand its customers' performance and to deliver funding quickly and flexibly.
Complainant asserts it has nearly 250 employees and originates USD 100 million on an annualized basis. Complainant asserts that mainstream, financial and technology press write about it frequently, including Fox Business, VentureBeat, Forbes, Bloomberg, TechCrunch, Fast Company, Bloomberg Businessweek and others.
Complainant asserts that it has received numerous major awards for innovation, including winning CloudBeat's "Innovation Showdown" from VentureBeat; "The Most Innovative Company in Financial Services" by ""; "Top 100 Private Company in North America" by Red Herring; and "Top 10 Innovators of the Year" by Bank Technology News.
Complainant asserts that it registered the domain name on September 7, 2006, which it uses in connection with its lending website. Complainant also owns the aforementioned US registrations for its trademark KABBAGE, covering "financing services in the field of online merchants" and "financial services, namely, money lending provided over a computer network such as the Internet", respectively.
Complainant asserts that Respondent is using the Disputed Domain Name to redirect visitors to a website for a company named "Grovo", which "teaches Internet and modern professional skills to today's workforce with 60-second videos in a beautiful and effective training platform". Complainant asserts that Respondent's website is being used in connection with visitors arriving from a source called "techlist" which, Complainant asserts, is "an online service to help investors tracks startups in Asia." Complainant asserts that Respondent is using the Disputed Domain Name in connection with a service competitive with Complainant. B. Respondent
Respondent did not formally reply to Complainant's contentions. However, an Individual purporting to act for Respondent (the "Individual"), responding to an email from the Center, offered to transfer the Disputed Domain Name to Complainant – together with six others that include the letter string "kabbage"– for costs the Individual asserted were only for registration and hosting. In the email the Individual asserted that each registration of the seven listed domain names "was authorized by Kabbage in relation to lead generation for new clients." In a follow-up email, the Individual stated "[t]o be clear I never had any interest in owning the domains per se. I registered and hosted them for email marketing campaigns, to insulate the main domain from any potential complaints. Until very recently, all traffic to all seven domains simply redirected to , as it does now." C. Administrative Panel Procedural Order, and Complainant's Response
With the above as background, the Panel requested the Center to issue Administrative Panel Procedural Order No. 1 to provide Complainant the opportunity to address the assertions by the Individual that he was authorized to register the Disputed Domain Name, and to provide the Parties an opportunity to settle the matter in view of the Individual's proposal.
In response, Complainant provided assertions supported by a Declaration that Complainant had not assigned, granted, licensed, sold, transferred or in any way authorized Respondent or the Individual to register or use KABBAGE in any manner, including in the Disputed Domain Name. Complainant also asserted that settlement discussions were unsuccessful. Further, Complainant asserted that it requested the Individual to provide some evidence to support his assertion that he was authorized to register the Disputed Domain Name, but that no such information was received.
Indeed, neither Respondent nor the Individual responded to the Administrative Panel Procedural Order. Therefore the Panel proceeded to issue the current Panel Decision. 6. Discussion and Findings A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
It is not sufficient to prevail that a complainant prove only registration in bad faith; rather, the complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001.
However, the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [Respondent has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
Policy, paragraph 4(b). These circumstances are non-exclusive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
A respondent may demonstrate rights in or legitimate interests to the domain name by any of the following, without limitation:
(i) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. Policy, paragraph 4(c).
Where a respondent is in default, the Panel may draw such inferences as it considers appropriate. Policy, paragraph 14(b). B. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant's registered trademark KABBAGE. Rather than serving to distinguish Respondent's domain name from Complainant's trademark, adding the generic term "inc" to the registered term KABBAGE is likely to lead Internet users to believe that they are accessing Complainant's corporate website. Adding the generic term "inc" to Complainant's trademark does not avoid the confusing similarity between the disputed domain name and the mark. See Philip Morris USA Inc. v. David Delman and Lori Wagner,WIPO Case No. D2013-2182 (finding confusingly similar to PHILIP MORRIS).
The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Complainant has asserted twice, and Respondent has failed to dispute, that Complainant has not licensed or authorized Respondent to use Complainant's trademark, and that Respondent has no authorized relationship with Complainant or otherwise has permission to register any domain name incorporating Complainant's trademark. There is no evidence that Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.
As a result, Complainant has established paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel is not convinced that by linking the Disputed Domain Name to the Grovo website, Respondent is intentionally attempting to attract Internet users to that website by creating a likelihood of confusion. There is no evidence that the Grovo website is connected with Respondent, or that Respondent receives revenue from visitors arriving on the page as could be inferred from a "click-through" link. There is no evidence that the Grovo website is a lending service, or is otherwise competitive with Complainant's KABBAGE lending service, or that the website mentions Complainant or its trademark, or links to any website referencing Complainant or any competitive service. Complainant's assertion that some of Respondent's web traffic may be coming from a site that enables investors to track startups in Asia is too tenuous a link to Complainant's lending business for this Panel to infer a relationship, competitive or otherwise, or the likelihood of association by Internet users.
However, the Individual has registered seven domain names incorporating Complainant's KABBAGE trademark without Complainant's authorization. Combined with the conclusions the Panel may reach in the event of Respondent's default, and Respondent's failure to address Complainant's contentions in response to the Administrative Panel Procedural Order, the Panel concludes that this evidence constitutes bad faith under paragraph 4(b)(ii) of the Policy, namely that Respondent has "registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct." That the pattern of conduct involves Complainant's own trademark does not change the fact that it is still a pattern. See Time Warner Entertainment Company, L.P. v. HarperStephens, WIPO Case No. D2000-1254 (multiple registrations of domain names incorporating HARRY POTTER, including the disputed domain name, constitutes bad faith). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant.
Jordan S. Weinstein
Sole Panelist
Date: July 30, 2015
Full & Egal Universal Law Academy